The Complainant is Compagnie Générale des Etablissements Michelin (Michelin) of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 0130343810 of Toronto, Ontario, Canada / Richard Canneman, C of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2013. On April 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 26, 2013.
On April 27, 2013, the Respondent sent an email communication in which he stated “Can I help you with something?”
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 the Respondent of the Complaint with the amended Complaint, and the proceedings commenced on May 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2013. The Respondent did not file a formal Response. On May 27, 2013, the Center informed the Parties of the commencement of the Panel Appointment process.
The Center appointed Alejandro Garcia as the sole panelist in this matter on June 10, 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 A. The Complainant
The Complainant is a company established in France at the end of the XIX century and is one of the leading tyre manufactures in the world. In addition, the Complainant publishes road maps and hotel and restaurant guides. The Complainant has marketing operations in more than 170 countries and as at December 31, 2012 it employs 113,400 individuals. B. The Complainant’s Trademarks
The Complainant has registered the trademark MICHELIN in many countries around the world. In particular, the Complainant holds the following MICHELIN trademark registrations:
- Canadian Trademark N° TMA214191 dated of February 1974 and subsequent renewals.
- Community Trademark N° 004836359, dated of January 4, 2006 and covering goods and services in classes 1, 3, 5, 6, 7, 8, 9, 11,12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34 and 39. C. The Complainant’s Domain Names
The Complainant has registered a number of domain names containing the term “Michelin”, for example, , and . The registration of these domain names predates the registration of the disputed domain name. D. The Respondent
The Respondent did not file a formal response. The disputed domain name was created on February 15, 2012. At the time of this decision, the disputed domain name did not resolve to a webpage. 5. Parties’ Contentions A. The Complainant Identical or Confusingly Similar
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN. The Complainant indicates that previous UDRP panels have considered the trademark MICHELIN to be “well-known” or “famous” and refers to a number of decisions in this regard (e.g., 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; Compagnie Générale des Etablissements Michelin v. Transure Entreprise Ltd, Host Master / A Domain Privacy, WIPO Case No. D2012-0045).
The Complainant avers that the disputed domain name reproduces the Complainant’s trademark in its entirety. The Complainant adds that many decisions of UDRP panels have considered that the incorporation of a trademark in its entirety may suffice to establish that a domain name is identical or confusingly similar to a complainant’s trademark.
As for the term “my” in the disputed domain name, the Complainant argues that it is merely a generic and descriptive term that does not “influence the similarity between a trademark and a domain name”. The Complainant adds that the presence of the term “my” in the disputed domain name will increase the risk of confusion for consumers. In respect of the hyphen in the disputed domain name, the Complainant argues that it is a non-distinctive element. No Rights or Legitimate Interests
The Complainant argues that the Respondent is not affiliated with the Complainant in any way nor has he been authorised by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating the trademark MICHELIN. The Complainant adds that the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the MICHELIN trademark preceded the registration of the disputed domain name in many years.
The Complainant points out that the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services and adds that the disputed domain name does not resolve to an active website. Registered and Used in Bad Faith
As for the requirement of bad faith registration and use, the Complainant argues that given that the Complainant’s trademark is well-known including in Canada and Japan it is impossible that the Respondent did not have the trademark MICHELIN in mind at the time of his registration of the disputed domain name.
The Complainant also alleges that bad faith can be found where a respondent “knew or should have known” of a complainant’s trademark rights and, nevertheless, registered a domain name in which he had no rights or legitimate interests. The Complainant argues that this is the case here.
The Complainant further indicates that the Respondent did not answer to the Complainant’s pre-action letter and it registered the disputed domain name with a privacy shield service in order to hide his identity and prevent the Complainant from contacting him.
Relief Requested
The Complainant seeks the cancellation of the disputed domain name . B. The Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings A. Applicable Test
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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. B. Identical or Confusingly Similar
The Complainant has established to the Panel’s satisfaction that it has rights in respect of the trademark MICHELIN.
The dominant part of the disputed domain name is the term “Michelin”. This term is identical to the MICHELIN trademark registered by the Complainant in different countries. The addition of the terms “my” and a hyphen is insufficient to prevent the existence of confusion with the Complainant’s trademark. In this respect, paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) indicates:
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion […]”
In the circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN within the meaning of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three non-exclusive examples under which a respondent can demonstrate that it has rights or legitimate interests in a domain name:
“(i) Before any notice […] of the dispute, [the respondent’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 respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, 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 domain name, without intent for commercial gain[,] to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In this case, particularly in light of the passive holding of the disputed domain name, the Panel concludes that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests and that none of the circumstances set out in paragraph 4(c) of the Policy apply. The Respondent has not rebutted the Complainant’s contentions. Accordingly, the Complainant meets the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
In light of the circumstances of this case and the evidence furnished by the Complainant, which is summarised above, the Panel finds the doctrine established in the previous decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 to be applicable in this case. In the Panel’s view, the fact that the Respondent did not participate in these proceedings – the Respondent’s email mentioned in the Procedural History Section of this decision is immaterial in this regard – also points to the conclusion that the disputed domain name was registered and is used in bad faith.
As a result, the Panel concludes that the Complaint meets the requirements of 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, the Panel orders that the disputed domain name be cancelled.
Alejandro Garcia
Sole Panelist
Date: June 24, 2013
Full & Egal Universal Law Academy