The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Alex Moore of East Acton, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2014. On January 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2014, the Registrar 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 January 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2014.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on February 28, 2014. 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 the registered owner of Community trademark MICHELIN, No. 004836359 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. The Complainant operates the domain names , registered on December 1, 1993; and registered on April 22, 1997.
The disputed domain name was registered on June 26, 2012. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has marketing operations in more than 170 countries and employs around 115,000 people worldwide. The Complainant’s trademark MICHELIN is said to be known worldwide. The Complainant has 47 plants and approximately 63,000 employees in Europe.
The Complainant asserts that the mark MICHELIN is widely known around the world, in connection with the automobile and tire manufacturing industries, and also in connection with hotel/restaurant guides and maps.
Since 1900 the Complainant has caused the Michelin restaurant guide to be published and since 1926 it has awarded ranking stars to fine dining restaurants. Readers of its fine dining guide also communicate extensively with the Complainant concerning their restaurant experiences.
The Complainant owns various websites by which it interacts with Internet users about its products and services, inter alia “www.”.
Upon becoming aware that the disputed domain name was registered by the Respondent the Complainant sent cease and desist notifications, but received no response. However, the Complainant asserts that the Respondent subsequently cancelled the website to which the disputed domain name resolved. This website directed to a page pretending to offer “Michelin Star Recipes” through displayed social network links. According to the Complainant, the Respondent’s Twitter and Facebook accounts that were used to pretend that the Respondent was concerned with one of the Complainant’s famous activities were also cancelled after the sending of the Complainant’s notifications.
The Complainant asserts that as of January 14, 2014, the website to which the disputed domain name resolved was activate and directed to a parking page displaying sponsored links.
The Complainant submits that the disputed domain name is confusingly similar to its trademark MICHELIN, which previous UDRP panels have held to be well-known, and which is reproduced in its entirety. The mark MICHELIN is said to be very distinctive as it has no primary meaning in the English language. The two generic terms incorporated in the disputed domain name also refer to activities with which the Complainant is associated, in particular Michelin-starred restaurants. Consumers worldwide are aware of the Complainant’s activities in this regard, the Complainant asserts. This further enhances the likelihood of confusion, according to the Complainant. Moreover, the simple addition of generic terms to a trademark in a disputed domain name has often been held by UDRP panels to be insufficient to escape a conclusion of confusing similarity. The suffix “.com” is of no consequence in the present context.
Further, the Complainant asserts that the Facebook and Twitter pages named “MichelinStarRecipes” and “MichelinRecipes” were removed subsequent to its filing of an abuse report based on its trademark rights, considering that there was a serious risk of confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant nor has he been authorized to use its trademark, or to register any domain name incorporating the mark. The Respondent has no prior rights in the disputed domain name, as the MICHELIN trademarks were registered long before the registration of the disputed domain name. The Complainant also asserts that the Respondent is neither commonly known by the name “Michelin”, nor in any way affiliated with the Complainant. The Complainant submits that previous Panels have held that in the absence of any license or permission to use a well-known trademark bona fide or legitimate use of the domain names could not reasonably be asserted.
According to the Complainant, the Respondent has not used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. At the relevant time, the disputed domain name resolved to a parking page displaying commercial links, some of which were related to restaurant and automotive products and/or services, including recipes, and tires supplied by the Complainant and by its competitors. Directing Internet users to a parking page that generates pay-per-click revenues is said by the Complainant not to amount to a legitimate non-commercial or fair use of a disputed domain name.
Finally on this point, the Complainant cites Panel decisions that stand for the proposition that where a Respondent does not answer a Complainant’s letters and reminders, the fact that the Respondents thus do not avail themselves of their rights means that it can be assumed that they in fact have no such rights or legitimate interests.
