The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & Associés, France.
The Respondent is Van Sieng Tran of London, United Kingdom of Great Britain and Northern Ireland (“UK”). 2. The Domain Name and Registrar
The disputed domain names , , , , , , , , , , , , , , and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2012. On July 18, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain names. On July 20, 2012, GoD, LLC 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 July 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2012.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on August 20, 2012. 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 owns numerous trademark registrations worldwide evidencing exclusive rights to the mark MICHELIN in connection with the automobile and tire manufacturing industries, including International Trademark Nos. 348615, 492879, 816915 and Community Trademark No. 004836359. Moreover, the Complainant owns common law rights in the UK for the marks MICHELIN and MICHELIN STAR in connection with its hotel/restaurant guides and map publications. The Complainant has continuously used the MICHELIN STAR rating system in connection with the aforementioned guides in the UK since at least 1974, a total of more than 35 years.
The Complainant is also the owner of the domain names that utilize the primary top-level domain (TLD) extension for the UK, namely, registered on April 22, 1997 and registered on July 29, 2002.
Each of the disputed domain names listed above and at issue in the present Complaint is registered with GoD LLC on September 9, 2011 and expires on September 9, 2012. 5. Parties’ Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, the Complainant alleges that:
Since 1905, the Complainant has been an ever present fixture helping to shape the history of motoring and transport in the UK. The Complainant is specifically present in the UK through thousands of tyre distributors and through its UK websites and . Additionally, the Michelin Maps and Guides division, which is responsible for the publication of the Michelin Guide, is located in Watford, which is 20 kilometers from London where the Respondent is located. The Complainant now has more than 100 years in existence and has evolved to offer much more than just tyres, including considerable work in economic development and publishing services. Consequently, it is undisputed how well-known the MICHELIN mark is particularly in connection with its hotel/restaurant guide services.
Each of the disputed domain names reproduces the distinctive and dominant portion of the Complainant's trademark, namely, MICHELIN, which is an arbitrary word that has no meaning in English.
The disputed domain names are identical or at least confusingly similar to the Complainant's trademark MICHELIN and MICHELIN STAR. The Complainant contends that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark. Additionally, the addition of the “.com” generic top level domain (gTLD) is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain names.
With respect to paragraph 4(a)(ii) of the Policy, the Complainant alleges that:
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant has never granted, assigned, licensed, sold or transferred any rights in its trademarks to the Respondent.
The Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark.
The Respondent has no prior rights or legitimate interests in the disputed domain names. The registration of the MICHELIN trademark and use of the MICHELIN STAR mark preceded the registration of the disputed domain names for years.
Further, the Complainant attempted to contact the Respondent by sending a cease-and-desist letter and reminders, however, the Respondent did not reply to any of them.
With respect to paragraph 4(a)(iii) of the Policy, the Complainant alleges that:
First, it is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain names. The Complainant’s MICHELIN mark is a well-known mark through-out the world, including in the UK. Moreover, the fact that the Complainant has several physical locations in the UK, including the Maps and Guide division further strengthens the contention that the Respondent knew of the Complainant at the time of registering the disputed domain names.
Second, several prior panels have previously mentioned the worldwide reputation of the MICHELIN mark, making it unlikely that the Respondent was not aware of the Complainant’s proprietary rights in the trademark. Additionally, it is well-established that knowledge of the Complainant’s proprietary rights, including trademarks, at the time of registration of the disputed domain names proves bad faith registration.
Third, the fact that the Respondent registered sixteen domain names on the very same day bearing the well-known trademark MICHELIN is an act constitutive of stockpiling domain names. Stockpiling is further evidence of registration in bad faith.
Fourth, the Respondent uses the disputed domain names to direct Internet users to a parking page displaying commercial links and which have copyright mention which read “Michelin Star Restaurants Edinburgh Copyright © 2009”, which appears to be an attempt to hold out as Complainant. The resulting website is an aggregator website which offers discount to Internet users for MICHELIN restaurants. Given the features of the aforementioned websites and the use of the disputed domain names from which the Respondent diverts traffic for an economic purpose, the disputed domain names are blatantly used in bad faith.
