WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA
Case No. D2002-0504
1. The Parties
The Complainant is Compagnie Générale des Etablissement MICHELIN, MICHELIN & Cie, 12 cours Sablon, 63000 Clermont-Ferrand, France, hereinafter MICHELIN.
The Respondent is Lost in Space, SA, Miguel, Juan, 6th Floor, 3510 South Ramblas Blvd, Palma, Majorca, SA 1234, Spain.
2. The Domain Name and Registrar
The domain name at issue is <michelinair.com>.
The Registrar is Intercosmos Media Group, Inc, also known as Directnic.com, with address at 650 Poydras Street, Suite 2311, New Orleans, Louisiana 70130, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on May 30, 2002 (electronic version), on June 11, 2002 (hard copy). The Center acknowledged receipt of the Complaint on May 31, 2002. On the same date the Center sent a Request for Verification of registration data. The date for Registrar Verification was May 31, 2002. It was confirmed that Lost in Space, SA, is the Registrant and that administrative contact is Juan Miguel at the same address. Further it was confirmed that technical contact is the same person. On June 12, 2002, it was verified that the former Registrant had been Antoinne Rousseau, Telmex Management Services, Pasae Estate, Road Town, Tortola, British Virgin Islands.
On June 13, 2002, the Center verified that the Complaint satisfies the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy and that payment was made by the Complainant. On the same date the Center notified the Respondent of the Complaint and that administrative proceedings had been commenced according to the Rules, paragraph 2(a).
The complaint was sent by courier and e-mail to the Respondent on June 13, 2002. The hard copy was reported not delivered.
On July 4, 2002, the Center sent to the Respondent a Notification of Respondent Default. No response has been received up to the date when the Administrative Panel has been appointed.
On July 24, 2002, the Center notified the parties that an Administrative Panel, consisting of a single member, Jette Robsahm, had been appointed, and that the Panelist had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
The Administrative Panel must issue its decision at the latest on August 7, 2002.
4. Factual Background
A. The Complainant
The Complainant is MICHELIN, see item 1, a company incorporated in France with its principal place of business in Clermont-Ferrand. The Complainant is a well-known company designing, producing and selling tires for the vehicle industry, including aviation. It is also well known for its travel publications (maps, guides, atlases as well as for computerized products), for vehicle racing (Formula One and Motorcycle Grand Prix as well as others) and for participating in rallies. The Michelin Group is present in more than 170 countries and supplies a range of 36 200 products. The sales figures for 2001 amounted to EURO 15 775 000, and MICHELIN has 19% of the tire world market. MICHELIN produces every day more than 850 000 tires.
The Complainantís branch specialized in the aviation industry is The Michelin Aircraft Tire Corporation. It supplies bias tires, radial tires, and tubes for the worldwide aviation community. The company is incorporated in the state of Delaware and is located in Greenville, South Carolina. The website can be accessed at "http://aviation.webmichelin.com".
The Complainant is the owner of numerous trademark registrations all over the world, inter alia in the United States, the British Virgin Islands where the Respondent apparently was located at the date of the registration of the domain name, and Spain where the Respondent has a place of residence at the moment.
The following are examples of trademarks owned by the Complainant:
R 348 615
Classes 1, 6, 7, 8, 9, 12, 16, 17 and 20
Designated countries: Germany, Austria, Benelux, Egypt, Spain, Hungary, Italy, Liechtenstein, Morocco, Monaco, Portugal, Romania, Saint-Marin, Switzerland, Czech Republic and Yugoslavia.
Local class 50(10)
The Complainant is also the owner of several registrations containing the word AIR in connection with the mark MICHELIN. According to the Complainant is one of the Michelin Air range known as "Michelin AIR X Radial". The trademark MICHELIN AIR designs a premium aircraft line tire.
The marks are registered not only for tires, but also for a wide range of other goods and services, and are used in connection with the manufacturing and marketing of the goods and services in question.
The Complainant is also the owner of numerous domain names containing the mark MICHELIN.
According to the Complainant he has been the owner also of the domain name <michelinair.com> used for the Michelin Aircraft Tireís site, but let the domain name registration expire. Therefore the site "http://www.michelinair.com" is known to a large portion of the public as the official website for Michelin Aircraft Tire Corporation.
B. The Respondent
The Respondent registered the domain name in question on February 17, 2002.
