The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Jon Cropper, Jonathan Media, United States of America (“U.S.” or “United States”). 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2020. On June 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 5, 2020, 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 June 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on July 6, 2020. 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 a corporation organized under the laws of France that operates a business with a presence in 171 countries selling tires and the authoritative Guide Michelin that ranks fine dining establishments by awarding “Michelin Stars”. The Complainant holds registrations for the trademark MICHELIN in numerous countries, including U.S. trademark No. 0892045 for goods in the international class 12, registered on June 2, 1970. The Complainant is also the owner of, inter alia, the domain name The Disputed Domain Names The Complainant cites United States trademark registrations including No. 4126565, registered on April 10, 2012, and numerous other registrations internationally for the mark MICHELIN, as prima facie evidence of ownership. The Complainant submits that the mark MICHELIN is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Names. It submits that the Disputed Domain Names are confusingly similar to its trademark, because each Disputed Domain Name incorporates in its entirety the MICHELIN trademark and that the similarity is not removed by additions of the words “home” and “chef” in the case of the Disputed Domain Name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because there is no evidence of any affiliation with, or consent to use the trade marks by, the Complainant and “Respondent has so far neither used nor made any demonstrable preparation to use the domain names in connection with a bona fide offering of goods or services”. Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and Rules having regard to the prior use and fame of the Complainant’s trademarks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that each 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 Names; and (iii) that the Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark MICHELIN in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Names are identical or confusingly similar to the MICHELIN trademark, the Panel observes that: 1) the Disputed Domain Name 2) the Disputed Domain Name 3) the Disputed Domain Name It is well established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names, specifically: “homemichelinchef”, “michelinathome”, and “michelinhome”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of other words (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033). The Panel observes that the additional words chosen by the Respondent appear to refer to the Complainant’s use of its trademark in relation to its companion to fine dining, the Guide Michelin. This Panel finds the Complainant’s trademark is recognizable within each of the Disputed Domain Names, and that the additional words “at”, “home” and “chef” – as applicable – do not avoid a finding of confusing similarity to the Complainant’s mark under the first element (see WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s MICHELIN trademark, and the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Names. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Names. 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 World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names mainly because: (a) the Respondent is neither affiliated with Complainant in any way nor has been authorized by the Complainant to register any domain name incorporating the MICHELIN trademark; (b) the Respondent is not commonly known by the Disputed Domain Names; and (c) there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. On any objective view of the evidence, there are no circumstances on the case file showing that the Respondent has rights or legitimate interests in a domain name incorporating the Complainant’s trademark MICHELIN. This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Names and, in the absence of a reply by the Respondent, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Names in bad faith. On the issue of registration, the trademark MICHELIN is such a famous mark for tires, and for its companion to fine dining, that it would be inconceivable that the Respondent might have registered the Disputed Domain Names without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Compagnie Générale des Etablissements Michelin-Michelin & Cie. v. Tgifactory,WIPO Case No. D2000-1414(“MICHELIN is a famous trademark, and its tourist guides are notorious”); Compagnie Générale des Etablissements Michelin-Michelin & Cie v. la bon vie and Gilles Epie, WIPO Case No. D2002-0092(“The Complainant’s trademark has a strong reputation and is widely known”); Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022(“the mark MICHELIN is a ‘famous’ trademark”); and Compagnie Générale des Etablissements Michelin v. Domains By Proxy, LLC, Registration Private / Carolina Rodrigues, Fundacion Complainant’s MICHELIN trademark to be well known”). Further, a gap of several years between registration of a complainant’s trademark and a respondent’s registration of a disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case Comercio Electronico.,WIPO Case No. D2020-0226 (“the Panel recognises the No. D2007-1415). In the present case, the Respondent registered the Disputed Domain Names decades after the Complainant first established trademark rights in the MICHELIN mark. In view of the composition of the Disputed Domain Names, the Panel finds it highly probable that the Respondent knew of the Complainant’s trademark, and had it in mind at the time of registration. On the issue of use, the uncontested evidence is that the Disputed Domain Names are passively held, which does not prevent a finding of bad faith (see: Telstra Corporation Limited v. Nuclear Marshmallows, supra and Compagnie Générale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, supra. More specifically, the evidence is that the Disputed Domain Names each resolve to webpages unconnected with any bona fide supply of goods or services by the Respondent. WIPO Overview 3.0, section 3.3 sets out a non-exhaustive list of factors that have been considered by previous UDRP panels as relevant – having regard to the totality of the circumstances in each case – in determining whether the non-use of a domain name may constitute a finding of bad faith include: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” At leaset three of these factors, items (i), (ii), and (iv), are present in this case. This Panel therefore finds that the conduct amounts to bad faith. In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s well-known trademark MICHELIN and incorporated it in the Disputed Domain Names, without the Complainant’s consent or authorization, with an intention to disrupt the business of the Complainant. Accordingly, the Panel finds that the Respondent has registered and used the Disputed Domain Names in bad faith, and the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Names Nicholas Weston
Sole Panelist
Date: July 10, 2020
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