The Complainant is Compagnie Générale des Etablissements Michelin (Michelin) of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is BMtexnologiya MMC, Tural Malikov of Baku, Azerbaijan. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2010. On December 14, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On December 16, 2010, OnlineNic, Inc. d/b/a China-C 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 January 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2011.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on February 4, 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. 4. Factual Background
The Complainant is the French company Compagnie Générale des Etablissement Michelin owner of the trademark MICHELIN throughout the world, in connection with the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides and maps publications. The MICHELIN trademark also has a definite and undisputable reputation in the automotive industry and in French gastronomy.
As far as Azerbaijan is concerned, which is the Respondent’s country of origin, the Complainant is the owner of the following International trademark registrations:
MICHELIN, No. 348615, dated of July 24, 1968 duly renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;
MICHELIN, No. 492879, dated of May 10, 1985, duly renewed and covering goods in class 12;
MICHELIN, No. 816915, dated of August 27, 2003 and covering services in classes 35, 37, 39 and 42.
The Complainant also owns many “michelin” formative domain names, among which under the ccTLDs “.de”, “.es”, “.uk”, “.it”, “.fr” and “.ru”. These domain names lead to websites that are in the language of the country of the relevant ccTLD extension.
The disputed domain name was registered on December 20, 2008 by a company with an address in Azerbaijan. The domain name directs towards a website displaying the trademark MICHELIN and looking like one of the Complainant’s official websites. This website can be visited in Azerbaijani, English and Russian, although in English and in Azerbaijani the website does not appear to work properly.
On June 24, 2010 the Complainant sent a cease and desist letter to the Respondent, asking for the transfer of the domain name . The registered letter could not be delivered by mail as the addressee was “unknown”.
The Complainant also sent several reminders via email, but the Respondent failed to reply to any of them.
At this point, the Complainant felt compelled to initiate this UDRP proceeding. 5. Parties’ Contentions A. Complainant
According to the Complainant:
1. The domain name is confusingly similar to the Complainant’s well-known trademark MICHELIN, because:
(i) it entirely incorporates this trademark;
(ii) the addition of the term “az” is insufficient to provide any distinctiveness to the disputed domain name considering that it could be perceived as the country code for Azerbaijan; and
(iii) the addition of the gTLD “.com” is irrelevant as this element lacks distinctive character when assessing the identity or similarity of the disputed domain name with the Complainant’s trademark.
2. The Respondent lacks rights and legitimate interests in the domain name , because:
(i) the Respondent is not affiliated with the Complainant, nor has authorized the Respondent to use its MICHELIN trademark, or to register any domain name incorporating this trademark;
(ii) the Respondent did not prove to hold any prior rights on the trademark MICHELIN, nor legitimate interest in the disputed domain name.
(iii) the domain name leads to a website depicting the Complainant’s trademark. This website looks like one of the Complainant’s official websites and contains a Michelin copyright notice. However, the website does not work properly: several links posted on the website resolve to error pages. Thus, the Respondent created a counterfeit website, which tarnishes the Complainant’s reputation;
(iv) the domain name is capable of misleading Internet users who can believe that the corresponding website is associated with the Complainant. This is even more so, because the website does not contain any particular disclaimer;
(v) the Respondent provided false or inaccurate contact information.
3. The domain name was registered and is being used in bad faith, because:
(i) the Respondent could not ignore the existence of the MICHELIN trademark at the time of the registration of the disputed domain name, as this trademark enjoys high reputation. Also the way the disputed domain name is used suggests that the Respondent was perfectly aware of the Complainant’s trademark at the time of the registration of the domain name.
(ii) the Respondent failed to reply to the Complainant’s cease and desist letter and subsequent reminders, and provided false or inaccurate contact information;
(iii) the Respondent is reproducing the MICHELIN famous trademark in the disputed domain name in order to attract Internet users to the Respondent’s website. The Respondent’s conduct generates a strong likelihood of confusion for Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, especially because the Respondent’s website depicts the Complainant’s trademark and contains a Michelin copyright notice, while it does not bear any specific disclaimer informing Internet users of the lack of relationship between the Respondent and the Complainant;
(iv) the domain name leads to a website, which looks like one of the Complainant’s official websites. However, the Respondent’s website does not work properly: several links resolve to error pages. It is like the website is not finished and the Respondent could be using it to engage in future fraudulent activities;
(v) it is therefore likely that the Respondent’s primary reason for the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, through the creation of initial interest confusion. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove that each of the conditions specified in paragraph 4(a) of the Policy is satisfied. In particular, the Complainant must prove that:
(i) the disputed 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 in respect of the domain name; and
(iii) the disputed domain name has been registered, and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name entirely reproduces the Complainant’s trademark MICHELIN, and this term coincides with the distinctive part of the disputed domain name. MICHELIN is a trademark enjoying high distinctive character both per se, and in view of its extensive reputation. The suffix “az” of the domain name is irrelevant in the assessment of the confusing similarity between the disputed domain name and the Complainant’s trademark. When seeing the domain name , Internet users would certainly focus their attention on the “michelin” component, which is longer than the suffix “az” and bears a high distinctive character. As a result, Internet users would either completely disregard the suffix “az”, or perceive it as the designation of the Respondent’s country of origin, namely Azerbaijan.
