Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondents are PrivacyP of Queensland, Australia and Kim Bum LLC. of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with RegisterM Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on January 25, 2013. Based on information then available in the WhoIs directory, Complainant identified Respondent as PrivacyP. This company shields the true identity of domain name registrants.
On January 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2013, the Registrar transmitted by email to the Center its verification response. In this response, the Registrar identified Kim Bum LLC of Seoul, Republic of Korea (the “Registrant”) as the actual registrant of the disputed domain name.
The Center sent an email communication to Complainant on January 30, 2013, providing the identity and contact information of the Registrant and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 4, 2013.
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 Respondents of the Complaint, and the proceedings commenced on February 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2013. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on February 26, 2013.
The Center appointed Steven L. Snyder as the sole panelist in this matter on March 19, 2013. 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
Complainant has registered and used the MICHELIN mark in many countries around the world, including the Republic of Korea and Australia, the two countries in which Respondents are located. See, e.g., MICHELIN, International Trademark No. 348615, registered July 24, 1968; MICHELIN, Australian Trademark No. 258104, registered May 1, 1972; MICHELIN, Korean Trademark No. 4002569590000, registered February 18, 2003.
On August 7, 2012, long after Complainant’s MICHELIN mark had become well known in the Republic of Korea and Australia, Registrant purchased the disputed domain name, . The domain leads to a website that advertises tires of many different manufacturers, car insurance and hotels.
Complainant was initially unable to discover the Registrant’s identity. This is because Registrant cloaked its identity by using the services of PrivacyP. Only after filing its Complaint, did Complainant discover that Registrant was named Kim Bum LLC and based in Seoul, the Republic of Korea.
Kim Bum LLC has been Respondent in several other UDRP proceedings. In each of those proceedings, the panel ordered the transfer or cancellation of the domain name that Kim Bum LLC had registered. See e.g.,Compagnie Générale des Etablissements Michelin v. Kim Bum LLC / PrivacyP,WIPO Case No. D2012-2092 (ordering be cancelled); LEGO Juris A/S v. PrivacyP / Kim Bum LLC,WIPO Case No. D2012-2462 (ordering be transferred to complainant); LEGO Juris A/S v. PrivacyP / Kim Bum - Kim Bum LLC,WIPO Case No. D2012-2025 (ordering be transferred to complainant). 5. Parties’ Contentions A. Complainant
Complainant contends that it owns the MICHELIN trademark, which is used around the world in connection with the automobile and tire manufacturing industries, hotel and restaurant guides, and maps. This trademark, Complainant contends, is protected in many of the 170 countries in which it does business, including the Republic of Korea and Australia. The mark is also used in Complainant’s various domain names, including and . The later domain name leads to Complainant’s Korean language website.
Respondent has allegedly used the disputed domain name, , for a website “displaying sponsored links in the field of tires.”
Once it became aware of the disputed domain name, Complainant said it elected not to attempt to contact the Registrant. It claims to have been aware that Registrant was shielding its identity via the Privacyp service and was inclined not to respond to correspondence. Complainant maintains that it had no choice but to expend its time and money on this proceeding: “As no amicable settlement could be found, Complainant has no other choice but to initiate an UDRP procedure against Respondent in order to obtain the cancellation of the disputed domain name.”
In its pleading, Complainant argues that the disputed domain name is confusingly similar to the MICHELIN trademark. Citing several UDRP decisions, and common sense, Complainant argues that the mere addition of the generic word “rebate” to its famous mark does not lessen any confusion.
Neither Respondent has a right or legitimate interest in the disputed domain name, contends Complainant: They are not affiliated with Complainant; they have not been authorized to use the MICHELIN trademark; they are not making a bona fide offering of goods in connection with the trademark; and they are not commonly known as “Michelin.” Complainant also suggests that Registrant’s use of a “privacy shield service to hide his identity” is additional proof that Registrant lacks a right or legitimate interest in the disputed domain name.
