The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Michel Wijkstra of Anna Paulowna, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Cronon AG Berlin, Niederlassung Regensburg (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2015. On April 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2015, 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”), 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 May 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on May 22, 2015.
The Center appointed Steven M. Auvil as the sole panelist in this matter on June 3, 2015. 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 owner of the trademark MICHELIN, registered across the world in connection with the automobile and tire manufacturing industries, as well as hotel/restaurant guides and map publications. The Complainant is the owner of Community Trademark No. 004836359 for MICHELIN, 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, which issued on January 4, 2006. MICHELIN also has a definite and undisputable reputation in the automotive industry and in French gastronomy.
The Complainant’s company symbol is the Michelin Man, also referred to as Bibendum or Bib. The Michelin Man has become the Complainant’s worldwide symbol for presenting the Complainant’s products and assisting motorists. The company symbol was elected as the “Best logo of the century” by an international jury in 2000.
The Respondent registered the disputed domain name on August 30, 2013.
The Complainant became aware of the Respondent’s registration and made efforts to resolve the matter amicably. On December 10, 2013, the Complainant sent a cease-and-desist letter to the Respondent via registered letter and email requesting the Respondent to cancel the disputed domain name (along with another domain name , later cancelled voluntarily).
The Respondent replied to the Complainant’s cease-and-desist letter via registered letter and email and asserted he did not know he had no right to use the trademark MICHELIN in the domain names citing his habit for using the term “Michelin Doll” in online games. The Respondent agreed to stop use of the trademark MICHELIN under any form and agreed to cancel the disputed domain name.
The Respondent failed to cancel the disputed domain name despite his agreement to do so. The Complainant sent several reminders requesting cancellation of the domain names cited in the cease-and-desist letter. The Respondent did not respond to any of the reminders and the disputed domain name was renewed.
The disputed domain name is currently inactive. 5. Parties’ Contentions A. The Complainant
In its Complaint, the Complainant asserts that the disputed domain name is identical or confusingly similar to its MICHELIN trademark and, in fact, reproduces the trademark in its entirety. The Complainant contends that the suffix “doll” is a common word in the English language and the combination of the trademark MICHELIN with the word “doll” in the disputed domain name does not eliminate the risk of confusion with the Complainant’s trademark. Rather, the addition of the suffix “doll” most likely refers to the Michelin Man or Bibendum, which refers to the Complainant’s company symbol. The Complainant further contends that such confusion is likely to lead Internet users to be influenced by the similarity between the disputed domain name and the Complainant’s trademark and symbol.
The Complainant further contends that its MICHELIN trademark is the only distinctive element of the disputed domain name and that the mere addition of a generic or descriptive term to the Complainant’s otherwise distinctive or well-known trademark does not serve to distinguish the disputed domain name from the Complainant’s trademark.
The Complainant also asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent is not related in any way to the Complainant’s business, that the Respondent is not currently, and has never been, known by “Michelin Doll”, and that the Respondent was not authorized by the Complainant or granted a license by the Complainant to use the MICHELIN trademark. The Complainant contends that the Respondent has registered the disputed domain name to take advantage of the Complainant’s well-known trademark and to disrupt its business, and that the passive holding of the disputed domain name by the Respondent is not a bona fide offering of goods or services or a non-commercial or fair use.
Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because Respondent could not have ignored the Complainant’s well-known trademark MICHELIN at the time the Respondent registered the disputed domain name and that the Respondent’s passive holding of the disputed domain name constitutes bad faith use.
In support of its contentions, the Complainant has cited several references to previous UDRP decisions.
The Complainant is requesting that the disputed domain name be cancelled. B. The Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel’s jurisdiction is limited to a determination of whether the Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.
To obtain relief, the Policy, paragraph 4(a), requires the Complainant to prove each of the following:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in the domain name registered by the Respondent; and
(3) the disputed 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 Complainant’s undisputed allegations for which there are support, pursuant to the Rules, paragraphs 5(e), 14(a) and 15(a), and draw such inferences it considers appropriate, pursuant to the Rules, paragraph 14(b). A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark because it fully incorporates that trademark. See VIVENDI v. Private Registrant/ Mr. Arshad Mohamed,WIPO Case No. D2011-0154 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). The disputed domain name consists of the Complainant’s widely-recognized MICHELIN trademark and the addition of the term “doll.”