Further, the Complainant submits that in light of the worldwide reputation of the Complainant’s MICHELIN trademark, and the inclusion of the terms “stars” and “recipes” that are plainly associated with the Complainant’s activities, the Respondent was clearly aware of the existence of the Complainant’s trademark at the time of registration of the disputed domain name. The Complainant asserts that by virtue of section 2 of the Policy a person registering a domain name warrants that to its knowledge the registration will not offend against the rights of any third party. This means that there is a duty upon a registrant to ensure no incursion into the rights of another party, which can be simply effected by a trademark search. A simple Google search would have also revealed the Complainant’s rights in the trademark MICHELIN.
Further, the Complainant asserts that the Respondent is obviously aware of the Complainant, since he incorporated the term “star” and the term “recipes” in the disputed domain name, both of which have clear associations with the Complainant’s activities. The deactivation of the website to which the disputed domain name resolved, and the Twitter and Facebook pages referred to above, after the Complainant sent its cease and desist notification to the Respondent, are also indicative of bad faith, according to the Complainant.
The Complainant also asserts that previous UDRP panels have held that the use of domain names to direct Internet users to a webpage for commercial gain in the shape of click-through revenues evidences bad faith. In the present case the Respondent incorporated links related to restaurant and automotive products and/or services, including recipes as well as tires of the Complainant and its competitors. According to the Complainant, numerous UDRP panels have previously accepted that such behavior constitutes additional proof of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s MICHELIN trademark. However, it incorporates that trademark in its entirety as its first and most prominent part. The term MICHELIN has no primary meaning and is highly distinctive. The trademark MICHELIN is well-known in many jurisdictions in relation to tires but also restaurants, good food and the star-rating system. Therefore the inclusion of the term “star” further reinforces the suggestion of a legitimate connection with the Complainant, as does the term “recipes”, as it evokes cooking and restaurants. The addition of these two generic terms therefore does nothing to disassociate the disputed domain name from the Complainant; on the contrary, it further reinforces the confusing suggestion of a legitimate connection between the disputed domain name and the Complainant. In any case it is well established that the additional incorporation of recognizable generic terms is not apt to dispel a conclusion of confusing similarity. The combining of the Complainant’s trademark with the two ordinary words concerned does not evoke or signify some new or different concept.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent has, according to the Complainant, not been authorized to use its trademark MICHELIN in any way. Nor is the Respondent known by the name “Michelin”, or any combination including that word. There is no evidence before the Panel that the Respondent carries on a legitimate business that would warrant the registration of the disputed domain name in his own right.
The use of a domain name incorporating another party’s well-known trademark for the purpose of generating commercial revenues in the form of click-through license fees does not give rise to, nor vest rights or legitimate interests in the person who has registered the domain name concerned. The Respondent in this case has also caused links to be displayed to websites where goods or services emanating from competitors of the Complainant are on offer. This is a practice that can result in the diverting of legitimate traffic away from the Complainant’s own goods or services or controlled web presence to competing and unrelated businesses. It is not apt to give rise to any rights in the Respondent, nor interests that can be described as legitimate.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Previous UDRP panels have held that the Complainant’s trademark MICHELIN is a well-known mark. The Complainant has put ample evidence before the Panel to that effect. The Complainant’s star-ranking system for restaurants has been prominent for many years and in many jurisdictions including the United Kingdom. The trademark MICHELIN is also inherently distinctive and has no primary meaning. Given the fact that the disputed domain name also contains two generic terms that refer to the actual activities of the Complainant (cooking and restaurants, and the star-ranking system) it is inconceivable that the Respondent was unaware of the Complainant’s trademark and its activities on the date of registration of the disputed domain name.
Further, according to the Complainant’s submissions, the Respondent has made use of the disputed domain name to generate click-through license fees by relying on the false suggestion of a legitimate connection between it and the Complainant. This amounts to use in bad faith, as it intentionally diverts Internet traffic on the basis of a misleading and false suggestion of association with the Complainant. Finally, the Respondent failed to reply to the Complainant’s initial notification of its rights and subsequent reminders. Such silence is not consistent with a good faith practice by the Respondent.
The Panel therefore holds that the disputed domain name was registered and 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 name be cancelled.
WiIliam A. Van Caenegem
Sole Panelist
Date: March 13, 2014
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