The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associes, France.
The Respondent is Saeed Karimi of Tehran, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2011. On April 15, 2011, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On April 18, 2011, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 April 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2011. On May 5, 2011, the Respondent submitted a request for extension to submit his Response. On the same day, the Complainant commented and the Center requested the Respondent to clarify its request. On May 7, 2011, the Respondent sent an email communication in reply to the Center’s request. On May 9, 2011, the Complainant provided the Center with further comments. Accordingly, the Center on the same day informed the Respondent that it did not grant an extension for the Respondent to submit his Response. As the Center did not receive a Response by May 10, 2011, it informed the parties on May 11, 2011, that it would proceed to appoint the administrative Panel.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 18, 2011. 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 French company with shares publicly traded on the Euronext Paris stock exchange and over the counter in New York. It is a world leader in manufacturing automobile tires and other automotive parts and accessories, as well as in producing travel, hotel, and restaurant guides. The Complainant uses its MICHELIN mark in connection with its worldwide sales of these products and operates websites using several domain names that consist of the MICHELIN mark, including , , , and . The Complainant sells its products in Iran and operates a Michelin Machinery subsidiary in Tehran, where the Respondent resides.
Among other trademark registrations, the Complainant owns International Trademark Nos. 348615 (registered July 24, 1968), 492879 (registered May 10, 1985), and 816915 (registered August 27, 2003) for the MICHELIN mark, as well as Iranian Trademarks, including No. 164727 (registered March 3, 2009) for the MICHELIN mark.
The registry’s WhoIs database does not indicate when the Domain Name was created. The Complainant discovered in December 2010 that the Domain Name existed and that it resolved to a website labeled as a “default page” that was “powered by” a domain services and website hosting company, A, which presented a statement that the Domain Name was available for purchase. The page existed in both English and Persian versions, with the same graphics. The Complainant’s representative sent a cease-and-desist letter on December 3, 2010, to Mohammad Ali Moktari, who appeared in the WhoIs database as the registrant of the Domain Name, via email, fax, and registered mail, requesting transfer of the Domain Name. An immediate, apparently automated reply came in the name of Mr. Moktari, who was identified as a “Domain Department Representative” of A, stating that the Complainant’s request was being processed.
A few days later, on December 10, 2010, the Complainant found that the Domain Name registration had been amended to show the Respondent as the registrant, at the same telephone number (apparently a non-working number) and a similar email address. The Complainant’s representative sent a cease-and-desist letter addressed to the Respondent and received, as before, an immediate email reply from Mr. Moktari at A indicating that the request was being processed.
The Complainant received no substantive reply to either of its cease-and-desist letters, but on December 17, 2010, the Complainant discovered that the Domain Name resolved to a single web page displaying only a sentence in English: “My name is Michelin”.
Since at least April 14, 2011, the Domain Name has resolved to a website headed “Michelin Beauty Center”, displaying English-language descriptions of skin care treatments, a tanning bed, and a “meditation room” at a beauty salon in Tehran. A fine-print disclaimer of affiliation with the Complainant appears at the bottom of each page. The Complainant found no other references to “Michelin Beauty Center” through Google search engine queries.
The Complainant attaches copies of screen shots of the web pages successively associated with the Domain Name.
The Respondent did not reply to the Complainant’s letters alleging trademark infringement and demanding transfer of the Domain Name, and the Respondent did not submit a Response in this proceeding. However, following notice of the Complaint, the Respondent sent an email to the Center acknowledging that he is “acting as the Respondent” and requesting an extension for a “minimum” of fifteen days to submit a Response “for some difficulty reasons.” The Complainant objected, and the Center requested further details concerning the grounds for requesting an extension of time. The Respondent asked for more time to collect bank statements, receipts, and correspondence. The Complainant submitted its further objection to these grounds. The Center denied the request for an extension, which Rule 5(d) contemplates only in “exceptional cases” or by written stipulation of the parties. In subsequent correspondence, the Center advised the Respondent that he could nevertheless submit a Response after the filing date and request consideration by the Panel. The Respondent has until this moment not done so. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Name is identical or confusingly similar to its registered MICHELIN mark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent registered and used the Domain Name in bad faith, selecting a Domain Name identical to the Complainant’s famous mark because it could be employed to mislead Internet users for commercial gain and perhaps could be sold for a high price because of that potential. The Complaint contends as well that the Respondent’s conduct after notice of the dispute reflects “cyberflying” to avoid legal or administrative enforcement of the Complainant’s rights. B. Respondent
The Respondent requested more time to prepare a Response, but did not otherwise reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
The Panel notes that this last requirement is disjunctive in the Policy for .ir domain name disputes, unlike the conjunctive requirement under the Uniform Domain Name Dispute Resolution Policy (UDRP), which requires a complainant to establish bad faith in the registration and use of a disputed domain name.