5. Partiesí Contentions
The Complainant states, inter alia, as follows:
"Complainant has registered its trademark MICHELIN in most countries of the world in respect of several classes.
The complaint is mainly based upon Complainant trademark registrations for <MICHELIN> in the United States and in the British Virgin Islands and upon an International trademark registration protecting the mark in Spain through the Madrid Agreement, see item 4.
Furthermore, Complainant owns the trade name "Michelin Aircraft Tire Corporation".
Confusing similarity of <michelinair.com>
First, the distinctive and notorious trademark MICHELIN is identically reproduced in the Domain Name.
Then, the similarity between MICHELIN and the disputed domain name creates a risk of confusion for several reasons:
--First of all, given the fame, the extensive reputation and notoriety throughout the world of MICHELIN, the public would expect the owner and user of the Domain Name to be associated with the Complainant;
--Moreover, regarding <<michelinair.com>>, Complainant believes that the mere adjunction of the descriptive term "air" is not sufficient to consider that MICHELIN has lost its distinctive and attractive character in the whole denomination "michelinair". Indeed the domain name involves the Complainantís mark in conjunction with a word that is related to some products offered under the denomination MICHELIN, namely tires, as well as an industry in which the Complainant operates, i.e. the aviation or "air" industry;
--In the National Arbitration Forum Claim Number FA011200010, involving National Cable Satellite Corporation against Respondent (Telmex Management Services), the Panel answered the question of confusing similarity between the trademark C-SPAN and the domain name cspantv.com by stating that "the addition of generic words, terms, or suffixes to a trademark is not enough to create a distinct mark capable of overcoming a claim of confusing similarity".
Like demonstrated in this case, any consumer coming across the combination "michelinair" will clearly associate the domain name with the Complainant, not the Respondent;
--Furthermore, the risk of confusion is even stronger as Complainant used to own and to use the domain name <michelinair.com> for its branch Michelin Aircraft Tire Corporation (see above item 4). Indeed, several web sites are still mentioning "http://www.michelinair.com" as the official web site for this company.
For instance, the web site "http://www.cessnaowner.org/new" (dedicated to Cessna planes owners) provides a list of sites dealing with the aviation industry. This list ("http://www.cessnaowner.org/new/links/linksindex.htm") indicates notably: Michelin Aircraft Tire, "http://www.michelinair.com"
--Similarly, the ę Aircraft Owners and Pilot Association Ľ provides an index of the AOPA Pilot advertisers. Michelin Aircraft Tire Corporation is one of these advertisers and the "www.michelinair.com" site is mentioned in the index, as the link "http://data.aopa2.org/pilotmag/adindex/adindex.cfm" shows:
Michelin Aircraft Tire Corporation
"http://www.michelinair.com" \t "_new"
In the light of the foregoing, the Complainant contends that the relevant part of the Domain Name registration is clearly confusingly similar to the trademark owned by Complainant."
Further the Complainant states that the Respondent has no legitimate interest in michelinair.com (Paragraph 4a(ii) of the Policy):.
"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 trademark MICHELIN or to apply for any domain name incorporating the trademark MICHELIN.
Complainant has not found any other facts or elements to justify prior rights or a legitimate connection to the names "Michelin" or "Michelin Air".
Considering examples set out in paragraph 4c) of the Policy demonstrating Respondentís rights or legitimate interests in the Domain Name, it appears that:
(i) Respondent has apparently not made demonstrable preparations to use the Domain Name. Indeed, the disputed domain name is one of the several domains pointing to "http://www.temptationsatwork.com";
(ii) Respondent is not otherwise known to the Complainant or to the public under the name in question, either in business or personally;
(iii) Respondent is not making a legitimate non-commercial or fair use of the Domain Name. Indeed, the Panelist in Claim Number FA011200010, found regarding the present Respondent that "Respondent used the disputed domain name for an adult content and sexual services website. It has been found that this type of use does not create rights or legitimate interests because it not a bona fide offering of goods or services pursuant to Policy 4(c)(i). See National Football League Prop., Inc., et al. v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names "chargergirls.com" and "chargergirls.net" where the Respondent linked these domain names to its pornographic website); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainantís mark) (Ö.) Based on the commercial nature of the escort service website that <cspantv.com> diverts Internet users to, it can be inferred that Respondent is intentionally diverting Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain pursuant to Policy 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainantís products to Respondentís site by using Complainantís mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well known mark to provide a link to a pornographic site is not a legitimate or fair use)".
