The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France represented by Dreyfus & associés, France.
The Respondent is Ryan Ali of Ajax, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2015. On August 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 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" 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 17, 2015.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on October 13, 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 commonly known as Michelin, the company headquartered in France, and is a worldwide leader in the field of tires.
It also offers electronic mobility support services on "" and publishes travel guides, hotel and restaurant guides, maps and road atlases.
The Complainant is present in more than 170 countries, has 112,300 employees and operates 68 production plants in 17 different countries. It is also present in Canada where it currently has up to 3,600 employees. Michelin established commercial sales offices in Montreal in 1940.
The Michelin Guide, also known as the "Michelin Red Guide," was created by the Michelin brothers in 1900 and today is available in 14 editions covering 23 countries and sold in nearly 90 countries. In 1926, the first fine dining star was born, and in 1931 the second and third stars came into existence.
The Michelin Guide awards Michelin Stars for the excellence of selected establishments.
The Complainant owns numerous MICHELIN trademark registrations around the world, and in particular, it is the owner of the following trademark registration:
- Canadian trademark registration for MICHELIN, n° TMA214191 dated February 28, 1974, duly renewed.
In addition, the Complainant actively promotes its MICHELIN trademarks through its websites linked, among others, to the domain names registered on December 1, 1993 and registered on October 6, 2000.
The disputed domain name was registered on November 23, 2014 and resolves to an inactive page. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's worldwide famous trademark MICHELIN. The fame of the Complainant's trademark MICHELIN was confirmed by numerous previous UDRP decisions (for example, see Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu,WIPO Case No. D2014-1240; Compagnie Générale des Etablissements Michelin (Michelin) v. Zhichao Yang,WIPO Case No. D2013-1418; 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; and Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / A Domain Privacy,WIPO Case No. D2012-0045).
The addition of the generic terms "star" and "catering" is not relevant and is not sufficient to avoid confusing similarity between the disputed domain name and the Complainant's trademarks. On the contrary, the addition of the words "star" and "catering", which are clearly related to the Complainant, its trademark and its services, strengthens the association with the Complainant and enhances the level of confusion of Internet users.
Similarly, the mere addition of the generic Top-Level Domain (gTLD) ".com" is irrelevant because the gTLD is not a distinctive element and is unimportant to determine confusing similarity between the trademark and the disputed domain name.
The Complainant contends that the Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register their trademarks, or to seek registration of any domain name incorporating said marks. Furthermore, 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 names by years.
The Complainant contends that the Respondent did not demonstrate any use or demonstrable preparations to use the disputed domain name in connection with a bone fide offering of goods or services, considering that the disputed domain name resolves to an inactive page. Moreover, the Respondent never answered the Complainant's letter despite the Complainant's reminders, and from this circumstance, it can be assumed that the Respondent has no rights or legitimate interest in the disputed domain name.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent's bad faith registration is established by the fact that the Respondent was aware of the existence of the Complainant's trademark given its status of a well-known trademark throughout the world, including Canada, where the Respondent resides.
Moreover, the Respondent's awareness of the Complainant's activity and rights may be inferred by the fact that the Respondent registered the disputed domain name incorporating the MICHELIN trademark in its entirety, with the addition of the generic terms "star" and "catering" that clearly relate to the Complainant's business activity.
Furthermore, the Respondent's full knowledge of the Complainant's rights can also be inferred by the fact that a simple trademark search at the time of the registration of the disputed domain name would have revealed the Complainant's trademark registrations. And, even a simple search on the Internet would have revealed the Complainant's presence and trademarks.
Finally, the fact that the Respondent did not reply to the Complainant's cease and desist letter and did not try to defend his rights or interests in the registration of the disputed domain name is also an indication of bad faith.
Concerning use in bad faith, the Complainant contends that, according to numerous previous UDRP panel decisions, the Respondent's bad faith, can be inferred by several elements, and in particular: (1) the absence of any license or permission from the Complainant to use its widely known trademark, (2) no actual or contemplated bona fide or legitimate use of the disputed domain name, (3) the passive holding of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain name registered by the Respondent 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. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's MICHELIN trademark, a clearly distinctive and well-known mark in which the Complainant has established rights through registrations and extensive use all over the world.
The disputed domain name incorporates the Complainant's MICHELIN trademark in its entirety; the only difference is the mere adjunction of the words "star" and "catering".
The addition of the above terms is not enough to the Panel to prevent confusing similarity between the disputed domain name and the Complainant's worldwide famous trademark (see America Online, Inc. v. Yeteck Communication Inc.,WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat,WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu,WIPO Case No. D2005-0987). Indeed, the Panel finds that the addition of the generic terms "star" and "catering" that clearly relates to one of the Complainant's business activities, is likely to enhance confusion and to lead Internet users to believe that the disputed domain name is effectively linked to, affiliated with or connected to the Complainant.