Under paragraph 15(a) of the Rules:
“A Panel shall 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.” A. Identical or Confusingly Similar
The Complainant indisputably holds multiple trademark registrations for the MICHELIN mark. As the “.ir” address extension is immaterial for Policy purposes, the Panel finds that the Domain Name is identical to the Complainant’s MICHELIN trademark. B. Rights or Legitimate Interests
It is undisputed that the Complainant has not authorized the Respondent to use the MICHELIN mark. The Policy, paragraph 4(c), lists nonexclusive circumstances demonstrating rights or legitimate interests in a domain name:
“1. before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
2. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
3. you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There is no persuasive evidence in the record of noncommercial fair use of the Domain Name. It was first advertised for sale and then, after notice of the dispute, it was used to display the statement “My name is Michelin”. There was no further indication that the Domain Name was to be used for a website concerning an individual or family named “Michelin”, which could conceivably constitute fair use in some circumstances, and the Domain Name was subsequently used for what appears to be a commercial website advertising a beauty salon in Tehran.
The question, then, is whether the Respondent’s recent use of the Domain Name for a website advertising the “Michelin Beauty Center” is sufficient to establish that the Domain Name reflects the name of a business with which the Respondent was associated before notice of the dispute, or that the Respondent at least made “demonstrable preparations” to so employ the Domain Name before notice of the dispute. In correspondence with the Center, the Respondent alluded to gathering “bank statements, receipts, and correspondence”, presumably to offer evidence on this point. But the Respondent has furnished no such evidence, either before or after the deadline for filing a Response.
The possibility of establishing prior rights or legitimate interests in the Domain Name appears unlikely on the current record. The Respondent does not explain the choice of the French family name “Michelin” for a beauty salon in Tehran. Moreover, as demonstrated by the Complainant, search engine queries do not produce evidence that such a shop exists, much less that it has been in business since 2006 as claimed on the website associated with the Domain Name. That website appeared only after the Respondent was notified of the current dispute. Although it has the appearance of advertising a local beauty salon in Iran, the website is exclusively in the English language. The Complainant demonstrates that the Tehran address shown on the website cannot be found online using Google Maps, and the Complainant reports that the telephone number displayed on the website does not appear to be an active number.
The Panel finds that, taking account of all the known circumstances, it is likely that the current version of the website was created to lend an air of legitimacy to the selection of a Domain Name that is identical to a well-known trademark. As there is no evidence in the record that the Respondent or the Respondent’s business was known by this name before the dispute arose, or that the Respondent made demonstrable preparations to use the Domain Name for a business so named before the dispute, the Panel concludes that the second element of the Complaint has been established. C. Registered or is Being Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or [...]
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant alludes to these varieties of bad faith and also argues bad faith simply from the identity of the Domain Name with a well-established mark and the suspicious “cyberflying” conduct following notice of the dispute.
The Panel concludes that the balance of the evidence points to bad faith in both the registration and use of the Domain Name; either would suffice under the Policy to establish the third element of the Complaint. The Panel endorses the finding of panels deciding cases under the substantially similar UDRP that the Complainant’s MICHELIN mark is globally well-known and long established. See, e.g., Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022. The Panel finds that the Domain Name was most likely selected for its commercial value precisely because of its identity with a celebrated trademark. The MICHELIN mark is based on a French family name, and the Respondent has not used the Domain Name in that generic sense. The Domain Name also does not appear to correspond to a dictionary word in English (the principal language that appears on the websites associated with the Domain Name) or Persian (Farsi), the dominant language in Tehran, where the Respondent and the advertised beauty salon are located. Moreover, as discussed in the previous section, there is no persuasive evidence in this record that the Domain Name reflects the corresponding name of a pre-existing or planned business associated with the Respondent. There is also some evidence suggestive of cyberflying (registration changes following notice of the dispute, designed to impede a legal or administrative proceeding concerning the Domain Name), although this is not decisive to the determination of bad faith in this instance.
The Panel concludes that the third element of the Complaint has been established. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Dated: May 25, 2011
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