The addition of the generic term “doll” as a suffix does not obviate the confusing similarity between the disputed domain name and the Complainant’s MICHELIN trademark. See, e.g., Compagnie Générale des Etablissements Michelin and Michelin Rechereche et Technique S.A. v. Eijiobara Obara,WIPO Case No. D2012-0047 (holding that the addition of generic or descriptive terms “does nothing to prevent the likelihood of confusing similarity”). In short, a domain name that incorporates a widely recognized trademark in its entirety as the only distinctive element of a domain name, as is the case here, is confusingly similar to that trademark.
Moreover, the addition of a “.com” extension is generally not to be taken into consideration when examining the identity or similarity between the Complainant’s trademark and the disputed domain name. See Accor v. Noldc Inc., WIPO Case No. D2005-0016.
For these aforementioned reasons, the Panel concludes that the disputed domain name is confusingly similar to the MICHELIN trademark, a widely-known trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, the Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, paragraph 4(c).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not submitted any arguments or evidence in rebuttal.1 Additionally, the disputed domain name is inactive and the Respondent has made no reasonable or demonstrable preparation to use the disputed domain name. The Respondent replied to Complainant’s cease-and-desist letter and agreed to cancel the disputed domain name in addition to discontinuing any future use.
Nothing in the record suggests that the Respondent is commonly known by the disputed domain name or that, before any notice of this dispute, the Respondent used, or demonstrably prepared to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant has asserted that the Respondent is not related to the Complainant’s business and that the Complainant never granted the Respondent a license to use the MICHELIN trademark. Also, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain, to misleadingly divert customers or to tarnish the MICHELIN trademark. In short, there is no evidence from which the Panel could conclude that the Respondent has rights to or legitimate interest in the disputed domain name.
The term “michelin” has no English meaning. The Panel concludes that Respondent took advantage of Complainant’s MICHELIN trademark when registering the disputed domain name without any rights or legitimate interests.
For these reasons, in accordance with the Policy, paragraph 4(a)(ii), the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. Under paragraph 4(a) of the Policy, the Complainant must be able to prove bad faith registration and bad faith use by the Respondent. The Panel finds that both elements have been satisfied by the Complainant.
Also, as demonstrated through the Complainant’s submitted evidence, the Respondent replied to the cease-and-desist letter and agreed to cease use of the trademark MICHELIN in any form and that he would cancel the disputed domain name. Yet, the disputed domain name has not been cancelled.
In light of the facts highlighted above, the Panel agrees that the Complainant has established that the Respondent registered the disputed domain name in bad faith.
Second, bad faith use may be found when the Respondent “knew or should have known” of the Complainant’s trademark rights and, nevertheless registered the disputed domain name in which he had no right or legitimate interest. See Accor S.A. v. Kristen Hoerl,WIPO Case No. D2007-1722. The Panel concludes that this rule applies here. The Respondent registered the disputed domain name on August 30, 2013, even though had no right to do so, and now passively holds it despite agreeing to cancel the disputed domain name See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (finding the respondent’s passive holding of the domain name constituted bad faith); Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (same).
In this case, the Panel finds that the totality of the circumstances supports the conclusion that the Respondent registered and is using the disputed domain name in bad faith. The Panel again notes that the Complainant’s MICHELIN trademark is widely known, that the Respondent has failed to respond to the Complaint or otherwise participate in these proceedings, and that the Respondent passively holds the disputed domain name despite his agreement to cancel it. Therefore, the Panel concludes that the bad faith element of the Policy is satisfied in this case. 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.
Steven Auvil
Sole Panelist
Date: June 17, 2015
1 Notably, the Complainant provided evidence demonstrating that the Respondent agreed to cease use of the disputed domain name. And while the Respondent asserted in correspondence in response to the Complainant’s cease and desist letter that he was using “Michelin doll” in “online games”, there is no such evidence of record or argument by the Respondent that would support a finding of any permissible use.
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