Also the gTLD “.com” is deprived of distinctive character being a necessary element of the domain name.
The Panel therefore concludes that the domain name is confusingly similar to the Complainant’s well-known trademark MICHELIN. B. Rights or Legitimate Interests
Proving through direct evidence a negative fact, such as the lack of rights or legitimate interests in a domain name, is often impossible. Therefore, for the purpose of the UDRP, it is sufficient for the Complainant to make reference to a series of circumstances that provide a prima facie evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name. It is then up to the Respondent to provide arguments to establish that, contrary to the Complainant’s contentions, there exist rights or legitimate interests in the disputed domain name.
The Complainant stated that:
the Respondent is not affiliated with the Complainant, and the Complainant did not authorize the Respondent to use its MICHELIN trademark, or to register any domain name incorporating this trademark;
the Respondent did not prove to hold any prior rights on the trademark MICHELIN, nor to have any legitimate interest in the disputed domain name;
the domain name leads to a website depicting the Complainant’s trademark. This website looks like one of the Complainant’s official websites and contains a Michelin copyright notice. However, the website does not work properly: several links posted on the website resolve to error pages.
The Complainant has proved this statement through the screenshots enclosed as Annexes 4 and 5 to the Complaint;
the domain name is capable of misleading Internet users who can believe that the corresponding website is associated with the Complainant. This is even more true, considering that the website does not contain any particular disclaimer. Conversely, the website contains a Michelin copyright notice;
the Respondent provided false or inaccurate contact information as it is proved by the fact that the Complainant’s cease and desist registered letter to the Respondent was returned to the Complainant with the indication that the Respondent was “unknown”.
Pursuant to paragraph 4(c) of the Policy, the Respondent could have proved that it had rights or legitimate interests in the domain name, by demonstrating that before any notice of the dispute, the Respondent used the domain name in connection with a bona fide offering of goods or services.
The Panel finds that the Respondent used the domain name before becoming aware of the dispute. However, this use cannot qualify as a bona fide offering of goods or services. As a matter of fact, not only the Respondent depicts on its website the Complainant’s well-known trademark, to which the Respondent has no rights, but the website looks like one of the Complainant’s official websites. The Internet users, when accessing the Respondent’s website, will certainly be induced to believe that said website corresponds to the Complainant’s online presence in Azerbaijan. The fact that the website depicts the Complainant’s well-known trademark MICHELIN and its figurative element, the so-called Bibendum or “Michelin Man”, that the website looks like one of the Complainant’s official websites and that it contains the Complainant’s copyright notice (Copyright © 2008 Michelin Azerbaycan), is a clear evidence of the fact that the Respondent was well aware of the Complainant’s trademark and activities since before this conflict arose.
Moreover, the Respondent is not making a “noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue”. The Complainant has rightly pointed out that several links on the “www.” website do not work properly. This circumstance, along with the fact that the website appears, at first glance, as belonging to the Complainant or to an entity affiliated with the Complainant, leads the Panel to conclude that the Respondent is tarnishing the Complainant’s well-known trademark MICHELIN and the Complainant’s activities.
For all the aforementioned reasons, the Panel finds that the Respondent lacks rights or legitimate interests in the domain name . C. Registered and Used in Bad Faith
The Complainant has indicated that its trademark MICHELIN is well-known and the Panel agrees. The reputation of the MICHELIN trademark has been previously assessed by other panels in other UDRP cases. The Respondent has registered a domain name entirely including the Complainant’s trademark and is using this domain name to lead to a website that looks like one of the Complainant’s official websites. However, the Respondent is not affiliated to the Complainant, nor did the Complainant grant the Respondent any authorization to register and use a domain name including the Complainant’s well-known trademark, or to run a website appearing like one of the Complainant’s official websites.
The use of the domain name for a website that looks like one of the Complainant’s official websites and includes the copyright notice “Copyright © 2008 Michelin Azerbaycan “ is a clear indication that the Respondent was perfectly aware of the Complainant’s trademark at the time of the registration of the disputed domain name. This conduct, in the absence of any specific authorization, is evidence of the Respondent’s bad faith in the registration of the domain name : the Respondent created a website that looks like one of the Complainant’s official websites, when in fact it is not, which tarnishes the Complainant’s trademark and reputation and is likely to confuse Internet users.
Moreover, the way the Respondent is using the disputed domain name creates a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The misrepresentation to Internet users of an affiliation with, or endorsement by, the Complainant is also a clear evidence of the Respondent’s bad faith in the use of the domain name.
The Panel therefore concludes that the domain name was registered and used 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, be transferred to the Complainant.
Angelica Lodigiani
Sole Panelist
Dated: February 15, 2011
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