The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Gemma Nunez Perez of Salt, Spain, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with DonDominio (SCIP) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2018. On July 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing her contact details on file.
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 July 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2018. The Response was filed with the Center on August 14, 2018.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on August 27, 2018. 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. Language of the Proceedings
The Complaint acknowledged, and the Registrar confirmed, that the language of the disputed domain name’s registration agreement is Spanish. Notwithstanding that, the Complainant filed the Complaint in English and requested that the same be the language of the proceedings because:
a) The Complainant is located in France and has no knowledge of Spanish. To proceed in this language, the Complainant would have to retain translation services at a cost likely to be higher than the overall cost of the instant proceedings;
b) Many UDRP decisions, such as Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679 and Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. Lin Jinqing,WIPO Case No. D2012-1412 have held that where a complainant is unable to communicate in the language of the registration agreement, having all documents translated into said language may well represent a significant financial burden for the complainant.
c) Nowadays, English is the primary language for international relations and is one of the working languages of the Center.
On July 19, 2018, the Center served notice on the parties, in English and Spanish, asking the Respondent whether it objected to the Complainant’s request for English to be the language of the proceedings. The Center warned that the Respondent’s failure to contest the Complainant’s language-related request by July 24, 2018 would result in the proceedings being carried on in English, unless otherwise determined by the Panel, once appointed. The Respondent failed to raise an objection by the due date.
Paragraph 11(a) of the Rules reads:
“11. Language of Proceedings
(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Having regard to the circumstances of the proceeding, as permitted by the paragraph at issue:
a) this Panel notes that the Respondent has not been prevented from putting forward its defense in Spanish, a language that this panelist fully understands;
b) the Panel does not believe, in view of the evidence proffered by the Complainant, the worldwide reputation of the Complainant’s mark, the contents of the Respondent’s website, the circumstances surrounding registration and use of the disputed domain name, and the Respondent’s defense, that the outcome of this decision would be any different if the Complainant was directed to have the Complaint and exhibits translated into Spanish, leaving aside costs considerations, which in any event must be weighed against other factors, notably, procedural fairness and the equities of the case.1
For these reasons, and pursuant to the authority vested upon it by paragraph 11(a) of the Rules, the Panel accepts the Complaint in English, as well as the Respondent’s communication in Spanish, and determines on balance that English shall be the language of the proceedings and the instant decision. 5. Factual Background
The Complainant is one of the leading tyre companies in the world, with 68 manufacturing plants in 17 countries, and a distribution network extending across more than 170 countries.
The MICHELIN Guide was launched in 1920 in order to help drivers plan their road trips, thereby boosting car sales and, in turn, tyre purchases.
The Complainant owns numerous trademark registrations around the world, including, but not limited to, the following:
European Union Trade Mark (“EUTM”) No. 013558366, for MICHELIN, registered on April 17, 2015 and covering goods and services in classes 9, 35, 38, 39, 41, 42;
International trademark No. 348615, for MICHELIN, registered on July 24, 1968, duly renewed, and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17, 20;
International trademark No. 771031, for MICHELIN, registered on June 11, 2001, duly renewed, and covering goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, 42;
Spanish trademark No. M2520534, for GUIA MICHELIN, registered on June 26, 2003, duly renewed and covering goods in class 16.
The disputed domain name was registered on February 11, 2018, and for some time now has resolved to a website (marked as unsecure on the navigation bar) borrowing the template of a blog page powered by WordPress. 6. Parties’ Contentions A. Complainant
In summary, the Complainant contends as follows:
i) The panels in Compagnie Générale des Etablissements Michelin v. A Domain Privacy / Transure Enterprise Ltd, Host Master,WIPO Case No. D2013-0430 ; Compagnie Générale des Etablissements Michelin v. Cameron David Jackson,WIPO Case No. D2015-1671; and Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios,WIPO Case No. D2017-0234,have considered the MICHELIN trademark to be either famous or well-known;
ii) The disputed domain name is identical or at least confusingly similar to the Complainant’s trademarks MICHELIN and GUIA MICHELIN;
iii) The terms “la guia del” added to the trademark MICHELIN in the disputed domain name, make direct reference to the Complainant’s culinary guide “the Michelin Guide”, which is well-known around the world;
iv) The Respondent is not affiliated with the Complainant in any way nor was it authorized by the Complainant to use and register its MICHELIN trademark, or to seek registration of any domain name incorporating said mark;
v) Prior UDRP panels have found that, in the absence of any license or permission to use the complainant’s well-known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by the respondent;
vi) The Respondent has not made any reasonable and demonstrable preparation to use the disputed domain name because same resolves to the template of a blog page powered by WordPress;
vii) In light of the reputation of the Complainant’s MICHELIN trademarks, it is implausible that the Respondent was unaware of them;
viii) A quick trademark search would have revealed the existence of the Complainant’s MICHELIN registered trademark. The Respondent’s failure to do so is a contributory factor to its bad faith;
ix) The Respondent is engaged in a phishing scheme and clearly aims at stealing valuable information such as credit cards from the Complainant’s clients through the use of an email address and a dubious website reproducing the Complainant’s trademarks MICHELIN and GUIA MICHELIN;
x) All aforementioned circumstances confirm that the Respondent both registered and used the disputed domain name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy. B. Respondent
In response to the Notification of the Complaint, the Respondent sent an email to the Center, in Spanish, alleging that:
In Spanish the word “Michelin” is used to designate a part of the body around the waist and abdomen, in which fat, product of overweight, is found. You can consult it in the dictionary of the Royal Academy of Language (link provided).
