The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Nish Patel of Xiamen, China, and A Domain Privacy of Beaumaris, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with A, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2013. On June 21, 2013, the Center transmitted a request by email to the Registrar asking for registrar verification in connection with the Domain Name. On June 27, 2013, the Registrar transmitted its verification response to the Center by email, disclosing the registrant and the contact information for Domain Name which differed from the named Respondent and the contact information in the Complaint. The Center sent an email to the Complainant on August 7, 2013, providing it with the information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 8, 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 the Respondent of the Complaint, and the proceedings commenced on August 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2013.
The Center appointed Geert Glas as the sole panelist in this matter on September 12, 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
The Complainant is a global manufacturer of tires and other products under the brand name Michelin. The Complainant has marketing operations in more than 170 countries and employs over 115,000 employees.
The Complainant is the owner of the trademark MICHELIN used in connection with the automobile and tire manufacturing industries, hotel/restaurant guides and map publications throughout the world, including in Australia, where A Domain Privacy is located, and in China, where Nish Patel resides.
In 2001, the Complainant created the trade name VIAMICHELIN through which it offers a wide range of services to both the general public and the business sector, including mapping and route plans.
The Domain Name was registered on December 8, 2012. According to the evidence submitted by the Complainant, the Domain Name leads to a pay-per-click parking site featuring sponsored links to cartographic products and/or services of both the Complainant and its competitors. 5. Parties’ Contentions A. Complainant
The Complainant requests the cancellation of the Domain Name on the following grounds:
(i) The Domain Name is identical or confusingly similar to a trade or service mark in which the Complainant has rights.
The Complainant contends that the Domain Name is confusingly similar to its well-known trademark MICHELIN because it incorporates this trademark in its entirety.
The addition of the generic and descriptive terms “route” and “planner” does not prevent a risk of confusion. Indeed, as these terms refer to one of the activities of the Complainant, it is highly likely that the Domain Name could mislead Internet users into thinking that it is associated with the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that it has never licensed or authorized the Respondent to use its MICHELIN trademark and that the Respondent is not in any way affiliated with the Complainant.
The Respondent is neither known by the Domain Name, nor has the Complainant found any evidence that would suggest that the Respondent has been using the trademark MICHELIN in a way that would give it legitimate rights in the Domain Name.
Moreover, the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. The Domain Name resolves to a pay-per-click parking website displaying commercial links, most of which are related to cartographic products and/or services of the Complainant and its competitors.
(iii) The Domain Name was registered and is being used in bad faith.
The Complainant contends that:
- the Respondent is using the Domain Name to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website;
-it is highly unlikely that the Respondent was not aware of the Complainant’s rights in this well-known trademark at the time of registration; and
- the fact that the Respondent registered the Domain Name through a privacy service to hide its identity and contact addresses may in itself constitute bad faith. B. Respondent
The Respondent has not replied to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant proves each and all of the following three elements in order to prevail in these proceedings:
(i) The Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name.
(iii) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of numerous registered trademarks for the name Michelin throughout the world. The fact that the MICHELIN trademark is well known has been confirmed in several previous UDRP panel decisions (see, e.g., Compagnie Générale des Etablissements Michelin (Michelin) v. Vyacheslav Nechaev,WIPO Case No. D2012-0384; Compagnie Générale des Etablissements Michelin v Milan Kovac / Privacy--P,WIPO Case No. D2012-0634).
The Domain Name incorporates the Complainant’s trademark in its entirety and differs from the Complainant’s trademark only in that the terms “route” and “planner” have been added. Several UDRP panels have held that wholly incorporating a complainant’s registered trademark in a domain name may be sufficient to establish confusing similarity for the purposes of the Policy, particularly where the trademark is highly recognizable and famous (see, e.g., AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). In addition, it is well-established by previous UDRP decisions that adding a generic or descriptive term to a registered trademark does not prevent the domain name from being confusingly similar to that registered trademark (see, e.g., Microsoft Corporation v. J. Holiday Co,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253; and Lilly ICOS LLC v. John Hopking/Neo net Ltd.,WIPO Case No. D2005-0694).
In the case at hand, the Panel finds that adding the generic words “route” and “planner” to the MICHELIN trademark does not lessen the confusing similarity between the Domain Name and the MICHELIN trademark (see, e.g., Lego Juris A/S v. Thomas Plaut ,WIPO Case No. D2012-1822; and LEGO Juris A/S v. SAKCHAI SRION,WIPO Case No. D2012-0604). Because the Complainant also offers route planners, the addition of the words “route” and “planner” is even more likely to heighten this confusion and to cause consumers to believe that the Domain Name is effectively affiliated with, linked to or connected to the Complainant.
Accordingly, the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., Document Technologies Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Indeed, based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent has been commonly known by the Domain Name or has been authorized to use the MICHELIN trademark.
Moreover, previous UDRP panel decisions have confirmed that using a domain name to generate traffic to a pay-per-click parking website, thereby diluting or tarnishing the reputation of a complainant’s trademark, cannot be considered a bona fide offering of goods and services, or a noncommercial or fair use of the domain name (see, e.g., Florida Department of Management Services v. Anthony Gorss,WIPO Case No. D2009-1194; Telekom AG v. Dong Wong,WIPO Case No. D2005-0819; and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
The Respondent has failed to respond to the Complaint and has therefore failed to provide any evidence of its rights or legitimate interests in the Domain Name.
Based on the evidence provided by the Complainant, the Panel finds that the second element under paragraph 4(a)(ii) of the Policy has been established. C. Registered and Used in Bad Faith (i) Registered in bad faith
Given that the MICHELIN trademark is well known and widely used, the Panel is of the view that it is highly unlikely that the Respondent did not know of the Complainant’s trademark at the time the Domain Name was registered, especially because the addition of the word “routeplanner” also refers to one of the products offered by the Complainant.
Several UDRP panels have ruled that bad faith is established where a complainant’s trademark has been shown to be well known or in wide use at the time of registering a domain name (see e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Caesar World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; and Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435). (ii) Used in bad faith
As the Domain Name leads to a pay-per-click parking website that also offers links to products of the Complainant’s competitors, the Panel finds that the Respondent’s attempt thereby is to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
The Panel concurs with the understanding of several other UDRP panels that the use of a domain name incorporating a complainant’s trademark to direct traffic to a website that offers sponsored links to other websites can be evidence of bad faith (see Volvo Trademark Holding AB v. Unais, Inc.,WIPO Case No. D2005-0556). It does not matter whether the respondent is the beneficiary of these commercial gains or whether the commercial gains accrue elsewhere. It is sufficient that a third party stands to reap the profits of the Respondent’s wrongful conduct (see Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912).
Accordingly, the Panel finds that the Complainant has established the third element under 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 Domain Name be cancelled.
Geert Glas
Sole Panelist
Date: September 26, 2013
Full & Egal Universal Law Academy