The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Tmark Conseils, France.
The Respondent is Boost Organix, Boost OrganiX limited, United Kingdom.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2021. On September 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 21, 2021, 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 September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2021. The Respondent did not submit any formal response. Accordingly, the Center started the Commencement of Panel Appointment Process to the parties on November 15, 2021.
On October 10, 2021, the Respondent sent an informal communication to the Center of which the Center acknowledged receipt. The Complainant requested the suspension of the proceeding on October 11, 2021 to allow settlement discussions, and the Center notified the Suspension on the same day. However, the Parties could not settle their dispute and the Complainant requested the Reinstitution of Proceeding on November 10, 2021. The Center reminded the Parties of the Response due date (i.e. November 12, 2021).
The Respondent sent another informal communication on November 15, 2021 of which the Center acknowledged receipt.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on November 29, 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 BackgroundThe Complainant is a corporation organized under the laws of France that operates a business with a presence in many countries selling tires. The Complainant is also famous for its annual MICHELIN Guide. It began publishing the travel guide in Europe in 1900 to encourage new drivers to take road trips to local attractions. Among other things, the guide included anonymous restaurant reviews that focused on the quality and flavour of food served, as well as mastery of culinary technique and personality of the dishes. MICHELIN star is a rating system used by the Complainant since 1926 to grade restaurants on their quality. The guide now rates over 30,000 establishments in over 30 territories across the world and more than 30 million MICHELIN guides have been sold worldwide since.
The Complainant is the holder of the following trademarks that cover products and services relating to the field of manufacturing and sale of tires:
- United States registration for the word mark MICHELIN No. 72329256 filed on June 5, 1969, and registered on June 2, 1970;
- International trademark registration MICHELIN No. 816915 registered on August 27, 2003;
- European trademark registration MICHELIN No. 004836359 filed on January 4, 2006, and registered on March 13, 2008.
The following trademarks cover products and services relating to tourism, restaurants and gastronomy and in particular “multimedia publications in electronic form available online from databases in the field of travel, tourism and gastronomy or for services of editing and publication of guides”.
- International trademark registration MICHELIN No. 1245891 registered on December 10, 2014;
- United States registration for the word mark MICHELIN No. 73539925 filed on May 28, 1985, and registered on July 1, 1986;
- European trademark registration MICHELIN No. 013558366 filed on December 12, 2014, and registered on April 17, 2015;
- United Kingdom trademark registration MICHELIN No. UK00913558366 filed on December 12, 2014, and registered on April 17, 2015.
The Complainant registered and used various domain names incorporating the mark MICHELIN such as, among others
According to the Registrar’s WhoIs records both disputed domain names were registered on December 11, 2020 and both disputed domain names do not resolve to active websites and show error messages.
5. Parties’ Contentions A. ComplainantThe Complainant alleges that the disputed domain names reproduce identically its MICHELIN trademark in addition to generic Top-Level-Domain (“gTLD”) and are therefore confusingly similar. The terms “chefs” and “star” directly refer to the activities of the trademark MICHELIN in the context of the famous guide. Therefore, Internet users are, inter alia, likely to wrongly identify the disputed domain names as the Complainant’s ones.
The Complainant furthermore alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy. The Complainant is the sole legitimate owner of trademarks, corporate names and domain names made of/including MICHELIN. It has not authorized the Respondent’s use of the protected name “Michelin”. There appears to be no legitimate reason why the Respondent would incorporate the mark, which is not a generic term, but a highly distinctive and famous mark. Merely taking commercial advantage of the Complainant’s rights seems to be the only conclusive explanation.
The Complainant contends it is inevitable that the Respondent was aware of the MICHELIN mark due to its strong presence all over the world. The combination with the terms “chefs” and “star”, which clearly refer to the Complainant’s mark, shows additionally proof for the Respondent’s bad faith registration. Although the disputed domain names do not resolve to active websites, the circumstances as a whole suggest that the passive holding is in bad faith. Those circumstances are in particular the knowledge of the Complainant’s mark, using a privacy service and holding two disputed domain names that refer to the Complainant’s business. Additionally, the Respondent has configured mail servers under the disputed domain names and may intend a phishing scheme.
The Complainant requests that the disputed domain names are transferred from the Respondent to the Complainant.
B. RespondentThe Respondent sent informal messages to the Center but did not reply on the merits to the Complainant’s contentions in its communications.
6. Discussion and FindingsParagraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Panels have typically treated a respondent’s submission of a so-called “informal response” (merely making unsupported conclusory statements and/or failing to specifically address the case merits as they relate to the three UDRP elements, e.g., simply asserting that the case “has no merit” and demanding that it be dismissed) similar to a respondent’s default. It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The same is valid in case of “informal responses”.
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain names are both confusingly similar to the Complainant’s MICHELIN mark, in which the Complainant has established rights through registration and use.
The disputed domain names incorporate the entirety of the Complainant’s mark MICHELIN followed by the terms “star” and “chefs” as well as a gTLD (“.shop” in one case and “.store” in the other).
Section 1.8 of the WIPO Overview 3.0, reads: “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 nature of such additional term(s) may however bear on assessment of the second and third elements.” Both added terms have to qualified as descriptive.
Furthermore, gTLDs are generally disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD (see section 1.11 of the WIPO Overview 3.0).
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a Respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the Respondent. As such, where a complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
The Panel notes that the Respondent has only filed informal communications and thus did not deny the Complainant’s assertions, nor has it brought any information or evidence for demonstrating any rights or legitimate interests.
The Complainant makes its prima facie case by demonstrating without contradiction that it has not authorized the Respondent to use its marks and that the Respondent has not been commonly known by the disputed domain names.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Complainant’s mark MICHELIN is based on a French company’s founder’s name. The company itself as well as the star guide have become worldwide known, which the Complainant was able to prove. Furthermore, the Complainant proves its extensive and long-standing registered rights inter alia in form of trademarks and registered domain names, which have a strong online presence. It is therefore very unlikely that the Respondent had no knowledge of the trademarks at the moment of registration of the disputed domain names. The fact that the added terms “star” and “chefs” are a direct reference to the Complainant’s use of the trademarks increases this impression even more and indicate that a confusion was exactly the intention of the Respondent. Even the selected gTLDs represent a reference to a business in relation to the Complainant’s MICHELIN mark.
The Panel therefore finds that the disputed domain names were registered in bad faith.
At the time of the filing of the Complaint and at the moment of this decision both disputed domain names do not resolve to active websites. Section 3.3 of the WIPO Overview 3.0 states that “that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, 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 (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.
All the factors listed in the citied section are fulfilled in this case. MICHELIN is a mark with high distinctiveness and widespread reputation, there was no substantive answer by the Respondent despite sufficient opportunity while at the same time attempting to conceal his identity by using a proxy service, and the references to the Complainanant’s business already mentioned in this decision hardly allow any other conclusion than that an attempted confusion of Internet users was the intention of the Respondent.
Another factor is that although none of the disputed domain names resolve to an active website, both disputed domain names have been configurated in connection with an email server. An email server disguised with a confusingly similar domain name can be a potential risk as well (“There is evidence in the Complaint that an email server has been configurated on the disputed domain names with a real risk that the Respondent may be engaged in a phishing scheme, aiming to deceive Internet users to believe they were dealing with the Complainant” 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). This risk is to be affirmed in this case for both disputed domain names, as restaurants, chefs and customers could mistake emails being sent from the Complainant.
In the overall view, the Panel considers that the Respondent registered and is using the disputed domain names in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Christian Gassauer-Fleissner
Sole Panelist
Date: December 14. 2021