WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Générale des Établissements Michelin v. PrivacyP / Private Registration Case No. D2009-1136 1. The Parties
The Complainant is Compagnie Générale des Établissements Michelin, of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is PrivacyP / Private Registration, of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2009. On August 26, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On August 29, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 4, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 7, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on September 30, 2009.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on October 2, 2009. 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 facts relevant to the findings and decision in this case are that:
1. The Complainant is a French company, founded in 1889, which is principally a manufacturer of tyres for cars, trucks and aeroplanes.
2. The Complainant also publishes road maps and a range of restaurant, hotel, and travel guides.
3. In 2008, the Complainant printed more than 16 million road maps and guide books.
4. The Complainant has used the trade mark MICHELIN since its incorporation and is the owner of many registrations for the trade mark.
5. The disputed domain name was registered on January 14, 2009 in the name of a domain name proxy service company.
6. The Complainant's efforts failed to identify the beneficial owner of the disputed domain name.
7. A website corresponding with the domain name carries multiple links to commercial third party sites, many listing restaurants and accommodation.
8. The Complainant has not authorised the Respondent to use the trade mark or to register any domain name incorporating the trade mark.
9. The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant. 5. Parties' Contentions A. Complainant
The Complainant asserts trademark rights and states that the disputed domain name is at least confusingly similar to its trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Procedural issues
The difficulties presented by proxy service companies have been amply considered in earlier decisions under the Policy1. There is no evidence that the Complainant was aware of the actual identity of the beneficial owner of the disputed domain name. There is no evidence that the Complainant could reasonably have done more to discover the identity of the beneficial owner of the domain name. The opinion of other panels applying the Policy is that in these circumstances it is appropriate for the complainant to have proceeded against the proxy service company as nominated respondent2. This Panel finds that the Complainant properly brought these Administrative Proceedings against the Respondent.
Accordingly, the Panel moves to paragraph 4(a) of the Policy which requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry. First, a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the trade mark and domain name are identical or confusingly similar.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is prima facie evidence of trade mark rights for the purposes of the Policy. On the evidence, there is no doubt that the Complainant has trade mark rights in MICHELIN acquired through registration3.
The remaining question is whether the disputed domain name is confusingly similar to the Complainant's trade mark. The Panel accepts the consensus view of former panels that for the purposes of testing confusing similarity, the generic top-level domain, “.com,” is to be ignored4. The domain name wholly incorporates the Complainant's trade mark, adding only the element “leguide” which would be readily perceived as “le guide” and which is both descriptive and non-distinctive when set alongside the trade mark5. C. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to demonstrate rights or legitimate interests6.
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you 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 trade mark or service mark at issue.
The WhoIs data does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the name, registered or not. The Complainant has stated there to be no relationship between it and the Respondent.
The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Rather, the disputed domain name re-directs Internet users to a commercial website unconnected with the Complainant. It is established by former decisions under the Policy that such action is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the domain name7.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not discharged the onus which fell to it as a result.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
What is noteworthy about paragraphs 4(b)(i) – (iv) is that they are cases of both registration and use in bad faith. Paragraph 4(b) is not exhaustive and other instances of bad faith might be in evidence but, in those instances, the Panel must be able to find both bad faith registration and bad faith use. It is therefore logical to first test the facts against the Policy itself.
Paragraph 4(b)(iv) requires use of the domain name creating a likelihood of confusion with the Complainant's mark as to the source of the online location to which Internet users are attracted. The Panel has already found the domain name to be confusingly similar to the trade mark. The Panel finds that the likelihood of confusion as to source is therefore inevitable.
Paragraph 4(b)(iv) also requires an intention for commercial gain. What is required is proof that it is more likely than not, that intention existed; absolute proof is not required and the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory8.
The Complainant alleges that the Respondent is using the domain name in relation to a website that exists only to cause confusion and drive pay-per-click revenue. On the facts, the Panel finds it more likely than not that the Respondent had the requisite intention for commercial gain. Moreover, what is clear is that use of a domain name in this same manner is very frequently for commercial gain9.
The Panel finds that the Respondent's use of the disputed domain name falls under paragraph 4(b)(iv) and was therefore used and registered in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the third and final limb of the Policy. 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, , be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Date: October 6, 2009
1 See, for example, The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658],WIPO Case No. D2007-1438.
2 See, for example, Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886; see also Baylor University v. Domains By Proxy Inc., a/k/a Mark Felton a/k/a Thomas Bassett a/k/a William Bunn a/k/a Fertility Specialists of Dallas a/k/a Becky Chatham a/k/a Amanda Scott a/k/a Nathan Flaga a/k/a Lisa Payne a/k/a Victor Weir III, NAF Case No. FA1145651.
3 See, amongst many others, International Trademark Registration No. 348615 dated July 24, 1968. See State Farm Mutual Automobile =Insurance Company v. Periasami Malain, NAF Case No. FA705262 (“Complainant's registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Case No. FA174052 (finding that the complainant's registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant's rights in the mark for purposes of Policy paragraph 4(a)(i)).
4 See, for example, Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Case No. FA153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”).
5 See, by analogy, Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809 (WIPO Feb. 22, 2001) finding that “CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, ‘perfumes' is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant's business.”
6 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. FA741828; AOL LLC v. Jordan Gerberg, NAF Case No. 780200.
7 See, for example, Bank of America Corporation v. Azra Khan, NAF Claim No. 124515, finding that the respondent's diversionary use of the domain name to was not a bona fide offering of goods or services, was not noncommercial use, and was not fair use); see also MEDIATIS S.A. v. Packalo S.A.RL. Cyberger and Stan Virgiliu,WIPO Case No. D2007-0312, stating that “[t]he website to which the domain name resolved, although active, only consisted in a parking page, hosted by Sedo and containing sponsored links to competitors of the Complainant. This use does not qualify as a bona fide offering of goods or services. Neither does it qualify as a non-commercial or fair use of the domain name”.
8 See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. FA95095 (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
9 See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (finding that redirecting users to the website “www.” was for commercial gain and was bad faith registration and use); Ticketmaster Corporation v. Amjad Kausar,WIPO Case No. D2002-1018 (holding that “[t]he Respondent is clearly acting in bad faith by using the Complainant's mark to profit in the form of commissions by linking of the T Affiliate Program”); Yahoo! Inc. v. DFI Inc., NAF Case No. FA147313 (holding that, because respondent participated in an affiliate program whereby it earned a commission for each user redirected from its infringing site, its ultimate goal was commercial gain and thus it was using the name in bad faith); and Showboat, Inc. v. Azra Khan, NAF Case No. 125227 (redirecting users for a commission is using a confusingly similar domain name for commercial benefit, which is evidence of bad faith).
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