The Complainant is Compagnie Générale des Etablissements Michelin (Michelin) of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is devo inc, kimihiro echigo of Tokyo, Japan / Whois Privacy Protection Service by of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2014. On June 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2014, 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 July 2, 2014 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 July 3, 2014.
On July 2, 2014, the Center transmitted an email in both Japanese and English regarding the language of the proceeding. On July 3, 2014, the Complainant confirmed with the Center its request that English be the language of the proceeding. The Respondent did not submit any comments within the specified due date.
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 in Japanese and English, and the proceedings commenced on July 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2014. On July 11, 2014, the Center received an email communication from the Respondent, indicating that it is not interested in the disputed domain name. On July 11, 2014, the Center transmitted an email to the parties regarding a possible settlement. The Complainant did not request a suspension of the proceedings. The Center therefore proceeded with this administrative proceeding. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent of the proceeding of panel appointment on July 30, 2014.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on August 6, 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 has marketing operations in more than 170 countries and counted more than 100,000 employees on December 31, 2013. Michelin is present all around the world including in the Asian region where it has 14 plants and counts around 15, 400 employees. For more than a century, Michelin Guides have helped travellers enjoy better mobility by offering qualified restaurant and hotel recommendations throughout Europe. Japan Michelin Tire Co., Ltd. issued the “Michelin Guide Hokkaido 2012 Special Edition” which consisted of a wide selection of hotels and restaurants and became popular since then.
The Complainant owns the trademark MICHELIN, which is largely protected in the world, in connection with the automobile and tire manufacturing industries, as well as in connection with hotel restaurant guides and maps publications. The Complainant, inter alia, owns trademark registration for the mark MICHELIN in Japan where the Respondent resides as follows (see Complainant’s Annex 11):
Trademark: MICHELIN
Registration number: 970990
Fling date: October 28, 1965
Registration date: July 10, 1972
Class of goods: 12
The disputed domain name was registered on October 20, 2013. 5. Parties’ Contentions A. Complainant
(i) the disputed domain name is confusingly similar to the Complainant’s registered trademark MICHELIN in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) the disputed domain name was registered and is being used in bad faith by the Respondent; and
(iv) the disputed domain name should be cancelled. B. Respondent
The Respondent did not reply to the Complainant’s contentions. It simply indicated in an email communication that it is not interested in the disputed domain name. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent 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.
In view of the Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint). A. Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is in Japanese, and that the language of the proceedings should therefore normally be in Japanese. The Complainant requested that the proceedings be conducted in English and the Respondent did not submit any objection to the Complainant’s request. Pursuant to paragraph 11(a) of the Rules, the Panel determines that the language requirement has been satisfied through the Japanese language Commencement Notification, and, absent a Response from the Respondent, determines that the language of the proceedings is English. B. Identical or Confusingly Similar
The Complainant contends that the Complainant and its MICHELIN trademarks enjoy a worldwide reputation. Complainant owns numerous MICHELIN trademark registrations around the world. The Complainant is in particular the owner of the following trademark registration in Japan:
MICHELIN, Japanese trademark n° 970990 filed on October 28, 1965, registered on July 10, 1972 and duly renewed and covering goods in class 12.
The Panel agrees that the Complainant’s registrations of the MICHELIN mark in Japan and in other countries sufficiently establish its rights in the mark pursuant to Policy, paragraph 4(a)(i).
The Complaint contends that the disputed domain name reproduces entirely Complainant’s trademark MICHELIN with the association of the generic terms “guide” and “in” as well as the geographical term “hokkaido”, intersected by hyphens. It further contends that the disputed domain name is confusingly similar to Michelin Guide services and products which are offered by the Complainant. The Complainant avers that the disputed domain name is an undisputable reproduction of Complainant’s famous “Michelin Guide Hokkaido.”
The Panel holds that the disputed domain name is confusingly similar to the Complainant’s mark MICHELIN especially in that it incorporates the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.” See also Compagnie Générale des Etablissements Michelin v. A Domain Privacy / Transure Enterprise Ltd., Host Maste, WIPO Case No. D2013-0357.
The Panel notes that the Respondent adds the geographical identifier “Hokkaido” as well as the generic terms “guide” and “in” to the Complainant’s MICHELIN mark in the disputed domain name. The Panel also notes that the Complainant’s subsidiary company Japan Michelin Tire Co., Ltd. issued the “Michelin Guide Hokkaido 2012 Special Edition” which consisted of a wide selection of hotels and restaurants and became popular since then. The Panel holds that the Respondent’s addition of a geographical identifier, addition of generic terms or addition of the hyphen does not distinguish the disputed domain name from the Complainant’s mark under Policy, paragraph 4(a)(i). This is especially because the disputed domain name is a reproduction of Complainant’s name of service “Michelin Guide Hokkaido”. See “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Koben Jorns, WIPO Case No. D2014-0813 (finding the Respondent’s addition of a geographical identifier or omission of the punctuation of the Complainant’s mark does not distinguish the disputed domain name from the Complainant’s mark under Policy, paragraph 4(a)(i)). See also Hoffmann-La Roche Inc. v. ML, Matt Leavsi/WhoisGuard,WIPO Case No. D2012-0587 finding “the Domain Name is confusingly similar to the Complainant’s trademark consisting of the Complainant’s ACCUTANE trademark and the generic words ‘buy’ and ‘cheap’”.
