WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Fadi Mahmoud

Case No. D2021-4072

1. The Parties

Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.

Respondent is Fadi Mahmoud, Jordan.

2. The Domain Names and Registrar

The disputed domain names <إطارات-ميشلان .com> [xn----ymcaabq1c1av0ljp2c.com], <اطارات-ميشلان .com> [xn--mgbz0cciu.com] and <ميشلان .com> [xn----umcgabq1c1av0ljp2c.com] (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 9, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 14, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. On December 16, 2021, Complainant requested the suspension of the proceeding. On December 17, 2021, the proceeding was suspended. The Center received two email communications from Respondent on December 17 and December 19, 2021. Upon request of the Complainant, the proceeding was reinstituted on January 11, 2022 with a Response due date of January 31, 2022. The Center notified the commencement of Panel appointment process on February 3, 2022.

The Center appointed Marina Perraki as the sole panelist in this matter on February 11, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a leading tire company, present in 171 countries, with 114,000 employees and 69 tire manufacturing facilities. Complainant holds numerous trademark registrations for the MICHELIN mark, including:

- the Jordanian trademark registration MICHELIN (word), No. J2/T/1/17458, registered on February 22, 1979, covering goods in International Class 9; and
- the Jordanian trademark registration for MICHELIN (word), No. J2/T/1/17459, registered on February 22, 1979, covering goods in International Class 12.

Complainant is also the owner of a number of domain name registrations, including the domain name <michelin.com>, registered on December 1, 1993.

The Domain Names were registered on August 9, 2021. The domain names <xn----ymcaabq1c1av0ljp2c.com> and <xn----umcgabq1c1av0ljp2c.com> lead to a registrar’s default page where they are being offered for sale, while the domain name <xn--mgbz0cciu.com> resolves to a parking page with commercial links targeting, per the Complaint, Complainant’s field of activity.

On August 23, 2021, Complainant sent a cease and desist letter to Respondent, followed by several reminders, to which Respondent did not reply.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.

B. Respondent

Respondent did not formally reply to Complainant’s contentions. However, on December 17 and December 19, 2021, Respondent sent two informal communications to the Center asking about the nature of the dispute, claiming the Domain Names are not being used, and offering to sell the Domain Names to Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Names:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use in the MICHELIN mark.

The Domain Names were registered using Punycode. Using Punycode, the browser application will “translate” the Punycode text into non-ASCII characters (The Coca-Cola Company v. ICU Agency, WIPO Case No. D2008-1851). In the present case, the Domain Names correspond to the Arabic characters “ميشلان ”, “ميشلان -اطارات ” and “ميشلان -إطارات ”, which mean, according to the free translation per the Complaint (Google translate), “michelin”, “tires-michelin” and “tires-michelin”, respectively.

The Domain Names incorporate an Arabic translation of the MICHELIN trademark of Complainant in its entirety and the use of Punycode to create a domain name that is visually identical or confusingly similar to a trademark (or in this case a translation of the trademark) does not prevent a finding of identity or confusing similarity (see, e.g., Yahoo! Inc. v. Mr. Omid Pournazar, WIPO Case No. D2012-1612; Inter Ikea Systems B. V. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-2211; AB Electrolux v. Mostafa Faheem, WIPO Case No. D2017-2233; Doğan Internet Yayinciliği Ve Yatirim Anonim Şirketi v. Moniker Privacy Services/H A Lempka-Alpha Domains, WIPO Case No. D2013-2244; see also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.14).

Furthermore, the addition of the term “tires” in two of the Domain Names does not avoid a finding of confusing similarity either (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview 3.0, section 1.8).

The addition of a hyphen “-” is immaterial for the purpose of comparison (Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300).

The generic Top-Level Domain (“gTLD”) “.com” may be disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

The Panel finds that the Domain Names are confusingly similar to the MICHELIN trademarks of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.

Respondent did not demonstrate prior to the notice of the dispute, any use of the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Names resolve, as the case may be, to a registrar’s default page, where they are being offered for sale, and to a parking page, which contains links to third party websites related to Complainant’s field of activity.

Accordingly, Complainant has put forward a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names.

Furthermore, one of the Domain Names consists entirely of a translated version of Complainant’s trademark MICHELIN and thus carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1). Two of the Domain Names contain also the word “tires”, which is identical to Complainants’ field of business, in addition to a translated version of Complainant’s trademark, and so carry a risk of implied affiliation.

The Panel finds that these circumstances, including the absence of any evidence from the Respondent to the contrary, do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or

(ii) Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Names in bad faith. As per Complaint, Complainant’s MICHELIN mark has been continuously and extensively used in connection with its goods and has acquired considerable goodwill and renown worldwide, as repeatedly recognised (Compagnie Générale des Etablissements Michelin v. World Industrial, LNQ, WIPO Case No. D2019-0553; Compagnie Générale des Etablissements Michelin v. Kanoksak Puangkham, WIPO Case No. D2018-2331; Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios, WIPO Case No. D2017-0234).

Because the MICHELIN mark had been widely used and registered at the time of the Domain Names’ registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had significant goodwill and reputation globally when the Domain Names were registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of its MICHELIN mark on the Internet (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462).

Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of MICHELIN (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

Furthermore, the Domain Names incorporate in whole Complainant’s mark MICHELIN. It is unlikely that Respondent could have registered the Domain Names for any legitimate purpose, given in particular the notoriety of Complainant’s MICHELIN mark, the degree of similarity of the Domain Names to such mark and the fact that Respondent used Punycode to make the Domain Names visually similar to a translated version of Complainant’s mark, all of which suggest a bad faith registration (Inter Ikea Systems B.V. v. Domain Admin, Whois Privacy Corp., supra; WIPO Overview 3.0, section 3.1.1).

As regards bad faith use, Complainant demonstrated that two of the Domain Names are being offered for sale, and further Respondent offered the Domain Names for sale in his informal communication to the Center. This, in view of the finding that Respondent has no rights to or legitimate interests in the Domain Names, supports a finding of bad faith (Aygaz Anonim Şirketi v. Arthur Cain, WIPO Case No. D2014-1206; WIPO Overview 3.0, section 3.1).

As regards the third Domain Name, it leads to a parked page containing links to third party websites related to Complainant’s field of activity, which suggests that, presumably, Respondent received pay-per-click fees from the linked websites that are listed thereon. It has been recognized that such use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO Overview 3.0, section 3.5).

The Panel considers the following factors: (i) the reputation of Complainant’s mark, which has been repeatedly recognised; (ii) the failure of Respondent to reply to Complainant’s contentions in the present case; (iii) the nature of the Domain Names practically incorporating a translated version of Complainant’s mark using Punycode; and (iv) the implausibility of any good faith use to which the Domain Names may conceivably be put (WIPO Overview 3.0, section 3.2.1).

Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Names.

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <إطارات-ميشلان .com> [xn----ymcaabq1c1av0ljp2c.com], <اطارات-ميشلان .com> [xn--mgbz0cciu.com] and <ميشلان .com> [xn----umcgabq1c1av0ljp2c.com], be transferred to the Complainant.

Marina Perraki
Sole Panelist
Date: February 25, 2022