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Philip Morris USA Inc. v. Chen Huang [2005] GENDND 326 (13 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Michelin Recherche et Technique S.A. v. Naxza.com

Case No. D2005-1107

1. The Parties

The Complainant is Michelin Recherche et Technique S.A., Granges-Paccot, Switzerland, represented by Cabinet Dreyfus & Associés, France.

The Respondent is Naxza.com, Bangkok, Thailand.

2. The Domain Name and Registrar

The disputed domain name <bfgoodrichsuperchallenge.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2005. On October 24, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On October 24, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2005.

Th Center appointed Gerd F. Kunze as the Sole Panelist in this matter on December 9, 2005. 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

The Complainant belongs to the Michelin Group, an internationally well-known tire manufacturer who, amongst others, is also involved in vehicle racing (e.g. Formula One) and rallies. Some years ago, the Michelin Group acquired from the BFGoodrich Corporation trademark rights in the trademark BFGOODRICH for the goods “tires and inner tubes for tires” in many countries worldwide. Also the trademark BFGOODRICH is no doubt an internationally well-known trademark.

Within the Michelin Group, the Complainant is the registered owner of the rights in the trademark BFGOODRICH. It particularly owns four trademark registrations (Nos. 72214, 145016, 144990, 842839) in Thailand, where the Respondent is located, as evidenced by copies of the registration certificates with translations into English.

The Complainant also owns and actively runs the websites “www.bfgoodrich.com” and “www.bfgoodrichtires.com”. Particularly on the latter website abundant information is given about the Complainant’s racing activities under the BFGOODRICH brand, which are carried out in many countries worldwide. The domain name <bfgoodrichtires.com> has been registered in 1997.

Within its racing activities the Complainant organized in 2005, the so-called “BFGoodrich Super Challenge” car competition in Thailand.

On June 1, 2005, the representatives of the Complainant wrote to the Respondent via certified mail and per email and demanded the disputed domain name to be transferred to the Complainant. The certified letter was returned with the remark: “unknown” with reference to the address.

The Respondent registered on February 3, 2005, the domain name <bfgoodrichsuperchallenge.com>. As evidenced by the Complainant, this domain name was formerly linked to a website related to the Super Challenge event. The website was mainly written in Thai language, but showed on the top the trademark BFGOODRICH of the Complainant in the typical logotype version as generally used by the Complainant (representing the first three letters “BFG” in capitals, followed by “oodrich” in small letter type), combined with the text “SUPERCHALLENGE” underneath.

5. Parties’ Contentions

A. Complainant

The Complainant submits that (A) the domain name <bfgoodrichsuperchallenge.com> is identical or confusingly similar to its trademark BFGOODRICH in which it has rights. It points out in this connection that many panel decisions have considered that the addition of generic terms such as “Super Challenge” to the Complainant’s trademark cannot exclude confusing similarity; (B) the Respondent has no rights or legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent has failed to submit a Response. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and all inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name <bfgoodrichsuperchallenge.com > consists of the trademark BFGOODRICH of the Complainant, combined with the generic terms “Super” and “Challenge” and the gTLD “.com”.

The distinctive part of the domain name is identical with the Complainant’s trademark, and the text of the domain name, as composed of its elements, suggests to users that on a corresponding website they may find information about the racing event of the Complainant being organized under the name BFGoodrich Super Challenge. Since the gTLD “.com” cannot be taken into consideration when judging confusing similarity between the domain name and the Complainant’s trademark, there can be no doubt that the domain name is confusingly similar to the trademark BFGOODRICH, in which the Complainant has rights. Internet users, typing the Respondent’s domain name in the “.com” gTLD, will expect to arrive at a website of the Complainant, where the Complainant provides information about its racing event, and will be confused and disappointed when either being confronted with a website of the Respondent (as this was the case formerly) or being informed that the website is not available.

