The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Hiroyasu Usami, Japan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. On September 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2020, 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 September 30, 2020 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 October 2, 2020. On September 30, 2020, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On September 30, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 in English and Japanese of the Complaint, and the proceedings commenced on October 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2020. The Center appointed Keiji Kondo as the sole panelist in this matter on December 12, 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 tire company headquartered in Clermont-Ferrand, France. The Complainant is present in more than 170 countries, having 112,300 employees and operating 68 production plants in 17 different countries, including Japan. The Complainant publishes a guidebook called Michelin Guide. The Complainant published “Michelin Guide Tokyo 2008”, the first Michelin Guide in Asia, in November 2007. Since the first edition in 1900, the Michelin Guide’s mission has been to be a traveling companion for the readers. The Michelin Guide introduces carefully selected hotels and restaurants, from traditional inns to state-of-the-art hotels, French cuisine to taverns, offering the best accommodation and dining options. The Complainant uses the Michelin Man as its brand logo. The Michelin Man is also known as “Bibendum”. The Michelin Man is recognized as a brand ambassador, or an emblematic brand icon. The Complainant owns a number of BIBENDUM trademark registrations around the world. The Complainant is in particular the owner of the following trademark registrations: - International trademark BIBENDUM No. 709584 registered on March 18, 1999 and covering goods in class 25; The disputed domain name, The disputed domain name is identical to the Complainant’s trademark BIBENDUM. In many UDRP decisions, panels considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to Complainant’s registered trademark (L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang,WIPO Case No. D2011-1627, Rapidshare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin,WIPO Case No. D2010-1059and The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc,WIPO Case No. D2000-0113). Accordingly, by registering the disputed domain name, the Respondent created a likelihood of confusion with the Complainant’s trademark. The extension “.work” is not to be taken into consideration when assessing the confusing similarity between the disputed domain names and the Complainant’s trademark. Prior UDRP panels have mentioned that this new generic Top-Level Domain (“gTLD”) is of “general application and has no particular distinctive meaning of its own. Further, generic meaning gTLDs are usually not taken into account for the purposes of determining confusing similarity under the Policy” (Volkswagen AG v. Fawzi Sood,WIPO Case No. D2015-1483). For all of the above mentioned reasons, the disputed domain name is identical or confusingly similar to the Complainant’s trademark BIBENDUM, in which the Complainant has rights. Therefore, the condition of paragraph 4(a)(i) of the Policy is fulfilled. The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to use and register the Complainant’s trademark. The Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the BIBENDUM trademark preceded the registration of the disputed domain name for years. The Respondent is not commonly known by the disputed domain name or the name Bibendum. There is no evidence that the Respondent may be commonly known by name Bibendum. In previous decisions, UDRP panels found that in the absence of any license or permission from the Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Groupe Auchan v. Gan Yu,WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). Moreover, the disputed domain name in this case is so identical to the Complainant’s trademark “BIBENDUM” that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. Besides, the disputed domain name resolves to an inactive page. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. It is most likely to be believed that the Respondent has no rights or legitimate interests in the disputed domain name. For all of the above-cited reasons, it is undoubtedly established that the Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy. It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. Bad faith can be found where a respondent “knew or should have known” of the complainant’s trademark rights and, nevertheless registered a domain name in which he had no rights or legitimate interest (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). Firstly, the Complainant is well-known throughout the world including Japan – where the Respondent is located. Secondly, as the composition of the disputed domain name entirely reproduces the Complainant’s trademark BIBENDUM, it cannot be inferred that the Respondent was unaware of the Complainant when he registered the disputed domain name. Indeed, Bibendum, who is widely-known as the “Michelin Man” not only in France but also in other countries, has been the face of the MICHELIN brand. In addition, as will be discussed below, the Respondent does not make any use of the disputed domain name presently since the disputed domain name is inactive. This demonstrates a lack of legitimate interests regarding the disputed domain name, and suggests evident bad faith behind the registration. Furthermore, the Respondent, in his email dated March 9, 2020, mentioned that he knows BIBENDUM comes from the Michelin’s mascot, and that he loves and respects it. In view of the above mentioned circumstances, there is no doubt concerning the Respondent’s knowledge of the existence of the Complainant, its trademark and activities at the time of the registration of the disputed domain name Under paragraph 2 of the Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. This means that it was a registrant’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering said domain name (Compagnie Gervais Danone contre Gueorgui Dimitrov / NETART,WIPO Case No. D2009-0901; Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397). Previous UDRP panels have established that knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration (Alstom v. Domain Investments LLC,WIPO Case No. D2008-0287; NBC Universal Inc. v. Szk.com,WIPO Case No. D2007-0077). Some elements may be put forward to support the finding that the Respondent also uses the disputed domain name in bad faith. Previous UDRP panels have considered that in the absence