The Complainant is Compagnie Générale des Etablissements Michelin (Michelin) of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Jorge Almeida of Palo Negro, Aragua, Bolivarian Republic of Venezuela. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainPeople, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2011. On January 26, 2011, the Center transmitted by email to DomainPeople, Inc. a request for registrar verification in connection with the disputed domain name. On February 2, 2011, DomainPeople, Inc. 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 February 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2011.
The Center appointed Fleur Hinton as the sole panelist in this matter on March 8, 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 owner of the trademark MICHELIN which has a worldwide reputation in the automobile and tire industries, for hotel and restaurant guides and for a system of rating restaurants and other dining establishments. The Complainant employs nearly 5,000 people in South America alone in various truck, passenger car and tire facilities. In Venezuela itself the Complainant has a website at which shows several distributors of MICHELIN goods in Aragua, the state which the Respondent gives as his location.
The trademark MICHELIN is registered in many jurisdictions throughout the world including Venezuela, where the Respondent is located. In addition, the Complainant has registered many domain names including , and .
The Complainant sent a cease and desist letters to the Respondent on January 7, 2010 requiring the Respondent to cancel the disputed domain name. The Respondent said that it would do so provided that it were compensated. It sent a further cease and desist letter on October 22, 2010. When no response satisfactory to the Complainant was received to the second letter, it commenced these proceedings. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is identical or at least confusingly similar to its trademark MICHELIN which has been found by previous panels to be “well-known” or “famous”.
It alleges further that the Respondent has no rights or legitimate interest to the disputed domain name. He has no affiliation with the Complainant and has not received authority from the Complainant to use the disputed domain name. Neither does the Respondent have any other right to use the domain name. The Respondent has not made a bona fide offering of goods or services on a website connected to the disputed domain name. The Complainant submits that the website connected to the disputed domain name was under construction. The Panel has found that no server can be found for the website linked to the disputed domain name. In addition, the Complainant submits that the Respondent’s offer to sell the disputed domain name was evidence that he has no rights or legitimate interest to the disputed domain name.
The Complainant alleges also that the disputed domain name was registered and used in bad faith. It says that it is implausible that the Respondent was unaware of the Complainant’s famous trade mark when he registered the disputed domain name. This is particularly so where the Respondent has not only adopted the Complainant’s trademark, but also the generic term “starred” which is connected to a core part of the Complainant’s business. The Complainant submits that, in all of the circumstances of this case the Respondent’s passive use of the disputed domain name constitutes a use in good faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy requires that the Panel make its finding on the basis of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In previous proceedings brought by the Complainant before other panels (see: Compagnie Generale des Etablissements Michelin, Michelin et Cie, Michelin Recherche et Technique S.A. v. Alvaro Collazo,WIPO Case No. D2004-1095; Compagnie Générale des Établissements Michelin - Michelin et Cie v. Petdorf Racing, WIPO Case No. D2005-0210; Compagnie Générale des Etablissements Michelin v. Pavol Horecny,WIPO Case No. D2009-1554; Compagnie Générale des Etablissements MICHELIN v. Los Planetas (LoIsrael Rondón),WIPO Case No. D2002-0875; Compagnie Générale des Etablissements Michelin-Michelin & Cie v. la bon vie and Gilles Epie,WIPO Case No. D2002-0092; Compagnie Générale des Établissements Michelin - Michelin & Cie v. Manuel Manero Peláez,WIPO Case No. D2001-0215 and Compagnie Générale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, WIPO Case No. D2000-1414 and Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. 2010-0484) it has been accepted by panels that the trademark MICHELIN is a well-known or famous trademark.
It is now accepted that a domain name which incorporates entirely the trademark of another may result in a finding that the disputed domain name is identical or confusingly similar to the trademark with which it is being compared. It has been established that the mere addition of material such as a gTLD will not suffice to distinguish the domain name from the trademark. The other part of the disputed domain name which features in this case, “starred”, is a generic term very close to the word “star” which is frequently used by the Complainant in combination with its trademark MICHELIN and associated with the Complainant for that reason.
The Panel finds that the disputed domain name is confusingly similar to the trademark so the requirement of 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has not replied to the Complainant and therefore has not provided any information as to any rights or legitimate interests in the disputed domain name. Therefore, the Complainant need only establish a prima facie case that the Respondent has neither rights nor legitimate interests in the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1).
The Respondent has not received authority or a license from the Complainant to use the disputed domain name. Neither has he made a legitimate offering of goods or services using the disputed domain name.
The Respondent has offered to sell the disputed domain name to the Complainant. Whilst an offer to sell a disputed domain name may not always be evidence of a lack of right or legitimate interests, in this instance in the context of the surrounding circumstances and the fact that the disputed domain name includes a famous trademark, the Panel finds that the offer to sell is evidence of the Respondent’s lack of rights or legitimate interests. The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests as required by 4(a)(i) of the Policy. C. Registered and Used in Bad Faith
It is extremely unlikely that the Respondent registered the disputed domain name without having been aware that it incorporated the Complainant’s famous trademark MICHELIN. In Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464 it was found that “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith. The trademark MICHELIN is extremely well-known and that the Respondent has adopted not only the trademark but the generic term “starred” for the disputed domain name. The Respondent has not replied to the complaint and, in all of these circumstances, the Panel finds that the Respondent has registered the disputed domain name in good faith.
It is also necessary for the Complainant to establish that the Respondent’s use is in bad faith. When the complaint was lodged, it seems that the website to be attached to the domain name was under construction. It now appears that there is no server to it so, effectively, it is not being used. However, in Lego Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494, also involving a famous trademark, the panelist referred to the consensus view of the WIPO panel decisions, that “[t]he lack of active use of the domain name does not as such prevent a finding of bad faith”, and that a panel must examine such circumstances as “complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 3.2). The Panel finds that all of those factors to a great or lesser extent are present in this case. In addition the Panel finds that the offers of the Respondent between the two cease and desist letters from the Complainant to sell the domain name to the Complainant adds to the use in bad faith. The Panel concludes that the domain name has been used by the Respondent 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 cancelled.
Fleur Hinton
Sole Panelist
Dated: March 22, 2011
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