On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 100074
Time of Filing 2009-05-13 08:34:12
Disputed domain name MICHELINTIRES.INFO
Case Administrator
Name Tereza Bartošková
Complainant
Organization Cie Générale Des Établissements Michelin
Authorized Representative
Organization Dreyfus & associés
Respondent
Name Oleg Shmatko
A summary of this Decision is hereby attached in English as an Annex.
Other Legal Proceedings
Panel is not aware of any other legal proceedings.
Factual Background
The Complainant manufactures and sells tires for all kinds of vehicles, publishes maps and guides and operates a number of digital services in more than 170 countries. From invention of the radial tire to the steel wheel, and from the first gastronomic guide, Complainant has played an active role at every stage of the development in the automotive sector.

Complainant, established in 1889, has a strong reputation among others in the field of tire manufacturing for cars, trucks, motorcycles and planes.

The replacement tire market represents 72% of Complainant’s sales in volumes in the Passenger Car-Light Truck market, and 83% in the Truck market. Accordingly, before being an equipment supplier for vehicle manufacturers, Complainant is primarily a player on the consumer market for passenger cars and motorcycles and on the professional consumer goods market for light and heavy utility vehicles.

Complainant is active on all continents, from China to Brazil and from The United States of America to Germany and Russia.

Complainant distributes its products in more than 170 countries. In 2008, Complainant manufactured 177 millions tires and printed 16 millions maps and guides.

Complainant is accelerating its industrial and commercial expansion in Central and Eastern Europe, South America and Asia to serve tire demand with local production and increases its share of business in those high-growth regions. In doing so, Complainant aims to align itself with the geographic breakdown of the world’s tire markets.

Complainant is optimizing its industrial tool to build on a robust and profitable position in the developed markets.
In 2009, the Group continues to establish an industrial base close to its markets with 64 manufacturing locations in 19 countries:

- Western Europe: 27
- North America: 19
- Eastern Europe: 7
- Asia: 6
- South America: 4
- Africa: 1

Complainant owns and mainly communicates on the Internet via notably the website www.michelin.com in order to presents and to propose to the Internet users its services and products.

Complainant owns particularly the following international trademarks protected among other countries in the Federation of Russia:

- MICHELIN, International Trademark n° 348615, registered on July 24, 1968, renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20.
- MICHELIN + LOGO, International Trademark n° 416597, registered on June 25, 1975, renewed and covering goods in classes 6 and 8.
- MICHELIN, International Trademark n° 452542, registered on May 8, 1980, renewed and covering services in classes 35 and 41.
- MICHELIN, International Trademark n° 457819, registered on December 1st, 1980, renewed and covering goods in classes 09, 11, 14, 16, 20, 21, 24, 25, 26, 28 and 34.
- MICHELIN, International Trademark n° 492879, registered on May 10, 1985, renewed and covering goods in class 12.
- MICHELIN, International Trademark n° 517586, registered on September 24, 1987, renewed and covering goods and services in classes 9, 34 and 38.
- MICHELIN, International Trademark n° 574577, registered on May 6, 1991 and covering goods in classes 6, 16, 18, 21 and 25.
- MICHELIN, International Trademark n° 740073, registered on August 8, 2000 and covering goods in classes 6, 7, 12 and 17.
- MICHELIN, International Trademark n° 771031, registered on June 11, 2001 and covering goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42.
- MICHELIN, International Trademark n° 816915, registered on August 27, 2003 and covering services in classes 35, 37, 39 and 42.


When Complainant noticed that domain name <michelintires.info> was registered, Complainant sent a cease-and-desist letter by e-mail and registered letter dated December 11, 2008 to the registrant based on its trademarks rights asking the same to amicably transfer the domain name <michelintires.info>. The registrant answered to the cease-and-desist letter on December 13, 2008 by asking for financial compensation. Then, the whois database indicated that the name of the registrant had changed to the name of the current Respondent, however without a change of the email address.

