The Complainant is Compagnie Générale Des Etablissements Michelin, France, represented by Tmark Conseils, France.
The Respondent is Richard Geist, Armynavydeals.com Corp./Unc Sam, United States of America. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2020. On December 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 21, 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 December 22, 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 December 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2021. Between January 19 and February 1, 2021 the Respondent (and also the Complainant) sent a number of emails to the Center. These are summarized below. The Response due date was extended to January 23, 2021 and further to January 28, 2021 further to the Respondent’s request. On February 3, 2021, the Center informed the Parties that it would proceed to Panel Appointment. The Center appointed Antony Gold as the sole panelist in this matter on February 19, 2021. 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’s predecessor company was established over 100 years ago and the Complainant itself was established in 1955. Its activities include the design, manufacture and sale of tyres for a wide variety of vehicles, as well as the publication of maps, guides, and atlases. Its publications include the well-known Michelin Guide to restaurants which, since 1926, has used a star system when grading the top tiers of the restaurants it reviews. The Michelin Guide now rates over 30,000 establishments in more than 30 territories. Over 30 million copies of the guide have been sold to date and it is also available online. The Complainant has registered many trade marks worldwide to protect its MICHELIN trading style. These include, by way of example only, European Union Trade Mark, registration number 013558366, for MICHELIN in classes 9, 35, 38, 39, 41, and 42, registered on April 17, 2015. The disputed domain names were registered on August 7, 2020. None of the disputed domain names resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant refers to its portfolio of MICHELIN trade marks, full details of one of these marks having been set out above, and says that the disputed domain names are identical or confusingly similar to a trade mark in which it has rights. Each of the disputed domain names reproduces in full the Complainant’s MICHELIN mark and the generic Top Level Domain (“gTLD”), whether “.kitchen”, “.club” or “.com”, does not eliminate the identicality or confusing similarity between the Complainant’s mark and the disputed domain names. Moreover, each of the disputed domain names reproduces the Complainant’s well-known mark in combination with the word “star”, which reflects the star system used by the Complainant for many years when publishing its evaluations of restaurants it has reviewed. The addition of the definite article “the” in the second, third, and fourth disputed domain names has no impact on the assessment of confusion as it does not alter the fundamental character of these disputed domain names. The Complainant asserts also that the Respondent has no rights or interests in respect of the disputed domain names. It is sufficient for a complainant to show a prima facie case that a respondent lacks rights or legitimate interests in a domain name in order to shift the burden of production to the respondent. If the respondent fails to satisfy the burden, the complainant is deemed to have satisfied the second element. The Complainant has established its prior rights in the MICHELIN mark. It has not authorized the Respondent to identify itself to the public as “michelin” or “michelin star” in a domain name. There does not appear to be any legitimate reason why the Respondent would incorporate the Complainant’s well-known mark in the disputed domain names. Lastly, the Complainant says that the disputed domain names were registered and are being used in bad faith. Having regard to the extensive protection obtained for the Complainant’s MICHELIN mark and its widespread use worldwide, there is no possibility that the Respondent registered the disputed domain names by coincidence. The Respondent was inevitably aware of the Complainant’s prior rights because a simple Internet search would have revealed the existence of the Complainant’s long-term activities under its MICHELIN mark. There is no credible explanation behind the Respondent’s registration of the disputed domain names other than that the Respondent registered them in order to mislead Internet users and create a likelihood of confusion with the Complainant. It is likely that the Respondent registered the disputed domain names to prevent the Complainant from using its trade mark in these domain names. The registrations must have been made for the purpose of diverting Internet traffic from the Complainant’s website to that of the Respondent, thus disrupting the Complainant’s business. The disputed domain names are also being used in bad faith. Whilst none of them resolve to an active website, in view of the notoriety and distinctiveness of the Complainant’s MICHELIN mark, the Respondent cannot put the disputed domain names to any legitimate use and their registration evidences the Respondent’s intent to seek unjust benefit from them, possibly via a sale. The fact that the disputed domain names do not resolve to an active website does not preclude a finding of bad faith under the doctrine of passive holding; see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Finally, an email server has been configured on each of the disputed domain names and there is a risk that the Respondent has engaged, or is intending to engage, in a phishing scheme whereby the Respondent could steal valuable information from the Complainant’s customers or employees. This is a further indication of bad faith. B. Respondent Whilst the Respondent did not serve a formal response, it sent a number of emails to the Center between January 19 and January 27, 2021. The Panel proposes to treat them as its informal response to the Complaint and sets out relevant extracts below. In one of its emails, dated January 19, 2021, the Respondent asserted that “we are using these four domain names and have every right to use them, as we own businesses, trademarks, service marks and established restaurants that have used these and related names for years”. The Respondent sought additional time to serve a response, but said that it was interested in a “win win” outcome. A further email from the Respondent to the Center, dated January 22, 2021 sought additional time for service of a response but explained that “We were not looking to hurt anyone and just looking for a small settlement that would let our ownership feel morally obligated to transfer the domains”. On January 22, the Complainant’s representative sent an email to the Center explaining that the Complainant had rejected an offer from the Respondent to transfer the disputed domain names to the Complainant at a price of USD 1,000 per disputed domain name. On January 27, 2021 the Respondent sent a further email to the Center explaining that it had mistakenly not appreciated that a third party trade mark for MICHELIN LAND, on which it had evidently intended to rely in some manner, was, in fact, a pending application rather than a granted mark. The Respondent said: “Please instruct us where to transfer the four domains and we apologize for any misunderstandings as we truly thought we had every right to purchase these domain names when we did”. The Respondent then reduced the asking price for the disputed domain names to USD 100 per disputed domain name. On February 1, this offer was rejected by the Complainant. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint: (i) the disputed domain names are identical or confusingly similar to a trade mark 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 names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The information provided by the Complainant in relation to its trade mark registrations for MICHELIN, including the marks in respect of which full details are provided above, establish its rights in this trade mark. For the purpose of determining whether the disputed domain names are identical or confusingly similar to its mark, the respective gTLD’s, that is “.com”, “.kitchen” and “.club”, are disregarded as they are technical requirements of registration. Each disputed domain name comprises the Complainant’s MICHELIN mark in full, coupled with the suffix “star”. In the case of the second, third and fourth disputed domain names, the indefinite article “the” has also been added as prefix. The addition of these terms does not impact on an assessment of whether the disputed domain names are confusingly similar to the Complainant’s trade mark. As explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Complainant’s MICHELIN trade mark is clearly recognizable within each of the disputed domain names and the Panel accordingly finds that the disputed domain names are confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name. Dealing with each issue in turn, the inactive status of the disputed domain names does not comprise use of them in connection with a bona fide offering of goods and services. It would seem from the summary of the Respondent’s emails to the Center set out above that the Respondent ultimately acknowledged that it had not been entitled to register the disputed domain names. But, in any event, the Respondent has not provided any evidence to support its claim that it owns “businesses, trademarks, service marks and established restaurants that have used these and related names for years”. As explained at section 2.2 of the WIPO Overview 3.0, a respondent seeking to demonstrate that it is using a domain name in connection with a bona fide offering of goods and services needs to show “clear contemporaneous evidence of bona fide pre-complaint preparations”. The Respondent has failed to do this. The second and third circumstances under paragraph 4(c) of the Policy are also inapplicable; there is no evidence that the Respondent is commonly known by any of the disputed domain names and their inactive status does not amount to a legitimate noncommercial or fair use of them. Furthermore, as the disputed domain names couple the Complainant’s MICHELIN mark with a word, “star”, which is closely associated with its Michelin Guide, Internet users will be prone to assume they are connected in some way with the Complainant’s activities. Moreover, where a domain name consists of a trademark used in combination with an additional term this would not generally be considered capable of amounting to fair use if the combination (as here) effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See, by way of example, The Royal Edinburgh Military Tattoo Limited v. Identity Protection Service, Identity Protect Limited / Martin Clegg, WM Holdings,WIPO Case No. D2016-2290. The Complainant has made out a prima facie case under the second element and the burden of production accordingly shifts to the Respondent. The bare assertion by the Respondent that it required the disputed domain names for its businesses is insufficient to discharge that burden and the Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names. C. Registered and Used in Bad Faith The Complainant’s MICHELIN trade mark is inherently distinctive. The registration by the Respondent of the disputed domain names, which will inevitably be perceived as associated with the Complaint’s Michelin Guide for the reasons outlined above, points to an awareness by the Respondent of the Complainant and its business as at the date of registration. Moreover, as explained at section 3.1.4 of the WIPO Overview 3.0 “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. The fact that the disputed domain names are inactive does not preclude a finding of bad faith under the doctrine of passive holding. As first considered in Telstra (supra) factors that have been considered relevant in applying the passive holding doctrine 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 and (iv) the implausibility of any good faith use to which the domain name may be put. Applying these factors to the current circumstances; (i) the Complainant’s mark is distinctive and well-known (ii) the Respondent has, in a fashion, responded to the Complaint, although its contentions that it actively requires the domain names in connection with its businesses are not accepted; (iii) the Respondent has sought to conceal its identify through use of a privacy service; and (iv) having regard to the characteristics of the disputed domain names, as outlined earlier, it is impossible to think of any good faith use to which they could be put. In these circumstances, the Respondent’s passive holding of the disputed domain names amounts to bad faith registration and use of them. In fact, the email exchanges outlined earlier suggest that the most likely explanation for the Respondent’s registration of the disputed domain names is that it hoped to sell them to the Complainant. Accordingly, its requests for a sum in excess of its out of pocket costs of registration in return for a transfer to the Complainant of the disputed domain names fall within the circumstances of bad faith registration and use set out at paragraph 4(b)(i) of the Policy. See also Virgin Enterprises Limited v. Cesar Alvarez,WIPO Case No. D2016-2140. 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, Antony Gold
Sole Panelist
Date: March 5, 2021
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