Fifth, in the absence of any license or permission from the Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain names could reasonably be claimed.
Sixth, it is likely that the Respondent registered the disputed domain names to prevent the Complaint from reflecting its trademark in the disputed domain names.
Finally, the Respondent’s failure to respond to the Complainant’s overtures (or the present Complaint) is further evidence of bad faith.
These afore-mentioned circumstances seem to indicate that the disputed domain names were registered and used in bad faith primarily for the purpose of disrupting the business of the Complainant and/or preventing the Complainant from reflecting its trademark in corresponding domain names, which would be of interest to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Because of the Respondent’s default, the Panel may accept as true the factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; See paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). 6. Discussion and Findings
The Complainant must prove that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith (Policy, paragraph 4(a)). A. Identical or Confusingly Similar
Given the Complainant’s long and extensive use of the MICHELIN and MICHELIN STAR trademarks and its ownership of numerous worldwide registrations for the MICHELIN mark, the Panel finds that the Complainant has trademark rights in both the MICHELIN and MICHELIN STAR marks. The Panel also finds that the disputed domain names are nearly identical to or confusingly similar to the Complainant’s MICHELIN or MICHELIN STAR mark. The disputed domain names incorporate the Complainant’s entire trademark and differs from the Complainant’s registered MICHELIN mark in that it adds “STARS” and only by adding legally immaterial geographic designations and the “.com” gTLD. Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is […] without legal significance since use of a gTLD is required of domain name registrants”).
Therefore, the Panel finds that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
In order for the Respondent to demonstrate rights or legitimate interests in the disputed domain names, it must show:
(i) before any notice to [the Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to 4(c)(i) of the Policy, there is no evidence that the Respondent is using the disputed domain names in connection with a bona fide offering of goods and services. The Respondent did not respond to the Complainant’s inquiries or the Complaint and offered no defense of its use. The Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174, correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, the Respondent did not file a response and hence did not effectively rebut any of Complainant’s assertions. Nor did the Respondent avail himself of the opportunity to state his bona fide in response to the Complainant’s cease-and-desist correspondence. Accor, SoLuxury HMC v. Jim Green,WIPO Case No. D2011-1773.
Even if the Panel stretches to justify the Respondent as a legitimate aggregator, the defense fails. The accused web pages make no effort to disclaim a relationship to the Complainant or, for that matter, to offer any explanation of the relationship to the famed MICHELIN marks. Oki Data Americas, Inc v. ASD, Inc,WIPO Case No. D2001-0903. Neither do the pages associated with the disputed domains names offer any assurance that the restaurants for which they offer discount coupons have ever even been, in fact, rated by Michelin.
With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain names. Further, the Complainant has never licensed nor otherwise permitted the Respondent to use its MICHELIN or MICHELIN STAR trademark or to apply for any domain name incorporating the MICHELIN or MICHELIN STAR marks. There is no relationship between the Complainant and the Respondent.
With respect to 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the disputed domain names, or a name corresponding to the disputed domain names, in connection with a bona fide offering of goods or services.
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a domain name. National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The ultimate burden of proof, however, remains with complainant. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141. The Panel finds that the above facts establish a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Moreover, the Respondent has not rebutted such a prima facie showing.
The Panel accordingly finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant’s allegations of bad faith are not contested. Bad faith registration is manifest. It is highly probable that that the Respondent was aware of the Complainant’s trademark rights when he registered the disputed domain names on September 9, 2011. The Respondent manifestly intends to and does in fact cause confusion. The disputed domain names are intended to “attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”, Policy, paragraph 4(b)(iv). The Respondent’s failure to respond corroborates that this is bad faith use. Gilt Groupe, Inc. v. Romain David,WIPO Case No. D2012-0184.
Accordingly, the Panel finds that the Respondent’s holding of the disputed domain names satisfies the requirement of paragraph 4(a)(iii) of the Policy that the disputed domain names were registered and are being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , , , , , , , , , , , , and be cancelled per Complainant’s request.
Lawrence K. Nodine
Sole Panelist
Dated: September 3, 2012
Full & Egal Universal Law Academy