B. Rights or Legitimate Interests

BFGOODRICH is not a descriptive word. With respect to the goods “tires and inner tubes for tires” it is a trademark of the Complainant that is well-known for these goods. There cannot be any doubt that the Respondent was aware of the Complainant’s trademark, registered in Thailand, when it registered the domain name <bfgoodrichsuperchallenge.com>. Otherwise the Complainant would not have created such domain name consisting of the trademark BFGOODRICH and the term “superchallenge”, thus creating the impression that a corresponding website would inform about the BFGoodrich Super Challenge that was carried out in Thailand, the home country of the Respondent, shortly after the registration of the domain name.

The Complainant has not licensed or otherwise consented to the use of its trademark BFGOODRICH to the Respondent. The Respondent apparently does not use, nor has it made any preparations to use, the domain name <bfgoodrichsuperchallenge.com> in connection with a bona fide offering of goods or services. Whilst, some time before the commencement of the proceedings, the Respondent used the domain name for a website (mainly in Thai language) referring to the BFGoodrich Super Challenge racing event, there are no indications that this was a legitimate noncommercial or fair use. In view of the fact that the Respondent ceased to use the domain name and absent any submission of the Respondent to the contrary, it must be assumed that the Respondent used the domain name with intent for commercial gain to misleadingly divert consumers or to tarnish the trademark BFGOODRICH of the Complainant. Furthermore, there are no indications that the Respondent has become commonly known by the domain name. Failing any submission of the Respondent, the Panel therefore arrives at the conclusion that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.

As noted before, there can be no doubt that the Respondent knew the trademark of the Complainant, when registering the domain name <bfgoodrichchallenge.com>. It is also obvious that the Respondent was aware of the Complainant’s intentions to organize the BFGoodrich Super Challenge 2005 in Thailand. Otherwise it could not have had the idea to create a domain name that consists of the trademark BFGOODRICH of the Complainant and the exact reference to the racing event Super Challenge. Under the circumstances, and absent any submissions of the Respondent to the contrary, the Panel does not see any facts, which could lead to the conclusion that the registration was not made in bad faith. On the contrary, the very fact that the Respondent used the domain name, which it registered in the “.com” domain, as link to a website that referred to the BFGoodrich Super Challenge racing event, organized by the Complainant, but was mainly written in Thai language, confirms that the Respondent registered it in bad faith.

The former link to that website amounts to use in bad faith for the following reasons:

Internet users expecting to receive information from the Complainant on the racing event, organized by it, when typing the domain name <bfgoodrichsuperchallenge.com> arrived at a website, of the Respondent and, since this website referred to the BFGoodrich Super Challenge, were confused about the true origin of the information written on the website. In that connection it must be taken into consideration as further element of bad faith that the Respondent represented the trademark BFGoodrich of the Complainant on the top of the website in the typical logotype version as generally used by the Complainant (whilst the further contents of the website was in Thai language).

With its behavior the Respondent has disrupted the business of the Complainant by preventing it from reflecting its trademark in a corresponding domain name in the important “.com domain. Despite the fact that the Respondent’s website was mainly written in Thai language, the Respondent, a resident of Thailand, did not content itself to register a domain name in the corresponding ccTLD but preferred to register the domain name, containing the trademark BFGOODRICH of the Complainant, in the “.com” domain.

With its website, showing the trademark of the Complainant on the top in its typical logotype, the Respondent also created a likelihood of confusion with the Complainant’s trademark BFGOODRICH as to the source, sponsorship, affiliation, or endorsement of its website. Whilst there is no proof that the Respondent attempted to attract internet users to its website for commercial gain, it is difficult to imagine, under the circumstances of the case, that the Respondent had engaged in such behavior for altruistic reasons. Failing any submission of the Respondent to the contrary, and based on the case file the Panel is satisfied that the Respondent used the domain name for commercial gain.

The Panel concludes that the Respondent registered and is using the domain name <bfgoodrichsuperchallenge.com> in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bfgoodrichsuperchallenge.com> be transferred to the Complainant.

Gerd F. Kunze
Sole Panelist

Dated: December 23, 2005