The Panel believes that people considering the disputed domain name without awareness of its content may think that the disputed domain name is in some way connected and associated with the Complainant: this scenario is known as "initial interest confusion" (see Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul,WIPO Case No. D2004-0988).
Finally, with regards to the gTLD ".com", as it was established in many previous UDRP decisions (see A.P. Møller v.Web Society,WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@,WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A. v. Name Privacy,WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the disputed domain name and does not give any distinctiveness.
There is no doubt that the disputed domain name is confusingly similar to the Complainant's trademark. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:
(i) use or preparation 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 prior to notice of the dispute; or
(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name.
The Complainant states, and proves by submitting documents (see annexes 3 and 5) that the MICHELIN trademark has been extensively used worldwide for numerous years and has become a well-known trademark throughout the world. The fame mark of the Complainant's trademark MICHELIN was confirmed by numerous previous UDRP panel decisions (see annex 7). Therefore, in the Panel's view, the Respondent must have been aware of the Complainant's existence when the Respondent registered the disputed domain name. And indeed, the Respondent's awareness of the Complainant's activity and rights may be inferred by the fact that the Respondent registered the disputed domain name incorporating the MICHELIN trademark in its entirety, with the mere addition of the generic terms "star" and "catering" that clearly relate to one of the Complainant's field of activities, concerning in particular Michelin-starred restaurants.
Moreover, the Complainant states that the Respondent has no connection or affiliation with the Complainant and no license or authorization of any kind has been given by the Complainant to the Respondent to use and register its trademarks or to seek registration of any domain name incorporating said mark. Since the Respondent has no permission from the Complainant, the Panel finds that based on the available evidence, the Respondent's use of the disputed domain name is without rights or legitimate interests.
Furthermore, the disputed domain name does not currently resolve to any active website; such "passive holding" of the disputed domain name in itself is not capable of creating any rights or legitimate interests of the Respondent therein (see, e.g., Pepperdine University v. BDC Partners, Inc.,WIPO Case No. D2006-1003; Archipelago Holdings LLC v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales,WIPO Case No. D2001-0729).
Finally, given the circumstance of this case, the Panel finds that the Respondent's lack of rights or legitimate interests in the disputed domain name may also be inferred by the fact that the Respondent never answered to the Complainant's cease and desist letters and filed no response; the Respondent has not availed himself of his rights to respond to the Complaint. According to previous UDRP decisions "non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights" (besides the decisions mentioned by the Complainant, see also Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493; and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith.
The Complainant's name, trademark and activities are well-known throughout the world and considering the widespread use and fame of the Complainant's trademark, in the Panel's view the Respondent must have been aware of it when he registered the disputed domain name. And indeed, the Respondent's awareness of the Complainant's activity and rights may be inferred by the fact that the Respondent registered the disputed domain name incorporating the MICHELIN trademark in its entirety, with the mere addition of the generic terms "star" and "catering" that clearly relate to one of the Complainant's business activities.
In light of the above, and in line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano,WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395), the Panel finds that, in the absence of any right or legitimate interest and lacking any contrary evidence from the Respondent, the Respondent's registration of a domain name confusingly similar to the Complainant's worldwide well-known trademark suggests opportunistic bad faith (MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No.D2007-1412; Mastercard International Incorporated v. Total Card Inc.,WIPO Case No. D2007-1411; see also LANCOME PARFUMS ET BEAUTE & CIE, L'OREAL v. 10 Selling,WIPO Case No. D2008-0226).
Moreover, as referred to by the Complainant, the Respondent did not reply to Complainant's cease and desist letter sent on May 28, 2015 and to the subsequent reminders. In line with previous UDRP decisions, the Panel also finds that "the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith" (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments Inc,WIPO Case No. D2002-0787; News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598; and RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242).
Indeed, the Respondent has maintained the website at the disputed domain name despite the Complainant's objections. Such silence, ongoing cybersquatting and dilution are further evidence of the Respondent's bad faith (see Compiere Inc. v. James Zhong,WIPO Case No. D2007-0130; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022; and RRI Financial, Inc. v. Ray Chen,WIPO Case No. D2001-1242).
Concerning use in bad faith, the Complainant has proven that the disputed domain name currently holds no content.
With regard to this issue, the Panel shares the Complainant's view and, according to several precedents originated from the decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the Panel believes that, in certain circumstances, the inaction in respect of a domain name registration can constitute a domain name being used in bad faith.
In the Panel's opinion, in the circumstances of this case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith.
Indeed, considering;
the well-known character of the Complainant's trademark and its widespread and international use;
(ii) the Respondent's failure to provide evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;
(iii) the default of the Respondent's reply to the Complainant's contentions;
the Panel concludes that the Respondent's passive holding of the disputed domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy, that the disputed domain name "is being used in bad faith" (see Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,WIPO Case No. D2000-0090; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau,WIPO Case No. D2000-0172; and Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaV,WIPO Case No. D2005-0615).
In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain name was registered and is being 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.
Alessandra Ferreri
Sole Panelist
Date: October 27, 2015
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