WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin - Michelin & Cie v. Mikkel Nielsen
Case No. D2001-0660
1. The Parties
The Complainant in these Administrative Proceedings is Compagnie Générale des Etablissements MICHELIN- MICHELIN & Cie ("Michelin"), a corporation organized and existing under the laws of France, with its principal place of business in Clermont-Ferrand, France.
The Respondent is Mikkel Nielsen with an address in Aarhus, Denmark.
2. The Domain Name and Registrar
This dispute concerns the domain names <michelin.net> and <michelin.org>.
The registrar with which the domain name is registered is Register.com ("the Registrar")
3. Procedural History
On May 16, 2001, the Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999. The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail on May 16, 2001, and the hard copy was received on May 22, 2001.
On May 17, 2001, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant by e-mail.
On May 18, 2001, the Center sent a Request for Registrar Verification to the Registrar.
On May 31, 2001, the Registrar responded to the Center by e-mail and confirmed that the said registrations were registered by the Registrar, that the Respondent was at that time the registrant and administrative contact for the said registrations, stated that the Registrar was not yet in receipt of the copy of the Complaint and confirmed that the said registrations were in "active" status.
The Center reviewed the Complaint and was satisfied that the Complainant complied with the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy (hereinafter "the Supplemental Rules") and that the appropriate fees had been paid by the Complainant.
On June 1, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name to the Respondent by post/courier (Complaint without attachments) and by e-mail (Complaint including all attachments provided in electronic form by the Complainant). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar.
Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on June 1, 2001, and that the Respondent was required to submit a Response to the Center on or before June 20, 2001.
On June 21, 2001, the Center received a Response from the Respondent by e-mail and and further unsolicited submissions from the Respondent later that day.
On June 22, 2001, the Center received a further e-mail from the authorised representative of the Complainant. This was also unsolicited.
On June 25, 2001, the hard-copy of the Response was received by the Center and as there was no indication as to the date on which the said Response had been posted, the Center advised the Respondent that it was in the discretion of the administrative panel as to whether these submissions would be considered.
On June 28, 2001, the Center sent Notification of Respondent default to the Respondent.
The Center invited James Bridgeman to act as Administrative Panel in these proceedings. On June 29, 2001, having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman the Center proceeded to appoint this Administrative Panel consisting of a single member.
On the same date, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the parties and the case file was transferred to the Administrative Panel.
On July 10, 2001, the Center received a further supplemental submission from the Complainant. This was also unsolicited. The Center asked this Administrative Panel if he wished to receive said further supplemental submission from the Complainant. Having reviewed the file, this Administrative Panel decided to admit the further unsolicited submissions subject to the requirement that the Respondent would have the opportunity to comment on same.
On July 11, 2001, the Center sent the further submissions to this Administrative Panel.
On July 17, 2001, the Respondent furnished further submissions in accordance with the Directions of this Administrative Panel. These submissions were sent directly to this Administrative Panel in breach of the Rules, however as the submissions had been requested by this Administrative Panel and since the Respondent is a lay litigant, it has been decided to admit same.
On July 18, 2001, the authorised representative of the Complainant sought to make further submissions but these were not admitted by this Administrative Panel as they were both unsolicited and in breach of the Rules.
In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.
4. Factual Background
The Complainant requests this Administrative Panel to issue a decision that the contested domain name registrations <michelin.net> and <michelin.org> be transferred to the Complainant.
The Complainant is a well-known company engaged in the design, manufacture and marketing of tyres and is also engaged in the publication of maps, guides and computer based products. The Complainant is also engaged in Formula One, Motorcycle Grand Prix, Superbike racing and rallies. The Complainant's group of companies has a business presence in more than 170 countries, notably in Denmark, and supplies a range of 36,200 products. In the year 2000 the consolidated sales figures of the group amounted to 15,396 millions Euro and the Complaint has 19.4 % of the world market in tyres.
The Complainant has registered its trademark MICHELIN in numerous countries throughout the world in several classes. In these Administrative Proceedings the Complainant relies primarily on the following registrations for the MICHELIN trade mark in Denmark viz. registration number VR 01.096 1968, dated 26.04.68 registered in classes 1, 6, 7, 8, 9, 12, 16, 17, 20; registration number VR 01.635 1981 dated 01.05.81 registered in classes 35, 41; regisration number VR 00.343 1982 dated 22.01.82 registered in classes 9, 11, 14, 16, 20, 21, 24, 25, 26, 28, 34 and registration number VR 06.228 1993 dated 03.09.93 registered in classes 9, 38, 42.
