The Complainant is Compagnie Générale des Etablissements Michelin (“Michelin”) of Clermont-Ferrand, France, represented by Dreyfus & associés of Paris, France.
The Respondent is Varun Panjwani of Hong Kong, SAR of China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2013. On February 7, 2013, the Center transmitted a request for registrar verification in connection with the Domain Name by email to the Registrar. On February 7, 2013, the Registrar transmitted its verification response confirming that the Respondent is listed as the registrant and providing the contact details by email to the Center.
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 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for filing a response was March 3, 2013. The Respondent did not submit any response by the deadline. Accordingly, the Center notified the Parties of the Respondent’s default on March 4, 2013. On March 4, 2013, in response to the Center’s notification of default, the Respondent made an unsolicited late email submission. On March 5, 2013, in response to the Respondent’s unsolicited late email submission, the Center sent a notice to consider suspending the UDRP proceeding to the Parties if they wished to explore a possible settlement. The Complainant responded on March 5, 2013 that it was not willing to suspend the proceeding or negotiate with the Respondent. The Center then sent a notice to the Parties advising them that a panelist would be appointed in the proceeding.
The Center appointed Marylee Jenkins as the sole panelist in this matter on April 2, 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
Based on the review of the uncontested evidence submitted with the Complaint, the Complainant is the owner of the following trademark registrations: MICHELIN, Chinese Trademark No. 6167649, registered on January 7, 2010 and covering goods in international class 12; MICHELIN, Chinese Trademark No. 5149519, registered on May 28, 2009 and covering goods in international class 16; MICHELIN, Community Trademark No. 004836359, filed on January 4, 2006 and covering goods and services in international classes 1, 3, 5, 6, 7, 8, 9, 11,12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34 and 39. The Complainant is also the owner of and is operating a website promoting its goods and services at the domain name which it registered on December 1, 1993.
The Domain Name was registered on April 18, 2012 to the Respondent and is set to expire on April 18, 2014. There is currently no accessible website at the Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant bases its Complaint on its ownership of the mark MICHELIN for which it has trademark registrations around the world for use of the mark in connection with automobile and tire manufacturing industries and hotel/restaurant guides and map publications. The Complaint specifically relies on trademark registrations in China (Registration Nos. 6167649 and 5149519), Hong Kong (Registration Nos. B1584 and B03154) and the European Union (Community Trademark Registration No. 004836359). The Complainant also asserts ownership of domain names consisting of its trademark MICHELIN including registered on December 1, 1993; registered on June 16, 2001; and, registered on December 22, 2003.
The Complainant contends that its MICHELIN trademark is well-known and cites previous UDRP decisions that found its trademark to be “well-known” or “famous” (Compagnie Générale des Etablissements Michelin v. Milan Kovac / Privacy--P,WIPO Case No. D2012-0634; Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev,WIPO Case No. D2012-0384; and Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / A Domain Privacy,WIPO Case No. D2012-0045).
The Complainant contends that the Domain Name is confusingly similar to its mark because the Domain Name fully incorporates its mark. The Complainant cites previous UDRP decisions to argue that the addition of words such as “me” to a mark in a domain name heighten the likelihood of confusion between the domain name and the mark.
The Complainant contends that the Respondent has no prior rights or legitimate interests in the Domain Name. In support of this contention, the Complainant notes that its registration of the mark MICHELIN preceded the registration of the Domain Name by four years. The Complainant also states that the Respondent is not known by the name “Michelin” or is the Respondent in any way affiliated with the Complainant or authorized or licensed to use the Complainant’s trademark MICHELIN or to seek registration of any domain name incorporating the Complainant’s trademark MICHELIN.
The Complainant contends that the Respondent did not demonstrate use of or make demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services. In support of this contention, the Complainant states that the Domain Name originally resolved to a parked page displaying links related to tires including links to the Complainant’s competitors’ tires. The Complainant states that the web site then became inactive when the Respondent removed the parked page after receiving a cease and desist letter from the Complainant.
The Complainant also contends that the Respondent’s offer to sell the Domain Name to the Complainant is evidence that the Respondent did not have a legitimate interest or right in the Domain Name.
The Complainant contends that the Respondent registered or used the Domain Name in bad faith. The Complainant contends that its MICHELIN mark is well-known throughout the world and that its MICHELIN mark enjoys a high level of fame and as such, the Respondent was aware of the existence of the Complainant and the Complainant’s mark at the time he registered the Domain Name and that such knowledge proves bad faith registration.
The Complainant also contends that the Respondent is using the Domain Name in bad faith. The Complainant points to the lack of the Respondent’s legitimate noncommercial or fair use of the Domain Name as supporting a finding of the Respondent’s use of the Domain Name in bad faith. The Complainant contends that the Respondent’s claim in correspondence with the Complainant that “he was engaged in creating a publication based on Michelin restaurants while the reproduction and publication of information from the famous Michelin Guide could constitute copyright infringement” shows that the Respondent aimed “to benefit from the reputation of the Complainant and its trademark to take an unfair commercial benefit.”
