The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Louis Chan, Macao, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2020. On October 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 7, 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 9, 2020. 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 October 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2020. The Center appointed Ellen B Shankman as the sole panelist in this matter on November 9, 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 According to the WhoIs information, the date of the Domain Name registration was March 30, 2020. The trademark MICHELIN serves as house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions world-wide. The Complainant owns, inter alia, trademark registration in Macao, China, MICHELIN No. 110951, registered on September 26, 2016, and covering services in class 43, as well as trademark MICHELIN with logo No. 110693, registered on September 26, 2016, and covering goods in class 16. In addition, the Complainant operates, among others, the following domain names reflecting its trademark in order to promote its services: - The Complainant has provided evidence that the Michelin trademark has also had extensive coverage and use. The trademark predates the date of the Domain Name registration for a very broad variety of goods and services in the travel industry. The Panel also conducted an independent search to determine that the Domain Name resolves to a parking page with links to advertisements and hotel reservations, which appear to be ‘pay-per-click’. Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties’ Contentions A. Complainant The Complainant is Compagnie Générale des Etablissements Michelin (“Michelin”), a leading tire company, which is dedicated to enhancing its clients’ mobility, sustainably, designing and distributing the most suitable tires, services and solutions for its clients’ needs, providing digital services, maps and guides to help enrich trips and travels and make them unique experiences, and developing high-technology materials that serve the mobility industry. Headquartered in Clermont-Ferrand, France, Michelin is present in 171 countries, has more than 114,000 employees and operates 69 tire manufacturing facilities and sales agencies in 17 countries. The Michelin Guide was first launched in 1920 in order to help motorists plan their trips – thereby boosting car sales and in turn, tire purchases. In 1926, the guide began to award stars for fine dining establishments, initially marking them only with a single star. Five years later, a hierarchy of zero, one, two, and three stars was introduced, and in 1936, the criteria for the starred rankings were published. For the first time, the Michelin Guide included a list of hotels in Paris, lists of restaurants according to specific categories, as well as the abandonment of paid-for advertisements in the guide. During the rest of 20th century, thanks to its serious and unique approach, the Michelin Guides became best-sellers without equals: the guide now rates over 30,000 establishments in over 30 territories across three continents, and more than 30 million Michelin Guides have been sold worldwide. In 2001, ViaMichelin was set up to develop digital services for travel assistance. These free services give users all the useful information they need to prepare their trips. Digital services were developed in the 2010, with the launch of the Michelin Restaurants website in 2012, and of the Michelin Mobility Apps in 2013. This package of six free apps met the needs of travelers in all their travels: Michelin MyCar, Michelin Navigation, ViaMichelin, Michelin Restaurants, Michelin Hotels and Michelin Travel. The Complaint alleges that when it became aware of the Respondent’s registration of the Domain Name which entirely reproduces its well-known trademark MICHELIN associated with the term “hotel”, and which points to a parking page whose commercial links are targeting the Complainant’s field of activity, the Complainant attempted to resolve this matter amicably, to no avail. The Domain Name is confusingly similar to the Complainant’s trademark, and the adjunction of the term “hotel” is insufficient to avoid confusing similarity between the Domain Name and the Complainant’s trademark. On the contrary, the full inclusion of the Complainant’s trademark MICHELIN in the Domain Name, in combination with the term “hotel” enhances the false impression that the Domain Name is somehow officially related to the Complainant. Indeed, the Domain Name is likely to confuse Internet users into believing that the Domain Name will direct them to the website endorsed by the Complainant in order to promote its hospitality services, or is in some way associated with the Complainant. In addition, the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark. Furthermore, the Respondent cannot claim prior rights or legitimate interests in the domain name, as the MICHELIN trademark precedes the registration of the Domain Name for years. Likewise, the Domain Name directs Internet users to a parking page with pay-per-click links which are likely to generate revenues. Hence, as a matter of fact, it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. The Complaint further argues that bad faith can be found where the 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 interests. It is implausible that the Respondent was unaware of the Complainant when he registered the Domain Name. The composition of the Domain Name which entirely reproduces the Complainant’s trademark MICHELIN and associates it to the generic term “hotel”, thus making reference to our client’s activity through its Michelin guide confirms that the Respondent was aware of the Complainant and its trademark thus suggesting opportunistic bad faith. The Respondent uses the Domain Name to direct Internet users to a webpage displaying commercial links related to the Complainant’s activity, including the hospitality service, which is additional proof of registration and use in bad faith. Further the Complainant asserts that the Respondent has constructive notice of the rights of the Complainant in the MICHELIN trademark because of the latter’s widespread use, registrations and reputation of the mark. The Complainant asserts that there cannot be any doubt that the Respondent was aware of the reputation of the Complainant in the trademark MICHELIN prior to the registration of the Domain Name. That the Respondent did not reply to the cease-and-desist letter and reminders, as well as hiding his identity after receipt of the letter, should be considered as additional inference of bad faith. To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark MICHELIN, in respect of a very broad range of travel goods and services, including hotels. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the word “hotel” adds to the confusion as the Complainant is in that field of activity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, and constitutes opportunistic bad faith registration and use. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) That the Domain Name has been registered and used in bad faith The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for MICHELIN. The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of term “hotel” to the Domain Name does not change the fact that the trademark of the Complainant is recognizable. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.” See also, Statoil ASA v. Magne Espelund,WIPO Case No. D2003-0097: “The addition of a generic term to a famous mark is not sufficient to give the domain names an individual meaning and prevent the overall impression that the domain names have some sort of connection with Complainant (seeWIPO Case No. D2001-0331). The same view must prevail in the present case, where the suffix “gas” constitutes a generic word with no distinctiveness. As Complainant and its trademark is widely known for conducting business with gas, said suffix is rather fitted to strengthen the impression that the domain names belongs to, or is affiliated with Complainant.” Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the Respondent to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name Furthermore, the composition of the disputed domain name, consisting of the Complainant’s well-known trademark with an additional term, cannot constitute fair use in these circumstances as it carries a risk of implied affiliation or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. Therefore, the Panel finds that the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is persuaded by the Complainant’s arguments that the Respondent’s Domain Name is targeted to similar services to Internet users, and thus, the Respondent intentionally attempts to attract Internet users for commercial gain. The addition of the term “hotel” only increases the risk of confusion and the probability is that they were meant to confuse Internet users as to source or affiliation. The Panel considers that the Complainant’s mark is well-known and this finding is consistent with previous UDRP panels (Compagnie Générale des Etablissements Michelin v. World Industrial, LNQ,WIPO Case No. D2019-0553, Compagnie Générale des Etablissements Michelin v. Kanoksak Puangkham,WIPO Case No. D2019-0553, Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios,WIPO Case No. D2017-0234, Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu,WIPO Case No. D2014-1240, Compagnie Générale des Etablissements Michelin (Michelin) v. Zhichao Yang,WIPO Case No. D2013-1418, Compagnie Générale des Etablissements Michelin v. Milan Kovac/Privacy--Protect.org,WIPO Case No. D2012-0634, Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev, WIPO Case No. D2012-0384, Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / Above.com Domain Privacy, WIPO Case No. D2013-0357 and Compagnie Générale des Etablissements Michelin v. Cameron David Jackson, WIPO Case No. D2015-1671). The Panel finds that the registration of the Domain Name based on a well-established marks at the time of registration and the Registrant’s use of the Domain Name to redirect Internet users to the Registrant’s parking page advertising links to hotels lead to a finding of Bad Faith squarely within the meaning of the Policy. The Domain Name was selected in knowledge of the Complainant’s mark and brand, and further the disputed Domain Name was chosen in order to capitalize on Internet traffic intended for the Complainant’s website. It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name or to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. In light of this knowledge, the Respondent uses the Domain Name to direct Internet users to a webpage displaying pay-per-clicks links which are likely to generate revenues. Previous UDRP panels have held that the use of domain names to divert Internet users and to direct them to a webpage providing revenues through click to Respondent evidences bad faith. Indeed, the Respondent is taking undue advantage of Complainant’s trademark to generate profits. The use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith pursuant to the Policy (F Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956, L’Oréal SA v. LV Kefeng,WIPO Case No. D2009-1231 and Alstom v. FM Laughna, WIPO Case No. D2007-1736). Several UDRP panels concurred that “the use of a domain name to point to a website that offers sponsored links to other websites providing services or goods which are similar to those offered by a complainant’s own website is evidence of bad faith” (See Société Nationale des Chemins de Fer Français (SNCF) v. Comdot Internet Services Private Limited./PrivacyProtect.org, WIPO Case No. D2008-0025, and Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS-COM-DOM),WIPO Case No. D2005-0591). In light of the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark MICHELIN and uses it for the purpose of misleading and diverting Internet traffic and to capitalize on any confusion with the Complainant. Further, the Panel finds that the registration of the Domain Name with the use of the privacy registration for supports such inference. This is consistent with Section 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), which states that: “There are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith. In terms of underlying respondent identity, panels treat privacy and proxy services as practical equivalents for purposes of the UDRP, and the fact that such services may be employed to prevent the complainant and panel from knowing the identity of the actual underlying registrant of a domain name does not prevent panel assessment of the UDRP elements. Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference.” In this case, no such inference was refuted by the Respondent. Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under 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 Domain Name, Ellen B Shankman
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Sole Panelist
Date: November 16, 2020
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