Initially, the domain name was directed to a website displaying commercial links in the field of tyres and notably some of them reproducing Complainant’s trademarks. After sending the cease-and-desist letter, the domain name became inactive, before the disputed domain name was directed to Complainant´s own website under www.michelin.com. The who-is directory for the disputed domain name submitted in the proceedings shows the existence of a Meta description as follows: “Welcome to Michelin´s portal website. Find Michelin tyres in your country, discover the world tire maker Michelin group and all Michelin guides and maps for your travels.”
Parties' Contentions
A. Complainant
Complainant is the owner of numerous trademarks for “MICHELIN” in many countries related to the tire production and sales, road maps and various guide publications in the field of hotels and restaurant. Moreover, Complainant operates, among others, the domain names reflecting its trademarks such as www.michelin.com, registered on December 1st, 1993; www.michelin.info registered on July 30, 2001 as well as www.michelintires.com registered on May 20, 1999.

The domain name <michelintires.info> reproduces entirely Complainant’s trademarks MICHELIN which are very well-known especially in the field of tire manufacturing and sales.

In many WIPO decisions, the Panel considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark (WIPO Case D 2005-0758, AT&T Corp v William Gormally et WIPO Case D2008-0705, ACCOR v. Lee Dong Youn).

The Respondent’s domain name is nearly identical or confusingly similar to the Complainant’s trademarks because it fully incorporates said mark. Numerous WIPO decisions decided that the mere addition of common terms such as “tires” to the Complainant mark doesn’t influence the similarity between a trademark and a domain name (WIPO Case D2003-0696, PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS). The mere adjunction of the generic term “tires” is not able to give to dispute domain name a sufficient distinctiveness. Moreover, the term “tires” refers directly to one’s of the Complainant’s activities which accentuate the likelihood of confusion.

It is also well established that the mere adjunction of the gTLD “.info” is not a distinguishing feature and does not change the likelihood of confusion. In fact in many WIPO decisions Panels recognized that the adjunction of the gTLD”.com” doesn’t influence the risk of confusion (WIPO Case D2005-0016, ACCOR v. Noldc Inc.), merely because it is necessary for the registration of the domain name itself. The gTLD extensions are not taken into consideration when examining the identity or similarity between the previous marks and the disputed domain names (WIPO Case D2008-0570, Gianni Versace S.P.A v. Nicolino Colonnelli).

Furthermore, the dispute domain name reproduces entirely one’s of the official Complainant’s websites: www.michelintires.com with a different extension. Those internet users could think that domain name <michelintires.info> belongs to Complainant and is its official website.

In fact, as it is exposed above, the mere adjunction of a gTLD extension is not a distinctive element which is able to differentiate a domain name from another. Thus, the litigious domain name <michelintires.info> must be considered confusingly similar to Complainant´s domain name <michelintires.com>.

With regard to any rights or legitimate interests of the Respondent in respect of the domain name, Complainant argues that Respondent is not affiliated with Complainant in any way. Complainant has not authorized Respondent to use and register its trademarks and service marks, or to seek the registration of any domain name incorporating said marks.

Furthermore, Respondent has no prior rights or legitimate interest in the domain name. Respondent never used the term “MICHELIN” in any way before or after Complainant started its business. The registration of “MICHELIN” trademarks preceded the registration of the domain name <michelintires.info> by many years. Additionally, Respondent is not known under the names “MICHELIN” or any similar term.

Moreover, the strict reproduction of the well-known trademarks “MICHELIN” constitutes an obvious intent to divert Internet users.

In fact, since the domain name in dispute is so identical to the famous trademarks of Complainant, Respondent could not reasonably pretend it was attempting to conduct a legitimate activity. The adjunction of the term “tires” does not eliminate the likelihood of confusion as this common word directly refers to the main Complainant’s activity.

Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services. Initially, the disputed domain name was linked to website with the presence of what appear to be pay-per-click advertising links. Respondent’s use of the disputed domain name served the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use in the circumstances does not represent a use in connection with a bona fide offering of goods and services (WIPO Case D2008-0627, Société Nationale des Chemins de Fer Français v. ostrid company, Domains by Proxy, Inc.; WIPO Case D2007-0449, Educational Testing Service (ETS) v. International Names Ltd; WIPO Case D2007-1389, Pepperdine University v. The CJ Group, LLC; WIPO Case D2008-1721, L’Oreal v. Tracey Johnson). Moreover, the domain name currently directs to one of the Complainant’s official websites that helps to prove that Respondent has no right or legitimate interests in respect of the domain name.

The only reason of Respondent in registering and using the disputed domain name is to benefit from the reputation of the trademarks “MICHELIN” (WIPO Case n° DRO2006-0004, Companie Générale des Établissements Michelin - Michelin & Cie. v. IPSOS New Media Research SRL).

The Complainant argues that the domain name was registered and is being used in bad faith, since it seems obvious that Respondent knew or must have known Complainant’ trademarks at the time he registered the domain name. It seems difficult to sustain that Respondent was not aware of the existence of Complainant at the time he registered the domain name.

It is unlikely that the registrant of the domain name <michelintires.info> doesn’t know the Complainant. In fact, the domain name contains the trademark “MICHELIN” associated with the common word “tires” which designs the main Complainant’s activity. Consequently, this very precise combination of the words “MICHELIN” and “tires” clearly proves that Respondent knew the main Complainant’ activity and trademark when he registered the domain name.

Moreover, the name “MICHELIN” does not have any meaning in English. Respondent had no reason to choose this domain name other than profiting from the reputation of Complainant.

Is it established by number of WIPO decisions that Complainant’s trademark “MICHELIN” is certainly “widely known worldwide” (WIPO Case DRO2006-0004, Companie Générale des Établissements Michelin - Michelin & Cie. v. IPSOS New Media Research SRL).

In addition, the fact that a trademark search on the date of the registration of the domain name would have revealed Complainant’ registrations is another proof of Respondent’s registration in bad faith (WIPO Case D2008-0072, L’Oréal v Domain Park Limited; WIPO Case D2007-1325, Bouygues v Chengzhang, Lu Ciagao; WIPO Case D2006-0964, Media General Communications, Inc v Rarenames, Webreg)

Without a research among the trademarks, a simple search on Internet will have permit to Respondent to find Complainant. Search via Google or any other search engine using the keywords “MICHELIN” shows that all first results relate to Complainant’ websites, products or services.

Taking into account the worldwide reputation of Complainant and its trademarks, it is hard to believe that Respondent was unaware of the existence of Complainant and its trademarks at the time of registration of disputed domain name.

A finding of bad faith can be made where Respondent “knew or should have known” of Complainant’s trademark rights, and nevertheless registered a domain name incorporating a mark, in which he had no rights or legitimate interests (WIPO Case D2007-1722 Accor S.A. v. Kristen Hoerl, WIPO Case D2001-0763, Myer Stores Limited v. Mr. David John Singh).

Initially, the domain name directed to a website displaying commercial links in the field of tyres and notably some which reproduce Complainant’s trademarks and with the presence of what appear to be pay-per-click advertising links. The overall intended function of Respondent’s websites was clearly to redirect Internet users to competitive sellers of products and services offered as alternatives to Complainant’ products and services. It may reasonably be concluded that Respondent had not set up these redirection systems without the expectation of some financial return, and is operating the famous click-through or pay-per-click (PPC) device whereby the operators of other websites pay a commission to Respondent for traffic redirected to them (WIPO Case D2008-0463, Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten; WIPO Case D2008-0627, Société Nationale des Chemins de Fer Français v. ostrid company, Domains by Proxy, Inc.; WIPO Case D2007-0449, Educational Testing Service (ETS) v. International Names Ltd, WIPO Case D2007-1389, Pepperdine University v. The CJ Group, LLC).

It is well established that the exploitation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of registration and use in bad faith according to previous cases (WIPO Case D2005-1304, Mobile Communication Service Inc v. Webreg, RN, WIPO Case D2007-1742, Royal Bank of Canada v. Chan; Fox News v. Reid; TT-Line Company Pty v. Vertical Axis, Inc.).

