The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Mohammed Miah of Dhaka, Bangladesh. 2. The Domain Names and Registrars
The disputed domain names and are registered with Genious Communications SARL/AU. The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (collectively referred to as the "Registrars"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 27, 2015. On August 28, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 29, 2015, PDR Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 7, 2015, Genious Communications SARL/AU transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 10, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 2, 2015.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on October 21, 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 Michelin, the company based in France, worldwide leader in the field of automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides and maps publications, in the automotive industry and in French and foreign gastronomy. The Complainant has marketing operations in more than 170 countries.
The Complainant's company symbol is the "Michelin Man" named "Bibendum", created in 1898. As soon as Bibendum was "born", by presenting the products and advising and assisting motorists, he became the Complainant's worldwide ambassador. In 2000, Bibendum was elected by an international jury as the "Best logo of the century". The Complainant owns numerous MICHELIN trademark registrations around the world, and in particular, it is the owner of the following trademark registrations:
- Bangladeshi trademark MICHELIN, n° 27824 registered February 26, 1991, duly renewed for the goods in International Class 16; and
- Bangladeshi trademark MICHELIN, n° 27823 registered September 16, 1991, duly renewed for the goods in International Class 12.
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 July 21, 2008.
The disputed domain names were registered on February 9, 2015 and all of them resolve to inactive pages. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or, at least, confusingly similar to the Complainant's trademark MICHELIN. The Complainant says that the fame of its trademark MICHELIN has been noted by numerous previous UDRP panels decisions; for example see Compagnie Générale des Etablissements Michelin, Michelin Recherche et Technique S.A. v. Artemio Garza Hernandez Artemio GarzaWIPO Case No. D2015- 0257 and the other decisions under annex 9 tp the UDRP Complaint.
The Complainant asserts that the addition of the generic term "man" is not relevant and is not sufficient to avoid the confusing similarity between the disputed domain names and the Complainant's trademarks. On the contrary, the addition of the word "man" that corresponds to the Complainant's emblem, the "Michelin Man", strengthens the association with the Complainant and enhances the level of Internet user confusion.
Similarly, the Complainant argues that the mere addition of the generic Top-Level Domains ("gTLD") ".info", ".biz" and ".guru" is irrelevant because the gTLD is not a distinctive element and is unimportant to determine the confusing similarity between the trademark and the disputed domain names.
The Complainant contends that the Respondent is not affiliated with the Complainant in any way nor has it been authorized or licensed by the Complainant to use its 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 names. The registration of the MICHELIN trademark preceded the registration of the disputed domain names for years.
The Complainant contends that the Respondent cannot claim any actual or contemplated bona fide or legitimate use of the disputed domain names. Moreover, the Respondent did not make any use or demonstrable preparation to use the disputed domain names in connection with a bone fide offering of goods or services, considering that the disputed domain names resolve to inactive pages.
The Complainant contends that the Respondent has registered and is using the disputed domain names 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 in Bangladesh, 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 names incorporating the MICHELIN trademark in its entirety, with the addition of the generic term "man" that clearly relates to the Complainant's icon.
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 names would have revealed the Complainant's trademark registrations. The Complainant states that even a simple search on the Internet would have revealed the Complainant's presence and trademarks.
Concerning the 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 such widely known trademark; (2) no actual or contemplated bona fide or legitimate use of the disputed domain names; and (3) the passive holding of the disputed domain names.
Finally, the Complainant contends that it is likely that the Respondent registered the disputed domain names in order to prevent the Complainant from using its trademark in the disputed domain names.: also this type of conduct, according to previous UDRP panel decisions, constitutes evidence of Respondent's bad faith 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 names registered by the Respondent are 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 names; and
(iii) the disputed domain names registered by the Respondent have been registered and are being used in bad faith. A. Identical or Confusingly
The Panel finds that the disputed domain names , and are 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 names incorporate the Complainant's MICHELIN trademark in its entirety; the only difference is the mere adjunction of the word "man".
The Panel finds that the addition of the above term is not enough to prevent confusing similarity between the disputed domain names and the Complainant's widely known trademark (see America Online Inc. v. Yetech 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.)
Furthermore, the Panel finds that the addition of the generic term "man", which clearly relates to the Complainant's emblem, the "Michelin Man" that has been constantly used by the Complainant for over a century, is likely to enhance confusion and to lead customers to believe that the disputed domain names are effectively linked to, affiliated with or connected to the Complainant (see America Online Inc. v. Yetech Communication Inc. and related cases cited supra).
The Panel finds that Internet users may be led to believe that the disputed domain names are 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 TLD suffixes ".biz", ".info" and ".guru", as was found in many previous UDRP decisions, the gTLD extensions are generally not to be taken into consideration when examining the identity or similarity between a complainant's mark and a domain name, as they are a necessary technical component of the domain name and do not give any distinctiveness; for this reason they do not generally affect the analysis under the first element of the Policy for determining whether the domain name is identical or confusingly similar to the trademark.
In light of all the above circumstances, this Panel finds that the disputed domain names , and are 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 names, such as:
(i) use or preparation to use the disputed domain names or a name corresponding to the disputed domain names 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 names (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 names, 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 names.
The Complainant states, and proves by submitting relevant evidence that the MICHELIN trademark has been extensively used worldwide for numerous years and has become a well-known trademark throughout the world. The fame of the Complainant's trademark MICHELIN has been confirmed by numerous previous UDRP panels. In this Panel's view, the Respondent must have been aware of the Complainant's existence when it registered the disputed domain names. 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 names incorporating the MICHELIN trademark in its entirety, with the mere addition of the generic term "man" that clearly relates to the Complainant's symbol and invokes its trademark.
Moreover, the Complainant states that the Respondent has no connection or affiliation with the Complainant and that 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 marks. 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 names is without rights or legitimate interests.
Furthermore, the disputed domain names do not currently resolve to any active website; such "passive holding" of the disputed domain names in itself is not capable of creating any rights or legitimate interests on the part of the Respondent (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 names 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 panels "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" (see 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 names were registered and are being used in bad faith.
The Complainant's name, trademarks and activities are well-known throughout the world and considering the widespread use and fame of the Complainant's trademarks, in this Panel's view the Respondent must have been aware of them when it registered the disputed domain names. 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 names incorporating the MICHELIN trademark in its entirety, with the mere addition of the generic term "man" that clearly refers to the Complainant's icon, the "Michelin Man".
In the 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 Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Ltd.,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 believes that, in the absence of any rights or legitimate interests and lacking any contrary evidence by the Respondent, the Respondent's registration of the disputed domain names which incorporate 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 Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling,WIPO Case No. D2008-0226 and American Express Marketing & Development Corp. v. Gabriyel Akbulut,WIPO Case No. DME2010-0003).
Moreover, as referred to by the Complainant, the Respondent did not reply to Complainant's cease-and-desist letter, nor to the subsequent reminders. The Panel 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).
Concerning the use of the disputed domain names, the Complainant has proven that the disputed domain names currently display 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 names by the Respondent amounts to the Respondent acting in bad faith, considering:
(i) the Respondent's failure to provide evidence whatsoever of any actual or contemplated good faith use of the disputed domain names;
(ii) the well-known character of the Complainant's trademark and its widespread, international use; and
(iii) the absence of any reply by the Respondent to the Complainant's contentions.
The Panel concludes that the Respondent's passive holding of the disputed domain names satisfies the requirement of paragraph 4(a)(iii) of the Policy.
In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain names , and were registered and are 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 names , and be transferred to the Complainant.
Alessandra Ferreri
Sole Panelist
Date: November 4, 2015
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