In addition to these registrations and its substantial commercial activities and goodwill in the trade mark MICHELIN throughout the world, the Complainant has established its main web site at <michelin.com> and has a number of ccTLD domain name registrations incorporating the MICHELIN name such as <michelin.dk> linking to the main web site.
The Respondent is otherwise known as "M E Nielsen" and he would appear to use a number of unregistered business names including "199". According to the Registrar's WHOIS database the Respondent has an address in Århus, Denmark. and according to the Complaint, the Respondent has a further address in Lille Skensved, Denmark.
5. Partiesí Contentions
According to the Complainant, the postal address at Århus that the Respondent provided as the contact address for the said registrations on the Registrar's WHOIS database does not exist. A cease and desist letter sent by the Complainant to that address was returned undelivered.
The Complainant submits that it has used and promoted its MICHELIN trade mark for more than a century. The Complainant submits that it owns numerous trademark registrations world-wide for the Complainant's MICHELIN trade mark, including the aforementioned registrations in Denmark. The Complainant points to the fact that the Respondent has a place of residence in Denmark.
In the Complainantís submission, the MICHELIN trade mark should be considered a well-known trademark in accordance with Article 6 bis of the Paris Convention in the majority of the Convention countries.
The Complainant asserts that the domain names <michelin.net> and <michelin.org> are identical to its said MICHELIN trade mark. The Complainant further submits that because of the similarity between the said domain names and the Complainant's MICHELIN trade mark any use of the said domain names by the Respondent would create a risk of confusion on the following grounds:
- firstly "given the fame and the extensive reputation of the Complainants MICHELIN trade mark throughout the world the public would expect the owner and user of the said domain names to be associated with the Complainant;
- secondly, in addition to the established rights gained by the use of the said MICHELIN trade mark for more than a century in Denmark and other jurisidictions, the Complainant has now established a goodwill and reputation through the use of its MICHELIN trade mark on the Internet through its www site. The Complainant's Danish trademark registration in class 38 in respect of "services afferents à la transmission de données" (Reg. No. VR 06.228 1993) gives protection to the Complainant's said trade mark on the Internet. The Complainant further claims to be entitled to benefit also from a global Internet presence through the use of the domain name <michelin.com> and from a local Internet presence through its use of the domain name <michelin.dk>. As a result, information on the Complainantís activities is accessible on the Internet from any place in the world. The Complainant argues that individuals, especially in Denmark, are likely to believe that the said domain names <michelin.net> and <michelin.org> belong to the Complainant and such individuals are likely to use these domain names as addresses when searching for the Complainant's www site;
- thirdly, the public would expect the Complainant to be the owner and user of the same second level domain under the other two generic TLDs ".net" and ".org" as these three gTLDs are recognized to be the most intuitive for Internet users who use any of these three gTLDs indifferently when searching for a company official web site".
In the light of the foregoing, the Complainant contends that the said domain names are identical to its MICHELIN trade mark and that, as a result, the said domain names are clearly confusingly similar to the trademark owned by Complainant.
The Complainant further submits that the Respondent has no legitimate interest in the said domain names <michelin.net> and <michelin.org>.
The Respondent has no business or any other connection or affiliation with the Complainant. The Complainant has not licensed, expressly or impliedly, or otherwise permitted the Respondent to use the MICHELIN trade mark or to apply for any domain name incorporating the MICHELIN trade mark. The Respondent is not otherwise known to the Complainant or to the public under the MICHELIN name, either in business or personally. Furthermore, the Complainant has carried out an investigation and has not found any other facts or elements to justify prior rights or a legitimate connection between the Respondent and the name MICHELIN.
The Complainant carried out a search of the Registrarís WHOIS database. The result of this search indicated that the said domain names were registered to "199 M E Nielsen" During the month of December 2000, the Complainant claims to have carried investigations into the identity and activities of the Respondent. Investigators commissioned by the Complainant ascertained that the Respondent is the owner of the registrations for the domain names <michelin.net> and <michelin.org> and is therefore the appropriate Respondent in these Administrative Proceedings. The Complainant has not furnished any evidence relating to these findings however, since the Respondent has come on record and acknowledged his ownership of the registrations this is a moot point.
