The Complainant is Compagnie Générale des Etablissements Michelin, of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Christian Viola, of Woldingham, Surrey, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with Domainbox Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2014. On December 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2015.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on February 4, 2015. 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 the registered owner of numerous trademark registrations for the term “MICHELIN” throughout the world, in particular Community trademark number 004836359 (word), registered on March 3, 2008 for goods and services in numerous classes, including goods in class 12 (amongst others “tyres of all kinds”) and in class 16 (amongst others “publications of all kinds” and “tourist guides”).
The disputed domain name has been registered on October 25, 2011. 5. Parties’ Contentions A. Complainant
It results from the Complainant’s undisputed allegations that the Complainant is present all over the world and in particular also in the United Kingdom, where the Respondent is located. In the United Kingdom, the Michelin Tyre Company Ltd was incorporated on May 11, 1905 and is currently involved in many activities such as tiyre making, training, economic development, and publishing.
The Complainant further evidences that Michelin Guides have been offering restaurant and hotel recommendations throughout Europe for more than a century.
The Complainant contends that the disputed domain name is confusingly similar to its trademark MICHELIN since it reproduces that mark in its entirety with the addition of term “guide”, which is a generic reference to the Complainant’s Michelin Guide. According to the Complainant, the addition of this generic term even increases the risk of confusion, as it directly relates to the Michelin tourist and food guides, published yearly.
It further results from the Complainant’s contentions that the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the MICHELIN trademarks preceded the registration of the disputed domain name for years. Moreover, the Respondent is neither commonly known by the name Michelin, nor in any way affiliated with the Complainant, nor authorized or licensed to use the MICHELIN trademark, or to seek registration of any domain name incorporating said trademark. Finally, the Respondent did not demonstrate use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the disputed domain name resolves to a parking page displaying commercial links, and some of them are related to cartographic and/or automotive products and/or services, including maps, guides as well as tires, amongst others those of the Complainant’s competitors.
Finally, the Complainant contends that the Respondent registered and used the disputed domain name in bad faith. In light of the reputation of the Complainant’s MICHELIN trademark, the Respondent’s reproduction of the trademark in its entirety in the disputed domain name proves that it was aware of the existence of the Complainant’s trademark when registering the disputed domain name. In addition, the Complainant alleges that the Respondent’s primary motive for registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainants’ trademark rights, through pay-per-click (“PPC”)links displayed on the website displayed under the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint 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”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) The disputed domain name is 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 interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademarks for the word “Michelin” in particular of Community trademark number 004836359, registered on March 3, 2008. This Community trademark predates the creation date of the disputed domain name.
The disputed domain name contains the Complainant’s registered trademark MICHELIN as its distinctive element, in combination with the merely descriptive term “guide” which directly refers to the Complainant’s “Michelin Guide”. Many Panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102).
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
Based on the evidence provided by the Complainant, the Respondent is displaying a website under its disputed domain name, which contains links leading – amongst others – to products directly competing with the Complainant’s products and through which it generates PPC revenues. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy.
Finally, the Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
The Complainant has established that its trademarks have existed for a long time and that it has been active in the sector of tyre making and publishing the Michelin tourist and food guides for more than a century in particular also in the United Kingdom. Therefore, this Panel shares the view that the Respondent knew or should have known that the disputed domain name included the Complainant’s MICHELIN trademark when registering the disputed domain name. It further results from the evidence provided by the Complainant that the website available under the disputed domain name is currently displaying PPC links leading amongst others to products directly competing with the products offered by the Complainant. Under these circumstances, this Panel is satisfied that the Respondent is deliberately taking undue advantage of the Complainant’s trademark to generate own profits. In the Panel’s view, this behaviour is evidence of the Respondent’s intentional attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of this website or of a product or service on his website, and therefore evidence of the disputed domain name’s registration and use in bad faith.
It is for these reasons that the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
The Complainant has thus established all three elements necessary under paragraph 4(a) of the Policy in order to obtain an order that the disputed domain name should be transferred. 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 be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: February 18, 2015
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