In view of the above, it is clear that the Respondent has no legitimate interest in the domain name <michelinair.com>."
The Complainant also states that the respondent has registered and used <michelinair.com> in bad faith, see Paragraph 4a(iii) of the Policy. In this regard the Complainant points to the fact that the Respondent obviously knew of Complainantís fame and ownership of its trademark and inter alia, brings forth the following arguments:
"Given (i) the Complainantís trademark registrations for the word MICHELIN in the world and in the BVI, (ii) its worldwide and established reputation in the MICHELIN brand and the notoriety of its tires, (iii) its <Michelin.com> domain name leading to a web site dedicated, inter alia, to MICHELIN AIR tires, it is not possible to conceive of a plausible circumstance in which Respondent could ignore the Domain Name registration was infringing Complainantís rights and legitimately use the Domain Name.
Lastly, at the time of the registration (February 17, 2002), the Respondent had already been notified of the decision of Claim Number FA011200010 (rendered on February 4, 2002). It means that the Respondent knew at that date that registering such a domain name and using it in such a way, were considered to be acts of bad faith."
The Respondent has not submitted a response.
According to the documentation in the complaint, the Respondent has been involved in at least two similar cases where the decisions have been against him.
6. Discussion and Findings
In accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), paragraph 4(a), the Complainant must prove that
(i) the domain name in question 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 and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each three of these elements are present.
The Complainant has provided sufficient evidence of his rights to the trade mark MICHELIN.
(i) Identical or confusingly similar
The domain name in question is not identical to the trade mark MICHELIN owned by the Complainant, but must be considered confusingly similar when compared. The domain name incorporates the mark MICHELIN which is a distinctive and well-known mark. The word "air" added as a suffix, does not change the overall impression of the designation as being a domain name connected to the Complainant. The domain name has a strong likelihood with MICHELIN.
Most consumers will have a good knowledge about MICHELIN and that they are one of the world leaders in manufacturing of tires. There is reason to believe that the public, when reading or hearing the domain name <michelinair.com>, will believe that the domain name is owned by, or related to, the Complainant and points towards a web site where one can read about MICHELIN and their tires.
The result may therefore be that the disputed domain name would be associated in the minds of the consumers with the Complainantsí trademarks so that a risk of confusion is likely.
Numerous ICANN decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trade mark. See for example for example the following decisions: Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 (March 22, 2002), and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802 (September 9, 2000). The same view is also common trade mark theory.
It is therefore the view of the Administrative Panel that the domain name <michelinair.com> is confusingly similar to the trade mark MICHELIN.
(ii) Rights or legitimate interests in respect of the domain names
The Respondent uses the domain name to divert the public to a web site featuring sexual overtones.
Further, as stated by the Complainant, the Respondent has no connection whatsoever to the Complainant as he is not an authorized dealer and he has no license to use the mark MICHELIN.
On this background the Administrative Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
(iii) Bad faith
It is obvious that the Respondent knew of the Complainant and the trade mark MICHELIN prior to registering the domain name. The trademark and company name MICHELIN is well known. It has been used world wide for many years and is, as demonstrated above, one of the best known trademarks for tires in the world. To choose a domain name that the Respondent obviously knew had been in use and which incorporate the well-known trade mark MICHELIN, indicates (1) that the Respondent knew the trademark in question and (2) a wish to divert the public to an own homepage taking advantage of the reputation of the MICHELIN trademark. The last point is demonstrated with the fact that the domain name points to a web site offering the services of so called "sexetaries".
Failing an answer from the Respondent, the Administrative Panel can see no other reason to choose the domain names in question than a wish to attract consumers to a website for commercial gain..
Paragraphs 4 (b) (i) and (iv) of the Policy provides that sufficient evidence of bad faith may exist where:
"(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 intended to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Administrative Panel therefore concludes that the Complainant has provided sufficiently evidence that Respondentís registration and use of the domain name <michelinair.com> is in bad faith.
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules it is the decision of this Administrative Panel that the Complainant has provided the required evidence to request the transfer of the domain name from Respondent to Complainant, and that accordingly the domain name <michelinair.com> shall be transferred to Complainant.
Dated: August 1, 2002