As for the third and final argument, Complainant contends that the disputed domain name was registered and is being used in bad faith. Registrant certainly was aware that MICHELIN was a world-famous mark prior to the registration of the disputed domain name . Bad faith is further shown by the use of the disputed domain name “to divert Internet users and to direct them to a webpage providing click through revenues” to Registrant.
Based on these arguments, Complainant prays that the disputed domain name be cancelled. B. Respondent
Neither Respondent replied to Complainant’s contentions. 6. Discussion and Findings
This case features a familiar fact pattern: a world-famous mark has been incorporated wholesale into a domain name that leads Internet users to a website that advertises products made by competitors to the trademark owner; the registrant hides its identity behind a privacy service; and the trademark owner is forced to incur time and expense on a UDRP proceeding. A. Identical or Confusingly Similar
To obtain the cancellation of a disputed domain name, a complainant must prove three elements. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Policy, paragraph 4(a)(i).
Even if Respondents had bothered to file a response, it is very unlikely they could have prevailed on the first element. Complainant clearly has rights in the MICHELIN trademark: Complainant uses the mark on goods that are sold in 170 countries and has numerous trademark registrations, including ones in the countries where Respondents are based.
It is also clear that the disputed domain name is confusingly similar to the MICHELIN mark. Manufacturers often offer rebates; consumers would likely assume that the disputed domain name leads to a website where they could obtain rebates from Complainant for MICHELIN-brand tires, maps, restaurant guides and the strangely attractive “Michelin Man” dolls (a/k/a “Bibendum”).
A domain name that is created by the combination of a famous mark with a generic or descriptive term will often be considered confusingly similar to the mark it self. See LEGO Juris A/S v. PrivacyP / Kim Bum LLC,WIPO Case No. D2012-2462 (“the addition of descriptive terms to a trademark is generally not a distinguishing feature….”). That is the case here.
Complainant has established the first element. B. Rights or Legitimate Interests
The second element a complainant must prove to prevail is that the registrant has “no rights or legitimate interests in respect of the domain name.” Policy, paragraph 4(a)(ii). This may be difficult to prove if the registrant is using the trademark “in connection with a bona fide offering of goods or services,” or is “commonly known by the domain name,” or is “making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.” See Policy, paragraph 4(c).
In this case, Registrant has made Complainant’s task quite easy. First, Registrant has not offered any proof or arguments to counter Complainant’s evidence or interpretation of the evidence. Second, Registrant’s use of the widely known MICHELIN mark is obviously intended to misleadingly divert consumers. The disputed domain name leads to a website that advertises the goods of Complainant’s competitors. Neither of Respondents has a right or legitimate interest in luring consumers to a website under false pretenses and then profiting from their presence at the website. See LEGO Juris A/S v. PrivacyP / Kim Bum LLC, supra (“The Panel believes that the only reason why Respondent registered and used the disputed domain name was to redirect Internet traffic intended for the Complainant away from it to the Respondent’s website with the intention to create income for the Respondent.”).
Complainant has established the second element. C. Registered and Used in Bad Faith
Last but not least, a complainant must show that the “domain name has been registered and is being used in bad faith.” Policy, paragraph 4(a)(iii). One way to do this is to show the registrant has “intentionally attempted to attract, for commercial gain, Internet users to [the] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on [the] web site or location.” Policy, paragraph 4(b)(iv).
Given the great similarity between Complainant’s widely known MICHELIN mark and the disputed domain name, Internet users would likely be confused into believing that Complainant is affiliated with the website. The evidence in the record leads the Panel to believe that Registrant intends to profit from this confusion: It presumably earns income when Internet users click on the links in search of tires and/or rebates. See LEGO Juris A/S v. PrivacyP / Kim Bum LLC, supra (“The Panel believes that the Respondent may benefit directly or indirectly from such confusion, for instance, by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal….”).
Complainant has established the third element. 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 name, , be cancelled.
Steven L. Snyder
Sole Panelist
Date: March 31, 2013
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