Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Nathalie Dreyfus, France.
Respondent is A Domain Privacy/Transure Enterprise Ltd of Tortola, British Virgin Islands. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2010, the Center transmitted by email to A, Inc., a request for registrar verification in connection with the disputed domain name. On December 10, 2010, A, Inc. 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 Complainant on December 10, 2010 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 together with additional appendix on December 13, 2010.
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 Respondent of the Complaint, and the proceedings commenced on December 14, 2010. In accordance with the Rules, Paragraph 5(a), the due date for Respondent’s Response was January 3, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent of the default on January 4, 2011.
The Center appointed John E. Kidd as the sole panelist in this matter on January 17, 2011. 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.
Having reviewed the case records, the Panel finds that the Center has discharged its responsibilities under paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice of Respondent.” In the view of the Panel, the proper procedures have been followed and it may issue its decision based upon the documents submitted in accordance with the Policy, the Rules and Supplemental Rules without the benefit of a response from Respondent.
As of the date of this opinion, no response by Respondent has been received at the Center. In light of Respondent’s failure to submit a response, the Panel, pursuant to the Rules may draw such inferences, including adverse inferences, as it considers appropriate. See William H. Cosby, Jr. v. Sterling Davenport,WIPO Case No. D2005-0756. 4. Factual Background
The following facts asserted by Complainant have not been challenged or otherwise contested by Respondent. The Panel has carefully reviewed Complainant’s evidence and by Respondent’s default, the evidence is held to be true.
Complainant (Michelin) founded in 1889 and continuously used for over a century, owns the mark MICHELIN, which is protected internationally and specifically in Australia by multiple trademark class registrations in connection with automobiles and the tire industry, as well as in connection with hotel/restaurant guides and map publications. Michelin also has a definite and worldwide reputation in the automotive industry and in French and foreign gastronomy. An example is its international trademark registration number 348615 dated July 24, 1968, duly renewed in many classes for goods and services and Australian trademark registration No. 847441 dated August 23, 2000 duly renewed covering multiple classes of goods and services.
The disputed domain name was registered by Respondent in June 2010 long after Complainant’s registration with an Australian address and directs Internet users to a website displaying sponsored links in French, related to maps, GPS and tires.
Before filing the Complaint, Complainant sent a cease and desist letter via both e-mail and registered letter to Respondent. After sending several reminder letters, Complainant received an answer requesting money in exchange for transferring the dispute domain name to Complaint. As an amicable settlement was not found, Complainant initiated these proceedings in order to obtain transfer of the disputed domain name
The evidence also establishes that Complainant never granted Respondent a license or any other authorization to use the mark MICHELIN in the disputed domain name. 5. Parties’ Contentions A. Complainant
Complainant submits that each of the three elements specified in Paragraph 4(a) of the Policy are applicable to the disputed domain name .
First, the dispute domain name is identical or at least confusingly similar to mark and registered trademarks in which it has rights because it has incorporated the MICHELIN trademark in its entirety and previous UDRP decisions have established that this alone is sufficient to establish that the disputed domain name is identical or confusingly similar to Complainant’s registered trademark.
The mere addition of generic word “map” and top level gTLD “com” is not sufficient to distinguish the disputed domain name.
Second, Respondent has no rights or legitimate interest in respect of the domain name since it is not in any way affiliated with Complainant nor has Complainant authorized or licensed Respondent to use its trademark. In addition, Respondent has no prior rights nor demonstrated any legitimate interest in the disputed domain name and has not used the disputed domain name with a bona fide name offering of goods or services.
Thirdly, the disputed domain name was registered and is being used by Respondent in bad faith. B. Respondent
The Respondent did not reply to Complainant’s contentions or otherwise challenge the evidence. 6. Discussion and Findings A. Identical or Confusingly Similar
The panel finds that the disputed domain name is confusingly similar to the trademark MICHELIN in which Complainant has prior trademark registration rights, and for which it is well known worldwide. The disputed domain name has incorporated Complainant’s trademark in its entirety.
It is well established, that the incorporation of a trademark in its entirety into a domain name in dispute is sufficient to establish that the domain name is identical or confusingly similar to Complainant’s registered trademark. See AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 and F. Hoffman-La Roche A.G.V v. Ric Deleon,WIPO Case No. D2006-0135. Internet users have every right to expect that, when they select a domain name, they will find themselves looking at a site of the owner or someone licensed by the Complainant to use its trademark. In this case, that is not true.