Moreover, since the website to which the disputed domain name initially directs to proposed sponsored links about tyres sales, the conduct of Respondent had been merely an unfair competition act, a parasitical behaviour. Respondent was not making herewith any legitimate non-commercial or fair use of the domain name, as the disputed domain name redirected internet users to some pages displaying sponsored links in the field of Complainant’s products and services.

After sending the cease-and-desist letter, the domain name became inactive. Now Complainant notes that the dispute domain name directs to its official website: http://www.michelin.com. This succession of various domain name’s redirections reveals the use in bad faith of the Respondent as he doesn’t show a stable and homogeneous use of the domain name.

It is therefore fair to presume that Respondent has registered domain name including a well-known mark to capitalize on Complainant’s long history, its reputation and its goodwill. Respondent is very likely to be aware of the commercial value of the names, and has registered the domain name for deriving revenue from it.

Moreover, through his response to the cease-and-desist letter, the Respondent confirmed that he doesn’t sell tires and that he wants to obtain financial gain by selling the domain name.
B. Respondent
Since Respondent has submitted his response only on the electronic platform of the Court and not as a signed hard copy and three copies, the Czech Arbitration Court correctly noted Respondent´s default. This panel nevertheless takes its discretion to consider the electronically submitted statement of the Respondent.

Respondent argues inter alia that he bought the domain name approximately 5 months ago from an IT-company with several hundred other domain names. The selection and purchase was based on a program which determines most popular names(words) in the internet. The domain name was then parked automatically and was redirected to michelin.com after receipt or knowledge of “some letter from France”. He himself has never used this domain name, inter alia since he owns so many domain names. Respondent says that he never received a letter from the Complainant directly. Respondent is prepared inter alia to transfer the domain name to Complainant, which is known to him, if he is asked for that by Complainant directly. A letter of the attorneys of Complainant would not be sufficient for this.
Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.


A. Identical or Confusingly Similar

The Complainant has established the fact that it has valid trademark rights for MICHELIN in several classes.

The Domain Name is confusingly similar to the MICHELIN marks, since the element “tyres” is purely descriptive and as such not being relevant to influence the overall impression of the designation in the Domain Name. The MICHELIN trademarks of the Complainant and the domain name in question <michelintires.info> only differ in the additional element “tires” in the domain name. The addition of the purely descriptive element “tires” in the domain name does not have a relevant influence on the distinctiveness of the Element MICHELIN which clearly carries the weight of the designation <michelintires.info>. This is widely acknowledged by Panel decisions under the Policy (see e.g. Advanced Micro Devices, Inc. v. Dmitry, WIPO Case No. D2000 0530).

The Panel therefore considers the Domain Name in question to be confusingly similar to the trademarks MICHELIN in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has no rights in the Domain Name since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks. Furthermore, the Respondent has no legitimate interest in the Domain Name since there is no indication that the Respondent is commonly known by the name “MICHELIN” nor that the Respondent is using the Domain Name in connection with a bona fide offering of related goods or services. For the latter, as the panel in Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe, WIPO Case No. D2007 1695 stated correctly, it must be noted that the use of a domain name confusingly similar to a complainant’s trademark for the purpose of offering sponsored links does not of itself qualify as a bona fide use. Also a non commercial or fair use is not noticeable.

The Panel therefore finds that the Respondent does not have rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Due to the nature of the MICHELIN marks as well-known, if not famous, the registrant must have been well aware of the Complainant and its trademarks when registering the Domain Name. In addition, Respondent acknowledges that he is aware of the Complainant and that the domain name was chosen on the basis of popular words in the Internet.
Whereas the name of the registrant changed in the who-is directory, the email address did not and the Respondent is obviously well aware of what happened before he got involved. In accordance with the information provided by the Respondent the website under the disputed domain was parked for at least a week. It is unclear whether Respondent itself received the letter from the lawyers of the Complainant. However, his statement allows this conclusion since he stated that he never received a letter from the Complainant directly. Also the email address which remained the same, speaks in favor of this conclusion.
However, even the current use of redirecting the domain name to Complainant´s website must be considered as a use in bad faith under the current circumstances, since the redirection of users to another site still creates traffic for the domain name in dispute and has even an effect on Complainants own website.