The Panel determines that the distinctive part of the disputed domain name is the MICHELIN trademark. As such, the Panel concludes that the addition of the non distinctive words “Hokkaido” as well as the generic terms “guide” and “in” does nothing to prevent the confusing similarity of the disputed domain name with the Complainant’s MICHELIN trademark.”
The Panel also finds that the “.info” is a descriptive suffix commonly used as a generic Top-Level Domain (“gTLD”), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant’s mark. Therefore, the addition of the gTLD suffix “.info” in the disputed domain name does not avoid confusing similarity. See Research in Motion Limited v. Input Inc. Domain Manager, WIPO Case No. D2011-2197 finding “the use of the added descriptive word does not change the overall impression of the domain name.” See also LEGO Juris A/S v. Dot InFo, ,WIPO Case No. D2012-0351, ACCOR Société Anonyme v. JT2M, WIPO Case No. D2006-1548).
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. C. Rights or Legitimate Interests
The Complainant must first make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii), and then the burden shifts to the Respondent to demonstrate it does have rights or legitimate interests. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It also contends that there is neither a use nor are any preparations to use the disputed domain name with a bona fide offering of goods or services. It submits that the Respondent is not commonly known by the disputed domain name. The Complainant asserts that the Respondent registered the disputed domain name with a privacy shield service to hide its identity and prevent the Complainant from contacting it, and thus such a behavior highlights the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has not made noncommercial fair use of the disputed domain name.
The Panel finds that the Respondent has no connection or affiliation with the MICHELIN mark in the disputed domain name or in any other manner. The Panel agrees that the disputed domain name resolves to an inactive page. As such, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that nor is such use a legitimate noncommercial or fair use.
Under the circumstance that the Respondent did not reply to the Complaint (apart to indicate that it is not interested in the disputed domain name) and that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel concludes that the second element of paragraph 4 of the Policy has been established. (See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701). D. Registered and Used in Bad Faith
The Complainant contends that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name on the ground that the Complainant is well-known throughout the world, including in Japan. It also contends that the disputed domain name is an irrefutable reference of Complainant’s “Michelin Guide Hokkaido”. The Complainant cites Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484, pertaining to the domain name where its panel held that: “Given the fame of Complainant’s MICHELIN marks, the Panel concludes that Respondent had actual knowledge of Complainant’s trademarks” (Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No.D2010-0484).
The Panel infers that the Respondent was aware of the existence of Complainant’s trademark at the time of registration of the disputed domain name in light of the reputation of Complainant’s MICHELIN trademark, and the Respondent’s reproduction of the trademark in its entirety, combined with the generic and geographical terms matching the name of one guide published by the Complainant. Therefore, the Panel holds that the Respondent registered the disputed domain name in bad faith.
The Complainant contends that previous panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel notes that in Telstra Corporation Limited v. Nuclear Marshmallowscase above, the panel concluded that the respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by the respondent because: (1) the complainant’s trademark had a strong reputation and was widely known; (2) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) the respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) the respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement.
The Panel observes that (1) the Complainant’s trademark has a strong reputation and was widely known; (2) the Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name; (3) the Respondent has taken active steps to conceal its true identity, by registering the disputed domain name with a privacy shield service under a name that is not a registered business name; (4) the Respondent never replied to the Complainant’s cease-and-desist letter despite several reminders sent; and (5) the Respondent did not submit a Response to the Complaint. Therefore, the Panel holds that, similarly to the Telstra Corporation Limited v. Nuclear Marshmallowscase above, reproducing the famous trademark MICHELIN mark in the disputed domain name in order to attract Internet users to an inactive website may be considered as being a use in bad faith.
The Complainant further contends that it is likely that the Respondent registered the domain name to prevent the Complainant from using its trademark in the disputed domain name, and this type of conduct constitutes evidence of Respondent’s bad faith (L’oreal v. Chenxiansheng,WIPO Case No. D2009-0242). The Panel finds that this type of conduct further evidences Respondent’s bad faith behavior as well.
The Panel concludes that the third element of paragraph 4 of the Policy has been established. 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.
Ho-Hyun Nahm
Sole Panelist
Date: August 20, 2014
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