The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is PrivacyDotLink Customer 1027531 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) / Gustavo Winchester of Belo Horizonte, Minas Gerais, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2017. On January 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2017, 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 January 17, 2017 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 January 19, 2017.
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 January 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2017.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 24, 2017. 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 (“Michelin”) is a large tire manufacturing company with headquarters in Clermont-Ferrand, France.
Michelin is the owner of numerous trademark rights in many countries related to the tires production and sale, road maps, and various guide publications in the field of hotels and restaurants. The Complainant enjoys trademark protection in several countries worldwide. In addition, Complainant operates, among others, several domain names reflecting its trademarks. Michelin has been using its trademark MICHELIN throughout the world for more than a century.
The company’s symbol is the Michelin Man named “Bibendum”. Bibendum was created in 1898 by the imagination of the Michelin brothers and the paintbrush of the poster artist O’Galop, alias “Marius Rossillon”. Throughout history and innovations, the Michelin Man evolved to remain always in phase with his time. The Michelin Man was elected as the “best logo of the century” by an international jury in 2000.
The Complainant owns the following trademark registrations for MICHELIN:
- European Union trade mark MICHELIN no. 1791243, registered on October 24, 2001, duly renewed, covering goods in classes 6, 7, 12, 17, 28;
- European Union trade mark MICHELIN no. 4836359, registered on March 13, 2008, duly renewed, 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, 39;
- European Union trade mark MICHELIN no. 9914731, registered on September 27, 2011, covering goods and services in classes 9, 35, 37, 38, 39, 41, 42, 43.
The disputed domain name was registered on November 26, 2008. At the time of this decision, the disputed domain name resolved to a webpage with pay-per-click links (“PPC links”). 5. Parties’ Contentions A. Complainant
The Complainant’s assertions may be summarized as follows:
(i) Identical or confusingly similar
The Complainant has been using the MICHELIN trademark in connection with a wide variety of products and services around the world. Further, several prior UDRP panel decisions have regarded the MICHELIN trademark to be “well-known” or “famous”.
The disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark.
(ii) Rights or legitimate interests
The Complainant states that the Respondent is not affiliated with the Complainant nor has it been authorized to use and register its trademarks, or to seek registration of any domain name incorporating the MICHELIN trademark.
The Complainant states that the disputed domain name is so similar to the Complainant’s famous MICHELIN trademark that the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the disputed domain name.
The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. The disputed domain name is parked with PPC links related to tires. It is likely that the Respondent uses the disputed domain name to generate revenue. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. Rather, the Respondent’s intention appears to be to attempt to sell the disputed domain name to the Complainant in excess of the out-of-pocket costs related to the disputed domain name. The Respondent has no rights or legitimate interests in the disputed domain name.
(iii) Registration and use in bad faith
According to the Complainant, the disputed domain name was registered and is being used in bad faith.
The Complainant also asserts that the Respondent, who knew or should have known about the Complainant’s rights in the MICHELIN trademark, nevertheless registered a domain name in which it had no right or legitimate interest. Accordingly, bad faith can be found. The Complainant is well known throughout the world. Several UDRP panels have previously mentioned its worldwide reputation, making it unlikely that the Respondent was unaware of the Complainant’s proprietary rights in the trademark. As the composition of the disputed domain name entirely reproduces the Complainant’s trademark MICHELIN with the addition of the letter “e” and the word “man”, it is impossible that the Respondent did not have this trademark and company name in mind while registering the disputed domain name.
The Complainant claims that bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith.
The Complainant claims it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name. The Complainant further argues that the Respondent's previous attempt to sell the disputed domain name to the Complainant, and the use of the disputed domain name in connection with a parking page displaying PPC links falls within paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant has established that it is the registered owner of various trademark registrations for its MICHELIN trademarks.
The disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN. The addition of the letter “e” and the word “man” after the trademark MICHELIN does not change this conclusion. In addition, the use of the term “man” in this case leads the Panel to conclude that the disputed domain name is confusingly similar to the trademark in which Complainant has rights. The company’s symbol is the “Michelin Man” named “Bibendum”. Such combination clearly evokes the trademark of the Complainant. It is also well accepted that the generic Top-Level Domain (“gTLD”) is typically disregarded when assessing confusing similarity.
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Panel finds there to be no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use its trademark. The Complainant has prior rights in the trademark which precede the Respondent’s registration of the disputed domain name by several decades. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein).
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
The Panel finds, also in view of the Panel’s findings below, that the second element of the Policy has been met. C. Registered and Used in Bad Faith
The Complainant must prove that the disputed domain name was both registered in bad faith and that it is being used in bad faith.
The Complainant’s allegations with regard to the Respondent’s registration and use of the disputed domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
The Complainant’s trademarks are famous, are registered in the Respondent’s jurisdiction, and have evidently been known to the Respondent when registering the disputed domain name. Said domain name is highly unlikely to have been registered if it were not for the Complainant’s trademarks. In this respect, see Compagnie Generale des Etablissements Michelin, Michelin et Cie, Michelin Recherche et Technique S.A. v. Alvaro Collazo,WIPO Case No. D2004-1095; Compagnie Générale des Établissements Michelin - Michelin et Cie v. Petdorf Racing,WIPO Case No. D2005-0210; Compagnie Générale des Etablissements Michelin v. Pavol Horecny,WIPO Case No. D2009-1554; Compagnie Générale des Etablissements MICHELIN v. Los Planetas (LoIsrael Rondón),WIPO Case No. D2002-0875; Compagnie Générale des Etablissements Michelin-Michelin & Cie v. la bon vie and Gilles Epie,WIPO Case No. D2002-0092; Compagnie Générale des Établissements Michelin - Michelin & Cie v. Manuel Manero Peláez,WIPO Case No. D2001-0215 and Compagnie Générale des Etablissements Michelin-Michelin & Cie. v. Tgifactory,WIPO Case No. D2000-1414 (all decisions recognizing MICHELIN as a well-known trademark).
Given the fame of the Complainant’s MICHELIN marks, and its corporate symbol “Michelin Man” which were widely used for more than century before the disputed domain name was registered, the Panel concludes that the Respondent had actual knowledge of the Complainant’s trademarks (see Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484).
In addition, a finding of bad faith use can be made, inter alia, where the respondent “knew or should have known” of the complainant’s trademark rights, and nevertheless registered a domain name incorporating a mark, in which it had no rights or legitimate interests (Accor S.A. v. Kristen Hoerl,WIPO Case No. D2007-1722; Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 and Compagnie Générale Des Établissements Michelin v. Rakshita Mercantile Limited,WIPO Case No. D2009-0808).
The Complainant asserts that the Respondent’s purpose of registering the disputed domain name has likely been to prevent the Complainant from registering the disputed domain name.
The Panel also takes into account that:
- the disputed domain name has been used in connection with a parking page displaying PPC links, likely to generate revenue for the Respondent;
- the Respondent offered to sell the disputed domain name for a sum of USD 1,000. After rejection of that offer to sell, the Respondent lowered its offer to USD 500 (Annex 4 of the Complaint);
- the Respondent has been a party to at least ten UDRP cases where it was held that it registered those disputed domain names in bad faith.
The Complainant’s trademark MICHELIN is famous. The disputed domain name includes the very wording of the Complainant’s symbol (“Michelin Man”) with the addition of the letter “e”. The Respondent has not shown that it is using or preparing to use the disputed domain name for any legitimate purpose. The disputed domain name resolves to a webpage with PPC links. In light of the circumstances set out above, the Panel finds that the Respondent registered and is using the disputed domain name 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 transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: March 10, 2017
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