Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is Frank Unger of Green Point, South Africa. 2. The Domain Name and Registrar
The disputed domain name is registered with Go Montenegro Domains, Inc. (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 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 11, 2015.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on September 22, 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
Complainant, Compagnie Générale des Etablissements Michelin, is a global manufacturer of tires and a publisher of travel guides, hotel and restaurant guides, maps, and road atlases. Complainant is present in more than 170 countries, including South Africa, and operates production plants in 17 different countries. Complainant owns and uses the MICHELIN name and trademark and has provided as Annex 5 to the Complaint details for two South African trademark registrations (No. 1972/2845 and B1972/2846) that issued in 1976 for tire-related products and guide books. Complainant also owns a number of domain names based on the MICHELIN mark that it has used to promote its products and services, including , , , and .
The disputed domain name was registered on September 17, 2014. Currently, the disputed domain name resolves to a parked page advising that a "website [is] coming soon."
On or about June 8, 2015, Complainant's counsel sent a demand letter to Respondent regarding Respondent's registration of the disputed domain name and requested the transfer of such. On June 9, 2015, Complainant's counsel received a response from Respondent rejecting Complainant's demands. The Parties had subsequent communications in which Respondent offered to sell the disputed domain name for EUR 100 "in order to prevent any further discussions and legal cost." Complainant does not appear to have responded to this communication and Complainant initiated this proceeding on August 18, 2015. 5. Parties' Contentions A. Complainant
Complainant asserts that its MICHELIN mark is well-known internationally and that since 1900 the MICHELIN name and mark has been used with a popular travel guide known as the Michelin Guide that is currently available in 14 editions covering 23 countries and sold in 90 countries. Complainant also asserts that its Michelin Guide awards Michelin Stars for the excellence of selected establishments.
Complainant contends that the disputed domain name is confusingly similar to Complainant's MICHELIN mark because it contains the MICHELIN mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the descriptive term "star" and the ".guide" generic Top Level Domain ("gTLD") extension heightens the confusion because the term and extension relate specifically to Complainant's Michelin Guide books and Michelin Stars awards.
Complainant argues that because it has established prior rights in and to the well-known MICHELIN mark, and has not licensed or authorized Respondent to register the disputed domain name, Respondent lacks any rights or legitimate interests in the disputed domain name. Complainant further contends that Respondent has not used the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use, but, as demonstrated by the Parties' correspondence, has registered the disputed domain name for commercial gain and for purposes of selling it to Complainant for valuable consideration in excess of Respondent's out-of-pocket costs.
Finally, Complainant asserts that Respondent registered and uses the disputed domain name in bad faith since Respondent must have known of Complainant's MICHELIN mark given that Complainant's MICHELIN mark is well-known all over the world and given that the disputed domain name includes elements (the term "star" and gTLD extension ".guide") that refer to Complainant's Michelin Guide and Michelin Stars awards. Complainant further contends that that while Respondent has not made any active use of the disputed domain name, the passive holding of the disputed domain name amounts to bad faith registration and use. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview, 2.0") states:
"4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent's default does not automatically result in a decision in favor of the complainant… the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding."
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 2.0, paragraph 1.1. Complainant has provided evidence that it owns trademark registrations for the MICHELIN mark in South Africa since November 1976. Complainant has also provided evidence that a number of prior UDRP panelists have found Complainant's MICHELIN trademark to be "well-known" or "famous."
With Complainant's rights in the MICHELIN mark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The initial consideration is whether the gTLD extension within the disputed domain name, ".guide", should be disregarded in the analysis of the first element, as is typically the case for gTLD extensions such as ".com", ".org", ".net", ".biz", and ".info". As this Panel discussed in ACCOR v. WHOIS Limited / Domain Administrator, Beyond the Dot LTD,WIPO Case No. D2015-0279, the new gTLD extension can be considered in certain circumstances in the analysis, particularly where the extension relates in some way to the goods or services associated with Complainant's trademark. See also The Drambuie Liqueur Company Limited v. Glen Hammond,WIPO Case No. D2015-0063 (); Hultafors Group AB v. my domain limited,WIPO Case No. D2014-0597 (); NVIDIA Corporation v. Brent Angie/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP, WIPO Case No. D2014-1171 (); and The Football Association Premier League Limited v. c/o Wois Limited / Domain Administrator, Beyond the Dot, WIPO Case No. D2014-1222 ().