As the panel in (WIPO- Case No. D2004-0053, Accor vs. S1A) stated correctly:
„According to article 4(b) of the Policy an indication for use in bad faith is if the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website….. By redirecting Internet users to the official website of the Complainant the Respondent generated traffic to the site linked to the Domain Name, and may alter the link at his will as demonstrated by the fact that the Respondent stopped the redirection at a certain point of time. Linking the Domain Name to the website of the Complainant without authorization is commercial use of the Domain Name. Therefore the Panelist finds that the Respondent used the Domain Name in bad faith.“

Complainant must not rely on the discretion of the Respondent to redirect (or not) a confusingly similar domain name to its own website including meta descriptions not under control of the Complainant creating inter alia a risk to be challenged on his own or describing his own business in a way other than he wishes. Also the possible impression for interested customers searching the publicly available who-is directories that a relation between the Respondent and the Complainant exists since the disputed domain name is connected with Complainant´s official website, creates a likelihood of confusion.

The Panel therefore considers the Domain Name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy under the present circumstances (see also WIPO-Case No. D2003-0615, Caesars World, Inc. and Park Place Entertainment Corporation v. Japan Nippon; the same result was achieved in WIPO-Case No. D2002-0109, Altavista Company v. Brunosousa, aka Bruno Sousa).

It is accordingly not necessary to decide whether or not the panel is allowed to order the transfer only for the reason that Respondent declared his willingness to transfer the domain name if he is asked for that by the Complainant directly.
Decision
For the reasons set out above, the Complaint is Accepted
and the disputed domain name(s) is(are) to be
MICHELINTIRES.INFO Transferred to Complainant
Panellists
Name Dietrich Beier
Date of Panel Decision 2009-07-02
Annexes
Annex: English summary of the Panel Decision
The Complainant, inter alia a well known manufacturer and seller of tires for all kinds of vehicles around the world is the proprietor of numerous MICHELIN trademarks in several classes and is inter alia the owner of the website under the domain names www.michelin.com.

After having sent a cease-and-desist letter to the registrant of the domain name <michelintires.info>, Complainant received a response asking for financial compensation. Then, the whois database indicated that the name of the registrant had changed to the name of the current Respondent, however without a change of the email address. Initially, the domain name was directed to a website displaying commercial links in the field of tires and notably some of them reproducing Complainant’s trademarks. Then, the domain name became inactive, before the disputed domain name was finally directed to Complainant´s own website under www.michelin.com. The who-is directory for the disputed domain name submitted in the proceedings shows the existence of a Meta description as follows: “Welcome to Michelin´s portal website. Find Michelin tyres in your country, discover the world tire maker Michelin group and all Michelin guides and maps for your travels.” Although the response of Respondent was correctly qualified as being default by the CAC, Panel took its discretion to consider the electronically submitted statement of the Respondent who argued that the selection and purchase of the domain name was based on a program which determines most popular names(words) in the internet and that the domain name was then parked automatically before it was redirected to michelin.com after receipt or knowledge of “some letter from France”. He himself has allegedly never used this domain name, but is prepared to transfer the domain name to Complainant, which is known to him, if he is asked for that by Complainant directly and not only by its lawyers.

The Panel finds the domain name being confusingly similar with the trademarks of the Complainant and does not see any rights or legitimate use of the domain name. The domain name was registered in bad faith knowing the well known trademark/brand MICHELIN and/or choosing the domain name based on a program searching for popular words in the internet. Independent of the question whether Respondent used the domain name itself by parking the domain name for commercial gain, also the redirection of the domain name to Complainant´s website is considered as use in bad faith under the given circumstances. Accordingly, the Panel ordered that the domain name <michelintires.com> be transferred to the Complainant.
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