With regard to the use of the numbers "199" in the name of the registrant, the Complainant has concluded that the Respondent is associated with a number of other persons or organisations, none of which is a registered corporation. Neither the number "199" nor the other names used by the Respondent and his associates appear to be registered business names either. The number "199" appears to have been taken from the Respondentís e-mail address. Furthermore the Complainant submits that the Respondent, together with the several persons with whom he is associated, appear to own a large portfolio of generic domain name registrations. The Complainant however states that they do not appear to have registered any other well-known names apart from the domain names in issue in these Administrative Proceedings.
In the course of the said investigations, the Complainant claims that its investigators made telephone contact with the Respondent. The Complainant makes a number of assertions as to the statements made in this telephone conversation, however there is no evidence to support these assertions and this aspect of the Complaint is no more than hearsay and inadmissible.The Complainant has however provided this Administrative Panel with copies of an exchange of e-mail correspondence between the Respondent and the investigator commissioned by the Complainant.
This correspondence was initiated by the investigator by e-mail. The investigator pretended to be interested in buying certain domain names including the domain names in dispute herein. The Respondent replied by e-mail to the effect that the said domain names were not for sale. The Complainant submits that there was a subsequent telephone conversation between the investigator and the Complainant. This may well have been the case but there is no admissible evidence relating to the content of this alleged conversation.
The investigator did not continue the correspondence and the Respondent sent two further e-mails to follow up on the interest shown.
On February 14, 2001, the Complainant sent a cease and desist letter to the Respondent at his two addresses. One of these letters was returned to the Complainant undelivered from the Århus postal address. The Complainant has submitted a copy of the return slip from the post office and submits that this is evidence that the Århus address does not exist. The second letter sent to the Lille Skensved address reached its recipient.
In view of the above, the Complainant submits that the Respondent has no legitimate interest in the domain names <michelin.net> and <michelin.org>.
The Complainant further submits that the Respondent has used the said domain names in bad faith.
The Complainant submits that although the Respondent has not clearly offered the disputed domain names for sale to the Complainant, the Complainant is of the opinion that the Respondent wants to benefit somehow from the domain names registrations and that this is confirmed by the fact that in one of the e-mails the Respondent stated that "the purchase price [of one of his domain names] will be individually based upon the market capacity".
The Complainant made further allegations relating to the alleged telephone conversation between the investigator and the Respondent. These allegations are inadmissible as they are no more than hearsay.
The Complainant believes that the Respondent received the Cease and Desist letter sent to the postal address in Lille Skensved and submits that if the Respondent had registered said domain names in good faith he would have contacted the Complainant to discuss the alleged infringement. In the event the Complainant has never had any response to these letters from the Respondent.
Finally, the Complainant contends that the circumstances in this case show that the Respondent has engaged in what is known and recognized as "passive holding", first analysed and defined in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) and confirmed in several WIPO cases, and that this passive holding of the domain names permits this Administrative Panel to infer that the said domain names were registered and are being used in bad faith.
The Complainant submits that in the present case, the Respondent knew of the Complainantís fame and ownership of its trademark. The Complainant submits that given that (i) the Complainantís trademark registrations for the MICHELIN mark in numerous jurisdictions throughout the world and in Denmark in particular ,(ii) its worldwide and established reputation in the MICHELIN brand, (iii) the Complainant's <michelin.com> domain name leading to its main web site, it is not possible to conceive of a plausible circumstance in which Respondent could not have been aware that the registration and use of the said domain name registrations were infringing the Complainantís rights.
For all the foregoing reasons, the Complainant contends that the Respondentís behaviour and activities demonstrate that the Respondent registered and is using the said domain names <michelin.net> and <michelin.org> in bad faith.
The Respondent states that there was a delay in receiving the Complaint as it had been sent to his parents' residence.
The Respondent rejects the Complainants submissions and states that his intentions in registering the said domain names were sincere and genuine. He claims to be constructing an historical informative web site, containing inter alia references to the brothers Andre and Edouard Michelin, in order to honour persons or families who have made a significant contribution to society. His project has been somewhat delayed due to limitation of his resources.