Here, the disputed domain name is confusingly similar to the MICHELIN mark as it incorporates the MICHELIN mark in its entirety in the disputed domain name. The addition of the term "star" does not distinguish the disputed domain name from Complainant's MICHELIN mark and in fact heightens the confusion by suggesting that the disputed domain name relates to Complainant's Michelin Stars awards. The confusing similarity is further accentuated by the use of the gTLD ".guide" which in combination with the "michelinstar" portion of the disputed domain name suggests a connection to Complainant's well-known Michelin Guide. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the MICHELIN mark and in showing that the disputed domain name is identical or confusingly similar to that trademark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The record in this case includes no evidence that Respondent has any rights or legitimate interests in the disputed domain name. Since registering the disputed domain name in September 2014, Respondent has not made any bona fide or fair use of the disputed domain name in connection with any products or services. Rather, Respondent has merely placed a generic web page at the disputed domain name advising that a website would be coming. As Respondent has chosen not to respond in this proceeding, the Panel can only conclude, based on the available evidence, that Respondent did not register the domain name for any legitimate purpose, but actively sought to capitalize on Complainant's well-known MICHELIN mark by registering a domain name with the ".guide" gTLD extension that would likely be seen as related Complainant's Michelin Guide and Michelin Stars awards.
As to whether Respondent's offer to sell the disputed domain name to Complainant for EUR 100 is further proof of a lack of a legitimate interest, the Panel is not convinced that Respondent's offer to sell the disputed domain name for a relatively small amount per se establishes a lack of a legitimate interest. That being said, the fact that Respondent, in response to Complainant's demand letter, (i) did not deny that he was aware of the MICHELIN mark or (ii) provide a bona fide reason for why he registered a domain name that specifically included the very elements related to Complainant's Michelin Guide and Michelin Stars awards, suggests that Respondent was quite aware of Complainant's rights and was merely seeking to cover his costs for having been caught with his hands in the proverbial cookie jar.
In sum, the Panel finds that in this case Complainant has established a prima facie case showing that Respondent has no rights to or legitimate interests in the disputed domain name. As Respondent, although given an opportunity to present his case, has decided not to submit a Response and put forward arguments as to why he should be regarded as having rights or legitimate interests in the disputed domain name, the Panel concludes that, based on the available record, Respondent has not rebutted Complainant's prima facie case. Complainant thus prevails on this element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
In the present case, Respondent has registered a domain name that fully incorporates Complainant's MICHELIN mark with the term "star," along with the gTLD extension . Such combination of the MICHELIN mark with a common term and a gTLD extension that each can be seen as related to Complainant's Michelin Guide and Michelin Stars awards creates a likelihood of confusion by suggesting to consumers that the disputed domain name concerns Complainant's Michelin Guide and related Michelin Stars awards. Given that Respondent more than likely was aware of Complainant and its MICHELIN mark when Respondent registered the disputed domain name, it is hardly conceivable that Respondent registered such a confusing domain name by chance. If anything, the evidence suggests that Respondent specifically targeted Complainant and its well-known MICHELIN mark, and did so opportunistically and in bad faith. SeeVeuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163
Moreover, given that the evidence of record shows that Respondent has passively held the disputed domain name for a year and made no preparations for any actual or contemplated good faith use of the disputed domain name, the Panel can only conclude that Respondent's actions demonstrate bad faith registration and use of the disputed domain name. The Panel also finds that Respondent's decision to default in this proceeding is further evidence of Respondent's continued bad faith in this matter.
Accordingly, the Panel finds that Complainant succeeds under this element 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 disputed domain name be transferred to Complainant.
Georges Nahitchevansky
Sole Panelist
Date: October 4, 2015
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