WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie Générale des Etablissements Michelin v. Gioacchino Zerbo Case No. D2010-0865 1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Gioacchino Zerbo of Senna Comasco, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2010. On May 28, 2010, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On May 31, 2010, F transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 June 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 24, 2010.
The Center appointed Zoltán Takács as the sole panelist in this matter on July 7, 2010. 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.
The language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background
Founded in 1889 by two brothers, André and Edouard Michelin, according to the September 2009 issue of Tire Magazine, Michelin today holds a leading position in every tire market as well as in travel-related services.
Michelin 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, and with its 72 productions facilities in 19 countries is present on all continents.
Michelin's symbol is “Bibendum”, also commonly known as the “Michelin Man”. Created in 1898, the “Michelin Man” ranks among the world's oldest and best known brands.
Michelin has been present in Italy for more than a century through a registered office, a sales department and four factory units.
The Complainant owns numerous trademark registrations worldwide, including but not limited to:
- International Trademark Registration No. 348615 MICHELIN,registered on July 24, 1968, covering goods of classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;
- Community Trademark Registration No. 1791243 MICHELIN,registered on October 24, 2001, covering goods of classes 6, 7, 12, 17 and 28;
- Italian Trademark Registration No. 857050 MICHELIN,registered on December 6, 2001.
In addition, the Complainant obtained and operates the domain names since December 1, 1993 and since August 28, 1997.
The disputed domain name was originally obtained on July 29, 2003 by an Italian individual named M. Dinoia, the Respondent later obtained the domain name during July 2009.
According to the March 31, 2010 printout of the website under the disputed domain name, it contained sponsored links and searches, including links to a number of Michelin's competitors such as Pirelli, Bridgestone, Firestone, Goodyear and so does at the time of rendering this decision.
The Complainant tried several times to solve this conflict in a peaceful manner, but the Respondent never replied. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name contains entirely its well-known MICHELIN trademark, and that the word “man” is not sufficient to distinguish the disputed domain name from its MICHELIN trademark. Moreover, the addition of the word “man” increases the risk of confusion, because it is directly related to the Complainant's famous symbol “Bibendum”, i.e. the “Michelin Man”. For all these reasons the Complainant alleges that the disputed domain name is identical or confusingly similar to the trademark MICHELIN and to its famous brand in which the Complainant has exclusive rights.
The Complainant further submits that the Respondent has no rights or legitimate interest in respect of the disputed domain name, since he is not affiliated with the Complainant in any way, and has never been authorized by the Complainant to seek registration of any domain name incorporating any of its marks. The Complainant contends that the Respondent never used the terms “Michelin” and “Michelin Man” in any way before or after the Complainant started its business, and that he is not known under these or any similar names.
The Complainant asserts that the Respondent registered and is using the disputed domain name to benefit from the reputation of the trademark MICHELIN by creating a website for the purpose of monetary gain by providing “pay-per-links” links to sites of other companies, some of which are direct competitors of the Complainant. In addition, the Complainant alleges that by leaving out the dot after the “www” in the disputed domain name the Respondent intended to divert Internet users to the litigious website, by a dishonest practice commonly known as dot squatting. For all these reasons the Complainant concludes that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel's decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in the WIPO UDRP Panel Decisions (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.6) that a respondent's default does not automatically result in a decision in favor of the complainant.
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements in order to succeed with the complaint:
(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 and registrant of the domain name has no rights or legitimate interests in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
While a panel may draw negative inferences from a respondent's default, paragraph 4 of the Policy requires a complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. A. Identical or Confusingly Similar
Under this paragraph, there are two requirements which the Complainant must establish, firstly that it has rights in a trade or service mark, and secondly that the disputed domain name is identical or confusingly similar to the trademark.
The Complainant has proven that it holds a number of valid trademark registrations for the mark MICHELIN in many countries of the world, including the jurisdiction of the Respondent's domicile.
The Complainant also submitted evidence that through extensive use for over a century, it has acquired exclusive rights to the Company's symbol called worldwide as “Bibendum” or the “Michelin Man”, which the Complaint contends has become a distinctive identifier associated with its goods and services1.
The mere adjunction of letters “www” and the gTLD “.com” in the disputed domain name do not lessen confusing similarity with the Complainant's trademark MICHELIN, especially in circumstances in which the Complainant has been using its symbol widely recognized as the “Michelin Man” for over a century, makes the domain name a combination which clearly evokes the MICHELIN trademark of Complainant (Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484).
Therefore that Panel finds that the disputed domain name is confusingly similar to the MICHELIN trademark of the Complainant, and thus the first element of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant never authorized either the original registrant, or the Respondent, who obtained the disputed domain name apparently through assignment, to use either its MICHELIN trademark or the name of its symbol, the “Michelin Man”, in a domain name, or in any other way. The Complainant's prior rights in the MICHELIN trademark and use of the symbol known as the “Michelin Man” long preceded the date of registration of the disputed domain name.
It has been a consensus view in the WIPO UDRP Panel Decisions (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1) that while the overall burden of proof rests with a complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
Under paragraph 4(c) of the Policy, respondents may demonstrate their rights and legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) their 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 and services before any notice to them of the dispute, or
(ii) they (as individuals, businesses, or other organizations) have been commonly known by the domain name, even if they have acquired no trademark or service mark rights, or
(iii) they are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
By defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy, and circumstances brought forward by the Complainant in regard to making out this requirement of the Policy satisfy the Panel that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has been using the Complainant's MICHELIN trademark and its symbol's name the “Michelin Man” in its domain name without permission, and the circumstances discussed above, in the absence of a rebuttal by the Respondent convince the Panel that the second element of the Policy's paragraph 4(a) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that – among others – the circumstance of respondent's usage of the domain name attempting to intentionally attract, for commercial gain, Internet users to a respondent's website or other on-line location, if found by the panel to be present, shall be evidence of registration and use of the domain name in bad faith.
The Panel considered the Complainant's allegations with regard to Respondent's registration and use of the domain name in bad faith, and found as indicative of bad faith registration and use the following:
- the disputed domain name incorporates the famous MICHELIN trademark of the Complainant, and the wording of its equally famous symbol the “Michelin Man”, and it is highly unlikely that the original registrant and the Respondent had no knowledge of that when registering and later acquiring the domain name;
- the disputed domain name directs Internet users to a website hosting page with sponsored, “pay-per-click” links to sites of other tire companies, some of which are direct competitors of the Complainant;
- omitting the period in between the letters “www” and a domain name is a common typing error Internet users make, and creation of a domain name within the scope of the dot squatting theory is indicative of the Respondent's intention to take advantage of a common typing error of Internet users, and with that, divert Internet traffic intended for the Complainant's website and capitalize on such typographical errors.
In the view of the Panel, the above circumstances prove that the domain name was registered with an intent to benefit from the reputation of the MICHELIN mark and wording of the famous symbol the “Michelin Man” through generating income via advertised “pay-per-click” links as well through the concept known as dot squatting, which clearly amounts to interfering with the legitimate commercial business of the Complainant and with that to registration and use of the domain name in bad faith within the scope of paragraph 4(a)(iii) 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.
Zoltán Takács
Sole Panelist
Dated: July 19, 2010
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