of any license or permission from the Complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Alstom, Bouygues v. Webmaster,WIPO Case No. D2008-0281; Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055). As the disputed domain name is identical to the Complainant’s trademark, previous UDRP panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to the Respondent’s site” (MasterCard International Incorporated (“MasterCard”) v. Wavepass AS,WIPO Case No. D2012-1765; Edmunds.com, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095). The disputed domain name Previous UDRP panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy, and that in such cases the panel must give close attention to all the circumstances of respondent’s behavior (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In Telstra Corporation Limited v. Nuclear Marshmallows, the panel concluded that the respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) of the Policy that the domain name was being used in bad faith by the respondent because: (1) the complainant’s trademark had a strong reputation and was widely known; (2) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) the respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) the respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement. Similarly, reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith. Moreover, email server has been configured on the disputed domain name and thus, there might be a risk that the Respondent is engaged in a phishing scheme. Therefore, the use of an email address with the disputed domain name presents a significant risk where the Respondent could aim at stealing valuable information such as credit cards from the Complainant’s clients or employees. Such risk has been recognized by prior UDRP panels (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org/Yogesh Bhardwaj,WIPO Case No. D2017-1225). Finally, it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name. According to prior UDRP panels, this type of conduct constitutes evidence of a respondent’s bad faith (L’oreal v. Chenxiansheng,WIPO Case No. D2009-0242). All aforementioned circumstances confirm that the disputed domain name is used in bad faith. Consequently, it is established 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 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The Registrar has confirmed that the language of the registration agreement is Japanese, but the Complaint has been submitted in English. On September 30, 2020, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On September 30, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding: - the Complaint was filed in English; The disputed domain name consists of “bibendum” and “.work”, which is a new gTLD. The part “bibendum” is identical to the Complainant’s trademark BIBENDUM. The new gTLD is of general application and has no particular distinctive meaning of its own. Further, gTLDs are usually not taken into account for the purposes of determining confusing similarity under the Policy. For all of the above mentioned reasons, the disputed domain name is identical to the Complainant’s trademark BIBENDUM. Therefore, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to use and register the Complainant’s trademark. The Respondent is an individual and neither his given name nor family name resembles “bibendum”. The Respondent candidly admits in his pre-Complaint communication with the Complaint that he knew that “Bibendum” came from the Michelin Tyre Man, and he chose the disputed domain name because he loved and respected “Bibendum”. Therefore, it is obvious that the Respondent has not been commonly known by the name “Bibendum”. The Respondent, in his communication with the Complainant, contends that he uses the disputed domain name for personal use, and does not intend any harm to the Complainant. However, there is no evidence on the record that he uses the disputed domain name in connection with a bona fide offering of goods or services, or makes a noncommercial or fair use of the disputed domain name. In addition, and without prejudice to the above, the nature of the disputed domain name, being identical to the Complainant’s trademark, carries a high risk of implied affiliation. For all of the above mentioned reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith As mentioned above, the Respondent admits that he chose the disputed domain name with the knowledge that “Bibendum” came from the Complainant’s mascot Michelin Tyre Man. Therefore, the Panel finds that the disputed domain name was registered in bad faith. The Respondent’s contention that he did not intend any harm to the Complainant does not affect this conclusion. The Respondent contends in his pre-Complaint communication with the Complainant that he uses the disputed domain name as a Uniform Resource Locator (“URL”) for his classroom server at his university and so on. Although he contends that he does not intend any harm to the Complainant, he refused to transfer the disputed domain name to the Complainant free of charge. As mentioned above, the Respondent obtained the registration of the disputed domain name in bad faith. Now the Respondent continues use of the disputed domain name with the knowledge that the Complainant has proprietary rights in BIBENDUM. Under the circumstances, this is regarded as a use in bad faith. For the above mentioned reasons the Panel finds that the disputed domain name has been registered and is being used in bad faith within the meaning 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 name Keiji Kondo
- International trademark BIBENDUM No. 326563 registered on November 18, 1966 duly renewed and covering goods in classes 06, 07, 08, 09, 10, 11, 12, 16, 17, 21, 22, 24, 25, 26, 27, 28, and 34;
- Japanese trademark BIBENDUM No. 4723034 registered on October 31, 2003 and covering goods in classes 6, 9, 11, 14, 16, 18, 21, and 24; and
- Japanese trademark BIBENDUM No. 4749702 registered on February 20, 2004 and covering goods in class 25.
- the Complainant is a French entity, and represented by a French firm;
- the Respondent’s address is in Japan, but the Respondent communicated with the Complainant in English before the Complaint was formerly filed;
- the Respondent did not comment on the language of the proceeding;
- the Respondent did not reply to the Complainant’s contentions in any way;
- the disputed domain name is spelled in Roman characters (ASCII) and not in Japanese script; and
- ordering the translation of the Complaint would only result in extra delay and cost for the Complainant. 6.2. Substantive Issues A. Identical or Confusingly Similar
Sole Panelist
Date: December 26, 2020
Full & Egal Universal Law Academy