The Respondent states that his portfolio of domain names has been gathered for the purposes of his projects and are not for sale. The number of domain names in his portfolio has diminished due to the costs involved in renewal. He refutes the allegation of cybersquatting and states that some of the domain names referred to by the Complainant never belonged to him. He states that in making these allegations the Complainant is endeavouring to create an unpleasant impression of him before this Administrative Panel.
He admits having replied to unsolicited enquiries from entrepreneurs and buyers similar to the investigator commissioned by the Complainant with a view to negotiating a sale of domain names such as <mountainbikebase.com> or <egear.com>. He states that this is neither a revolutionary nor an unlawful activity.
The Respondent states that a search conducted in WhitePages.com database generated more than 250 entries for persons with the <Michelin> name. More than 200 hits were generated in a similar search against the string <Michelin> on Yahoo.fr.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainants the onus of proving that:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
With regard to procedure, the Complainant has submitted that the Respondent's address at Århus does not exist. In this regard the Complainant has furnished evidence of the post office receipt stating "cause du renvoi Inconnu". It is noted by the Administrative Panel that the Center does not appear to have had any difficulty serving the Respondent at that address. As the Respondent has acknowledged receipt of the Complaint and has submitted a Response no issue arises as to service on the Respondent and the Respondent should be given the benefit of the doubt that he has not furnished the Registrar with misleading information relating to his address. This Administrative Panel accepts the Complainant's submissions that "199" and " ME Nielsen" are both names used by the Respondent and the Respondent has not put this matter in issue.
There is no doubt but that the said domain names are identical to the trade mark MICHELIN in which the Complainant has rights.
Paragraph 4(c) of the Policy sets out examples of circumstances whereby the Respondent may demonstrate his rights or legitimate interest in the said domain names. In particular the examples set out in paragraph 4(c)(i) and 4(c)(iii) are most pertinent in this case viz.
- that before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the said domain names Öin connection with a bona fide offering of goods or services; or
- that the Respondent is 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.
The Respondent states that he intends to establish a web site devoted to the memory of the Michelin Brothers to celebrate their contribution to society. To date he has not established any such site. Neither has he provided any evidence of any steps taken towards establishing such a site or any evidence of any research he may have carried out in relation to these men. Neither has he given any indication as to why of all the people in history he chose these two brothers as the subject matter of a site.
He has not indicated whether his web site would be commercial or non-commercial in nature.
In any event the Respondent has not established a web site or other online location accessible via the said domain names or either of them. Neither has he shown any such use or demonstrable preparations to use the domain names in issue. It is furthermore clear to this Administrative Panel that the Respondent has not been granted any right to use the said trademark or register said domain names by the Complainant, the Respondent has never been commonly known by the said domain name and the Respondent must have been aware that the said domain name was identical to the Complainant's trademark.
In the circumstances, this Administrative Panel is satisfied that the Complainant has satisfied the second limb of the test in paragraph 4(a) also, that the Respondent has no rights or legitimate interest in the said registrations.
The third element in the case is more difficult for the Complainant. The Complainant's case is that the Respondent is engaged in passive holding of domain names.
The Complainant submits that the Respondent has associations with other persons in Denmark and has furnished a list of domain name registrations held by the Respondent and these other persons. The registrants of these registrations include "199", "Emart", "Emarts", "EuroMart", "Etek", "E99", "Itek", "Itek" and "Imarts". The Complainant submits that these are names of unincorporated associations with which the Respondent has associations. The Complainant has furnished a list of over one hundred domain name registrations held in these names.
When the Respondent engaged in the e-mail correspondence with the investigator commissioned by the Complainant, it is noteworthy that the Respondent was negotiating in relation to inter alia the following registrations <eurosport.org>, <egear.org>, <epop.org> each of which are registered in the name of EuroMart; <michelin.org> and <michelin.net> each being the subject of these proceedings; <eurofaces.com> and <eurofaces.net> each being registered in the name of Emart; and <eshow.org> registered in the name ETEK.
It is clear from this exchange of e-mails, that the Respondent initially rejected the third party's offer to buy the domain names the subject matter of these Administrative Proceedings and stated that they were needed for a web project, however in the course of this exchange the Respondent clearly indicated that he was entitled to negotiate on behalf of the entities variously known as EuroMart, Emart, 199 and ETEK. Furthermore in his e-mail of December 14, 2000, the Respondent expressly stated that he had "senior partners".