Many UDRP decisions have established that adding a generic word, here “map” as a prefix is insufficient to give any distinctiveness to the disputed domain name. See Ferrari S.p.A. v Privacy LLC, WIPO Case No. D2010-0895. The Panel finds that is true in this case.
Moreover it is well established that the mere addition of the gTLD suffix “.com” is not relevant because the top level domain name is not a distinctive element when assessing whether the disputed domain name is identical or confusingly similar to Complainant’s trademark. The “.com” suffix at the end of the disputed domain name is of no significance as it is simply part of the Internet address and does not exclude confusion. See Roux Laboratories, Inc. d/b/a Colomer USA v Sheldiez Beauty Salon/Arthur Robinson,WIPO Case No. D2005-0799.
Accordingly, in the Panel’s opinion, by registering the disputed domain name, Respondent has created a likelihood of confusion with Complainant’s trademark and could mislead Internet users into thinking that it is in some way associated with Complainant.
The Panel finds that the requirements of Paragraph 4(a)(i) of the Policy are satisfied. B. Rights or Legitimate Interests:
Paragraph 4(c) of the Policy contains a nonexhaustive list of circumstances that may demonstrate when a Respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) The use of the domain name in connection with the bona fide offering of goods and services;
(2) Being commonly known by the domain name; or
(3) The making of a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
The Panel finds there is no evidence of the existence of any of those rights or legitimate interests by Respondent. Moreover, Complainant has not authorized, licensed, or permitted Respondent to register or use the domain name in dispute or to use Complainant’s trademark in any manner. The Panel finds that Complainant has prior rights in the trademark MICHELIN which precede Respondents registration of the disputed domain name and Respondent is trading on Complainant’s good will to the detriment of the Complainant.
The Panel views the Respondent’s failure to respond or provide any evidence of circumstances of the type specified in Paragraph 4(c) of the Policy, after notice, as further evidence that Respondent has no rights or interests in the disputed domain name. See Marconi Data Systems, Inc. v IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090.
The Panel therefore concludes that Respondent has no rights or legitimate interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy and the second element of the Policy has not been met. C. Registered and Used in Bad Faith.
Complainant’s MICHELIN trademark is well known throughout the world. Previous UDRP decisions have found the trademark to be well-known. See for example, Compagnie Générale des Etablissements Michelin v. Geoacchino Zerbo, WIPO Case No. D2010-0454 and Compagnie Générale des Etablissements Michelin Trendeny,WIPO Case No. D2009-1554.
In light of the reputation of Complainant’s trademark which was also registered in Respondent’s jurisdiction, the Panel concludes that Respondent may have had constructive, if not actual knowledge of Complainant’s trademark when registering the dispute domain name. It is reasonable for the Panel to infer that Respondent may have known of Complainant’s trademark rights but nevertheless as the evidence shows registered and acted in bad faith.
Further examples of clear evidence of bad faith are Respondent’s registration of a domain name using a well-known trademark, see supra Ferrari S.p.A. v. Privacy, LLC, and failure to respond to the complaint, see supra Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.
In registering the disputed domain name the mere addition of a generic word, here “map” to a famous trademark, is the first evidence of bad faith, see Nutri/System IPHC Inc. v. Domain Listing Agent/Eric Hatcher,WIPO Case No. D2008-0425 and cases cited therein.
A simple trademark search via Google or any other search engine using the keyword MICHELIN would have revealed to Respondent the prior rights of Complainant. The Panel finds that the subsequent registration of the disputed domain name was in bad faith. See Young Genius Software AB v MWD James Varges,WIPO Case No. 2000-0591.
Moreover, the Panel finds that the disputed domain name revolves to a parking page displaying commercial links. The use of a domain name with a well-known trademark to divert Internet users and to direct them to a webpage providing click through revenues to Respondent, evidences bad faith, since Respondent is taking undue advantage of Complainant’s trademark and attempting to take a free ride on Complainant’s investment to generate profit for Respondent.
In view of the above, the Panel finds that the disputed domain name has been registered and used in bad faith, according to paragraph 4(a)(iii) of the Policy. 7. Decision
For all of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be cancelled.
John E. Kidd
Sole Panelist
Dated: January 31, 2011
Full & Egal Universal Law Academy