In addition, the Complainant supports its contention that the Respondent is using the Domain Name in bad faith by stating that prior to the removal of the parked page associated with the Domain Name, the Domain Name directed users to a webpage displaying pay-per-click links. The Complainant also contends that the passive holding of the Domain Name by the Respondent constitutes bad faith use of the Domain Name in satisfaction of paragraph 4(a)(iii) of the Policy. The Complainant further contends that the Respondent’s offer to sell the Domain Name to the Complainant and the Respondent’s later threat to sell the Domain Name to a Chinese firm are indications of the Respondent’s bad faith use. The Complainant accordingly contends that the Respondent has registered and is using the Domain Name in bad faith. B. Respondent
The Respondent did not timely file a reply with respect to this proceeding. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under the Rules, paragraph 14(b), the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. Nevertheless, the Panel can only rule in the Complainant’s favor only after the Complainant has proven that the above-listed elements are present. A. Unsolicited Late Submission
With respect to the unsolicited late email submission of the Respondent, the Panel finds that the Center has fully discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent” of this proceeding and that the Respondent is in default for failing to file a response to the Complaint within the deadline required by this proceeding. The Panel will not accept or consider the late submission of the Respondent in reaching its decision and submits that the Parties will not be prejudiced by this decision. B. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the mark MICHELIN.1
A review of the second-level domain of the Domain Name shows that it consists of the Complainant’s mark MICHELIN in combination with the pronoun “me”. The Panel does not find that the addition of the pronoun at the end of the Complainant’s mark MICHELIN somehow prevents the Domain Name from being considered confusingly similar to the Complainant’s mark. Rather, the idea suggested by this Domain Name in view of the Complainant’s registered marks and long-time use thereof is that any possible goods or services offered on a web site at the Domain Name are or would be authorized by the Complainant. The Panel accordingly concludes that paragraph 4(a)(i) has been satisfied based upon the Domain Name being confusingly similar to the Complainant’s mark. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on its evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the Domain Name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
No evidence has been presented that the Complainant’s mark was ever assigned, granted, licensed, sold, or transferred to the Respondent or that the Respondent was ever in any way authorized to register or use the mark in any manner or form. Nor has any evidence been presented that might give rise to a right to or legitimate interest in the Domain Name. Rather based upon the uncontested evidence submitted, the Complainant clearly had well established rights to the MICHELIN mark, including registered trademarks throughout the world, at the time of the Respondent’s registration of the Domain Name and that the Respondent nevertheless registered the Domain Name. From the submitted evidence, it is further revealed that the Respondent had knowledge of the Complainant’s MICHELIN mark and that he intended to trade on the reputation and fame thereof by using the Domain Name “for michelin star rated restaurant basis.” The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the website or location or of a product or service on the holder’s website or location.
Based upon the evidence submitted, the Panel finds that the Respondent had knowledge of the Complainant’s mark MICHELIN when he registered the Domain Name. This finding is predicated on the statements made by the Respondent in his correspondence with the Complainant. Moreover, despite receiving repeated demands from the Complainant to discontinue use of its mark in the Domain Name, the Respondent nevertheless continued using the Domain Name with knowledge of the Complainant’s mark and rights therein. When considered with the Complainant’s mark being well-known and having a strong reputation, as shown by the uncontested evidence submitted by the Complainant, together with the above finding that the Respondent has no rights or legitimate interests in the Domain Name, the Panel finds that the Respondent registered the Domain Name in bad faith.
The Panel further concludes that the Respondent’s registration and use of the Domain Name, confusingly similar to the Complainant’s mark, is an attempt by the Respondent to attract Internet users to his site for commercial gain. The Respondent had knowledge of the Complainant’s mark and admitted that he intended to trade on the reputation of the Complainant’s MICHELIN mark. The uncontested evidence shows that the Domain Name originally linked to a parked page with advertisement links and banners to third party sites, which included links to the Complainant’s competitors’ websites. In addition, the Respondent offered to sell the Domain Name to the Complainant and when the Complainant refused to purchase the Domain Name from the Respondent, the Respondent indicated that he would sell the Domain Name to another entity. When viewing this evidence in its entirety, such supports a finding that the Respondent registered and was using the Domain Name to create initial interest confusion among users who visited the Respondent’s site as to the source, sponsorship, affiliation or endorsement of his site. Although the Respondent has since deleted the website accessible at the Domain Name, such action does not now obviate a finding that the Respondent is continuing to use the Domain Name in bad faith.
The Panel therefore concludes that the Respondent has intentionally attempted to attract Internet users to his site by creating a likelihood of confusion with the Complainant’s mark MICHELIN as to the source, sponsorship, affiliation or endorsement of his site for commercial gain. Accordingly, the Panel concludes that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules and as requested by the Complainant, the Panel orders that the Domain Name be cancelled.
Marylee Jenkins
Sole Panelist
Date: April 9, 2013
1 However, the Complainant’s reliance on Hong Kong Registration Nos. B1584 and B03154 and the domain names and will not be considered in this decision since no copies of the corresponding trademark details or certificates were submitted with the Complaint, the corresponding WhoIs records for the domain names do not appear to list the Complainant as the owner, and no further explanation concerning this evidence was provided by the Complainant in the Complaint.
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