In the circumstances, this Administrative Panel concludes that there is no admissible evidence that the Respondent engaged in negotiations to sell the particular domain names in issue in these proceedings. That being said there is no doubt but that he was eager to sell some of his domain names and on commercial terms.
There is no evidence that the Respondent registered the particular domain names in issue in these proceedings in order to sell them on to any third party. However it is clear that the Respondent is working in association with other persons in a web based project and it is further clear that on balance this web project is commercial in nature.
It appears that he is interested in selling domain names on a commercial basis and has expressly stated that "the purchase price will be individually based upon the market capacity". He refers to some of these persons as his "senior partners".
The Respondent and his partners have gathered over one hundred domain names. While there is nothing in itself wrong with having a large portfolio of domain names and while this Administrative Panel accepts that in itself ownership of a large portfolio of domain names is not indicative of bad faith, it is in the view of this Administrative Panel that taken together, the fact that the Respondent and his partners have a large portfolio of domain names and the fact that the Respondent engaged in negotiations to sell some of these domain names (albeit not the domain names in issue in these proceedings), indicate that he is engaged in a commercial as distinct from a non-commercial project.
In the view of this Administrative Panel, the central issue in these proceedings is whether registration and subsequent passive holding of the said domain names amounts to bad faith on the part of the Respondent.
In Telstra the facts were not dissimilar. In that case the Administrative Panel noted that the domain name in issue did not resolve to a web site or other on-line presence; there was no evidence that a web site or other on-line presence was being established using the domain name in issue; there was no evidence of any advertising, promotion or display to the public of the said domain name; and finally there was no evidence that the Respondent had offered to sell, rent or otherwise transfer the said domain name to the Complainant, a competitor of the Complainant, or any other person. The administrative panel in that case noted that there was no positive action being taken by the Respondent in relation to the domain name. The administrative panel reviewed the provisions of the Policy and concluded that inactivity by the Respondent can amount to use of a domain name in bad faith. As to the circumstances in which such inactivity may amount to bad faith, the administrative panel in Telstra concluded that the issue must be decided on a case by case basis.
In the present proceedings, the Complainant's trademark is a well-known trademark with a strong world wide reputation and the Respondent was aware of this reputation when he registered the domain names in issue. The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the said domain names. He has claimed that he intends to establish a web site devoted to the Michelin brothers, but he has not furnished any evidence whatsoever of any preparations for such a web site. It is noteworthy that there does not appear to be any web site connected with any of the domain names registered by the Respondent or his associates. While the Respondent has registered the domain names in issue in these proceedings in a name other than his own personal name, he did provide his own contact name and a contact address to the Registrar, so on balance there is no evidence that he endeavoured to conceal his true identity. He makes no reference to his partners in his Response. He provides no explanation of the use of the names "199", "Emart", "Emarts", "EuroMart", "Etek", "E99", "Itek", "Itek" and "Imarts" as registrants of domain names with which he and his partners are associated. The balance of evidence is that he is engaged in a commercial venture with his partners.
Given the fame of the MICHELIN trademark, the wide number of classes of goods and services covered by the Complainant's registrations and the various fields of activity in which the Complainant is engaged, and given that the Respondent has no rights or legitimate interest in the said domain names, the said trade mark MICHELIN or the family name <Michelin>, it is most probable that any commercial use of the said domain names by the Respondent and his associates would result in trademark infringement or passing off.
On balance this Administrative Panel is satisfied that the Respondent is engaged in passive domain name holding such as to constitute registration and use of the said domain names in bad faith. The Complainant has accordingly satisfied each of the three elements of the test in paragraph 4(a) of the Policy.
With specific reference to paragraphs 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel decides that each of the said domain names <michelin.net> and <michelin.org> is confusingly similar to the Complainant's trade mark <MICHELIN>, that the Respondent has no rights or legitimate interest in respect of said domain names <michelin.net> and <michelin.org> and that the Respondent has registered and is using said domain names and each of them in bad faith. Accordingly, this Administrative Panel decides that said domain names <michelin.net> and <michelin.org> should be transferred to the Complainant.
Dated: July 25, 2001