Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is Hong Chen of Ningbo, ZheJiang, China. 2. The Domain Name and Registrar
The disputed domain name is which is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2011. On October 7, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On October 7, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 3, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on November 14, 2011. This Panel finds that it was properly constituted. This 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
Complainant has rights over the trademark MICHELIN for which it holds several registrations, including, among others: MICHELIN registration number 771031 with the World Intellectual Property Organization, registered in 2001, classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42; and MICHELIN registration number 6167649 with the China Trademark Office, registered in 2007, class 12.
The disputed domain name was created on April 19, 2011. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows:
Complainant owns numerous MICHELIN trademark registrations around the world, and specifically in China where Respondent is located, in connection with the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides and maps publications. Further, Complainant is present in Asia, and particularly in China through several subsidiaries. Complainant also operates the domain name .
Complainant has used the MICHELIN trademark in connection with a wide variety of products and services around the world. Consequently, the public has learned to perceive the goods and services offered under such trademark as being those of Complainant. Further, several prior UDRP panel decisions have regarded the MICHELIN trademark to be “well-known” or “famous”.
The disputed domain name is identical or at least confusingly similar to Complainant’s trademark MICHELIN.
The disputed domain name reproduces Complainant’s trademark in its entirety. The disputed domain name also features the geographical term “China” added to the MICHELIN trademark. The addition of such term is not sufficient to distinguish the disputed domain name from Complainant’s trademark. The dash between the term “Michelin” and the geographical term “China” is not enough to avoid confusion. Thus the only distinctive term in the disputed domain name is identical to the trademark MICHELIN. By registering the disputed domain name Respondent created a likelihood of confusion with Complainant’s trademark.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not commonly known by the name Michelin. Respondent is not affiliated with Complainant in any way, nor has Respondent been authorized or licensed by Complainant to use and register such Complainant’s trademark or to seek registration of any domain name incorporating such trademark. Thus no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by Respondent.
The registration of the MICHELIN trademark preceded the registration of the disputed domain name for years.
The disputed domain name is so identical to the famous MICHELIN trademark that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
The disputed domain name directs Internet users to parking pages displaying pay-per-click links about tires (printout attached to the Complaint as Annex 3). Those pay-per-click links are very likely to generate revenues for Respondent. The sole objective of Respondent in choosing the disputed domain name is to benefit from the reputation and fame of Complainant’s MICHELIN trademark.
Thus the disputed domain name is not used in connection with a bona fide offering of goods and services.
The disputed domain name was registered and is being used in bad faith.
It is implausible that Respondent was unaware of Complainant when he registered the disputed domain name since both Complainant and Complainant’s MICHELIN trademark are well-known throughout the world.
Respondent’s reproduction of the trademark in its entirety, combined with a geographical term, clearly proves that Respondent was aware of the existence of Complainant’s trademark. Given the reputation of the MICHELIN trademark, registration of the disputed domain name in bad faith can be inferred.
A quick MICHELIN trademark search would have revealed to Respondent the existence of Complainant and its trademark. Respondent’s failure to do so is a contributory factor to its bad faith. A simple search via Google or any other search engine using the keyword Michelin demonstrates that all first results relate to Complainant’s products or news.
The use of the disputed domain name suggests that Respondent was perfectly aware of Complainant and its MICHELIN trademark. The term China is a direct reference to a country where Complainant is present.
There is little doubt that Respondent was not aware that MICHELIN enjoyed a substantial reputation worldwide. In light of this knowledge Respondent uses the disputed domain name to direct Internet users to a webpage displaying pay-per-clicks which are likely to generate revenues. The use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the Policy. Such use of the disputed domain name was not auhtorized by Complainant and prior UDRP panel decisions have considered that in the absence of any license or permission to use widely known trademarks, no actual or contemplated bona fide use of a domain name could reasonably be claimed.
On July 18, 2011 Complainant sent a cease and desist letter to Respondent. On July 29, 2011 Respondent replied by email stating that he was willing to transfer the disputed domain name for a price of USD 800. Respondent’s offer to sell the disputed domain name to Complainant for a figure substantially in excess of Respondent’s expenses incurred in registering the disputed domain name constitutes use in bad faith, pursuant to the Policy and prior UDRP panel decisions.
Complainant requests that the disputed domain name be cancelled. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint 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”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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
It is undisputed that Complainant has rights over the MICHELIN trademark.
The disputed domain name entirely incorporates the MICHELIN trademark, along with the addition of the geographic term “China” with a dash in between.
It is clear that the distinctive element in the disputed domain name is Complainant’s MICHELIN trademark. The addition of the “-China” suffix is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (See America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s MICHELIN trademark. B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has never licensed or authorized Respondent neither to register a domain name incorporating the MICHELIN trademark nor to make any use of it. Further, Complainant states that Respondent has no affiliation whatsoever with Complainant, and that Respondent is not commonly known by such trademark.
It is undisputed that Complainant’s trademark is well-known internationally. Further, it is clear that Respondent registered the disputed domain name years after Complainant established rights in its MICHELIN trademark.
Respondent is not using the website associated with the disputed domain name to offer its own products or services, but rather to show advertisements and links featuring products and brands competing with those of Complainant. Such use of Complainant’s trademark by Respondent does not establish rights or legitimate interests of Respondent in the disputed domain name.
There is no evidence in the file of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which entirely incorporates Complainant’s trademark, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name2.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Taking into consideration Complainant’s international presence (including in China), and the registration and international recognition of Complainant’s MICHELIN trademark, this Panel is of the view that Respondent should have been fully aware of the existence of Complainant’s trademark at the time it obtained the registration of the disputed domain name.
The use of a domain name for a website that generates pay-per-click revenue is not, per se, evidence of bad faith. However, there are several factors that in the aggregate lead to no other conclusion. In this case (i) Complainant’s trademark is well-known worldwide; (ii) Complainant’s trademark has been registered since at least 2001, years before the registration of the disputed domain name; (iii) the website associated to the disputed domain name shows advertisements and links to Complainant’s competing products3; (iv) Respondent’s response to Complainant’s cease and desist letter asking for a price of USD 8004; and (v) Respondent’s failure to appear at this proceeding.
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name be cancelled.
Gerardo Saavedra
Sole Panelist
Dated: November 25, 2011
1 See Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 See Intocast AG v. Lee Daeyoon,WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
3 See Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101: “Policy, paragraph 4(b)(iv) provides that registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith”. See also Microsoft Corporation v. Gioacchino Zerbo,WIPO Case No. D2005-0644: “It may be inferred that the Respondent did register the domain name in dispute on purpose, to disrupt the Complainant’s business, as it used the domain name with sponsored links to competitors”.
4 See CBS Broadcasting, Inc. v. Gaddoor Saidi,WIPO Case No. D2000-0243: “Under the Policy, an offer to sell the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that, the domain name has been registered and is being used in bad faith”.
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