It is a term widely and commonly used, so I consider that there is no problem that I use it.2 7. Discussion and findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
(i) the disputed domain name 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 was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar
As explained in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the test for confusing similarity under the UDRP involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark(s).
The Complainant holds international and EUTM trademark registrations for MICHELIN, along with a Spanish trademark registration for GUIA MICHELIN.
The disputed domain name consists of the Complainant’s MICHELIN mark plus the descriptive terms “laguiadel” in Spanish.
The disputed domain name also incorporates the Complainant’s GUIA MICHELIN mark plus the terms “la” and “del” being a subject pronoun and a preposition, respectively, in Spanish grammar.
To the Panel’s eye, the Complainant’s well-known MICHELIN mark is immediately recognizable within the disputed domain name, which suffices to find confusing similarity within the purview of the Policy. See section 1.8 of the WIPO Overview 3.0 “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (…) would not prevent a finding of confusing similarity under the first element”.
Here, the association with the Complainant’s marks is buttressed by the explicit reference in the disputed domain name to the Complainant’s best-selling MICHELIN Guide. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).
For the foregoing reasons, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s MICHELIN and GUIA MICHELIN marks.
The Complainant has therefore satisfied its burden of proof for this element of the Policy. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
The Respondent has not been licensed or otherwise authorized to use the Complainant’s marks. There is no evidence in the file to indicate that the Respondent is commonly known by the disputed domain name.
The Respondent’s defense claiming entitlement to use the term “Michelin” on the basis of its dictionary meaning fails for the following reasons:
First, because the trademark registrations owned by the Complainant all over the world, and the numerous UDRP decisions cited in the Complaint demonstrate that the term MICHELIN is perceived by consumers and Internet users alike, as a trademark that has garnered worldwide notoriety and goodwill, as opposed to a colloquial term (“michelín”) used mainly, if not exclusively, in Spain, to describe a roll of fat above the waist.
Second, because the very same entry for “michelín” in the Spanish dictionary referenced by the Complainant3 acknowledges that MICHELIN is a registered trademark.
Third, because the alleged descriptive use of the term “Michelin” is inconsistent with the Respondent’s use of the disputed domain name associated with a shady website, devoid of any real content.
Fourth, because the association of “laguiadel” with “michelin” in the disputed domain name, negates the Respondent’s ordinary meaning defense.4
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant has satisfied its burden of proof for this element of the Policy. C. Registered and Used in Bad Faith
Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] 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 [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
It bears noting that several UDRP panels have considered the Complainant’s MICHELIN mark to be well-known. See for instance Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504 (“The trademark and company name MICHELIN is well known. It has been used worldwide for many years and is one of the best known trademarks for tires in the world”)5 .
It follows that the Respondent, who is domiciled in Spain, could not have been unaware of the MICHELIN mark’s notoriety, and the registration of the disputed domain name must be deemed in bad faith as it encroached on the Complainant’s exclusive trademark rights.6
The Panel also finds that the registration and use of the disputed domain name is deceptive, as it creates initial interest confusion among Internet users who ultimately find out that the website at the disputed domain name has nothing to do with the Complainant or its best-selling MICHELIN Guide.
The Respondent’s deceptive intent to divert traffic from the Complainant’s website searchers is conclusive evidence of bad faith registration and use for Policy purposes. See Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (“respondent’s domain names were registered intentionally to misdirect customers looking for PFIZER’s sites. The domain names are intended to deceive PFIZER’s customers. This conduct is bad faith and violates the UDRP”).
Under these circumstances, the Panel is persuaded that the disputed domain name was registered and has been used in bad faith within the realm of the Policy.
Thereby, the Complainant has discharged its burden in relation to paragraph 4(a)(iii) of the Policy. 8. 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.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: September 14, 2018
1 Inherent in the facts are the “equities” of the case, meaning the human sense of fairness or unfairness arising from the acts of the parties, the wrongs that were committed by one party against another, and the injury that was suffered by one party as a result. See Doak Bishop in The Art of Advocacy in International Arbitration, Juris Publishing, Inc. New York, USA, 2004, pp.453-454.
2 The exact wording in Spanish is as follows: “En castellano la palabra Michelin se utiliza para designar una parte del cuerpo alrededor de la cintura y el abdomen, en la que se localiza grasa producto del sobrepeso. Pueden ustedes consultarlo en el diccionario de la Real Academia de la Lengua (link provided).
En un término ampliamente utilizado y de uso común, por lo que considero que no hay ningún problema en que yo lo utilice.”
3 Dictionary of the Royal Spanish Academy,available at “/?id=DgIqVCc”
4 See Compagnie Générale des Etablissements Michelin v. Martina Barth,WIPO Case No. DES2017-0043 (“la experta nota que el vocablo “michelin” se encuentra en la actualidad en el Diccionario de la Real Academia Española para referirse a una lorza o pliegue de gordura. No obstante, la adición a ese término de la palabra “ruta” evidencia un interés especial por parte de la demandada de asociarse con la marca notoria de la demandante.”)
5 See also Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. DES2014-0037 (“la notoriedad o renombre de la marca MICHELIN a nivel mundial ha sido reconocida por varias resoluciones anteriores de Expertos”)
6 See Compagnie Générale Des Etablissements Michelin v. Alberto Lopez Fernandez,WIPO Case No. DES2014-0006 (“la notoriedad de la marca MICHELIN en España y en todo el mundo permite concluir al experto que el registro del nombre de dominio se produjo de mala fe, pues el registrante no podía ignorar que con ello estaría, como mínimo, obstaculizando la posición de un tercero”).
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