WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Generale Des Etablissements Michelin - Michelin & Cie. v. Graeme Foster
Case No. D2004-0279
1. The Parties
The Complainant is Compagnie Generale Des Etablissements Michelin - Michelin & Cie., Clermont-Ferrand Cedex, France, represented by Watermark Patent & Trademark Attorneys, Australia.
The Respondent is Graeme Foster, Crows Nest, New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names
are all registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 16, 2004. On April 16, 2004, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain names at issue. On April 21, 2004, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 April 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 13, 2004.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 18, 2004. 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.
The language of the proceeding is English.
4. Factual Background
Complainant is Compagnie Generale Des Etablissements Michelin - Michelin & Cie., a company incorporated under the laws of France, with principal place of business in France. Complainant is a well-known company that designs, manufactures and markets tyres for vehicle industries. Complainant has established its reputation in the field of travel publications through the well-known Michelin Guide, which selects restaurants and hotels in France and other countries throughout the world. Complainant is the owner of numerous trademark registrations world-wide for the word MICHELIN, among witch there are the Australian registrations No.847441 for the mark MICHELIN and No. 789649 for the mark MICHELIN GUIDE. Complainant is also the owner of French, Canadian and International registrations for the mark LE GUIDE ROUGE.
The disputed domain names were all registered on October 2, 2002.
Complainant's trademark rights on the name MICHELIN, MICHELIN GUIDE and LE GUIDE ROUGE predate the disputed domain name registrations.
5. Parties' Contentions
The Complainant submits that:
The disputed domain names are confusingly similar to the trademarks MICHELIN, MICHELIN GUIDE and LE GUIDE ROUGE.
That the trademarks MICHELIN, MICHELIN GUIDE and LE GUIDE ROUGE are well-known. In support of this statement, Complainant quotes several WIPO decisions, where the Panels recognised the fame of Complainant's trademarks.
That Respondent's use of the famous mark MICHELIN as part of each of its domain names is likely to be taken as indicating a connection between the domain names and Complainant.
That the disputed domain names were originally registered in the name of Zesty Pty Ltd (hereinafter Zesty) and subsequently re-registered by Matthew Aaron and then transferred to Graeme Foster.
That there are business arrangements between Zesty (the first owner of the disputed domain names) and Graeme Foster, the present Respondent. In support thereof, Complainant asserts: 1) that Graeme Foster and Zesty are two of three partners who carry on business for the benefit of Graeme Foster's family trust; 2) that Graeme Foster shares a residence with Karen Lee Smith, a Director of Zesty and; 3) that Karen Lee Smith is both co-resident with Graeme Foster and a Director of Zesty, which company is in turn a co-partner with Graeme Foster family trust.
That, considering the above exposed connection between Zesty and Respondent and the fact that Zesty was put on notice of Complainant's rights on August 25, 2000, Respondent was aware of Complainant's trademark rights when he registered the disputed domain names (i.e. on October 2, 2002). Thus Complainant submits that the registration of the disputed domain names by Respondent in these circumstances establishes registration in bad faith.
That, in virtue of Complainant's trademark rights, Respondent cannot use the disputed domain names without infringing Complainant's registered Australian trademarks. Complainant therefore submits that Respondent has no rights or legitimate interests in respect of the disputed domain names.
That Respondent has also acted in bad faith by trying to disguise his true identity.
That the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the domain names.
That the Respondent has taken active steps to conceal his true identity, firstly by using Matthew Aaron to apply for the registrations and subsequently by disguising the fact that he (Graeme Foster) is acting on behalf of a partnership.
That it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate.
The Respondent did not reply to the Complainant's contentions. Thus Respondent has failed to submit any statement. He has not contested the allegations in the Complaint and the Panel shall decide on the basis of Complainant's submissions, and shall draw such inferences from the Respondent's default that it considers appropriate without the benefit of any Response from Respondent (paragraph 14(b) of the Rules).
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names registered by the Respondent be transferred to the Complainant:
(1) the domain names are identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights in the MICHELIN, MICHELIN GUIDE and LE GUIDE ROUGE trademarks, including registrations in Australia, where Respondent is located. It is unquestionable that Complainant's trademarks pre-date Respondent's domain names registrations.
The fact that Respondent has chosen to combine for his domain names, <michelin-restaurant-recipes.com>, <michelin-recipes.com>, <le-guide-rouge-recipes.com> and <redbook-recipes.com>, generic and descriptive terms such as restaurant and recipes together with the trademarks MICHELIN and LE GUIDE ROUGE, is not only inference of bad faith, but is also a combination that can hardly be considered sufficient to distinguish the domain name from Complainant's trademarks.
In this sense the Panel notes that the addition of a generic term to a famous trademark is not sufficient to avoid confusion as has often been held by previous decisions, a domain name which includes as a whole or partially, a third parties' registered trademark is to be held/considered confusingly similar to it. See Chanel, Inc. v. Estco Group, WIPO Case No. D2000-0413 and Parfums Christian Dior .v. Netpower, WIPO Case No. D2000-0022.
As a matter of fact, considering that Complainant is also famous for its ratings of restaurants, the addition of generic terms such as restaurant and recipes to the trademarks MICHELIN and LE GUIDE ROUGE, strengthens the idea of an existing connection between Complainant and the domain names.
As regards the domain name <redbook- recipes.com> the Panel agrees with Complainant's assertion that redbook is an obvious English translation of Complainant's registered trademark LE GUIDE ROUGE. In addition, the Panel observes that Complainant's famous Guide is also well known both as Michelin RED GUIDE and Michelin RED BOOK. The Panel moreover notes that due to the fame of the Michelin Guide and to the fact that its hard cover is red, this Guide is commonly known as the Michelin red guide/red book but also as La GUIDA ROSSA Michelin (in Italy), and Guia Roja Michelin (in Spain) and so on.
In view of all the above, the Panel finds that the domain names <michelin-restaurant-recipes.com>, <michelin-recipes.com>, <le-guide-rouge-recipes.com> and <redbook-recipes.com> are confusingly similar to the Complainant's trademarks MICHELIN, MICHELIN GUIDE and LE GUIDE ROUGE.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) that before any notice to the respondent of the dispute, he or she used or made 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
(b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
(c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent does not appear to have any connection or affiliation with the Complainant, which has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant's trademarks. Respondent does not appear to make any legitimate use of the domain names for his own commercial or non-commercial activities. There is no record that the Respondent has been known under the disputed domain names. Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that the above constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
In absence of contrary evidence, the Panel finds that:
(a) the fact that Respondent has chosen to combine for his domain names, <michelin-restaurant-recipes.com>, <michelin-recipes.com>, <leguide-rouge-recipes.com> and <redbook-recipes.com>, generic terms such as restaurant and recipes together with the trademarks MICHELIN and LE GUIDE ROUGE, which is a combination that strengthens the idea of an existing connection between Complainant and the domain names is inference of bad faith registrations.
(b) Complainant submitted sufficient elements to infer that there are business arrangements between Zesty and Graeme Foster. Thus, considering that Complainant's agent sent a cease and desist letter to Zesty on August 25, 2000, it follows that Respondent was aware of Complainant's rights when he registered the disputed domain names (i.e. October 2, 2002). The Panel notes that actual knowledge of Complainant's rights at the time of the registration of the disputed domain names has been repeatedly held by previous panels as inference of bad faith registration.
(c) Respondent has not denied Complainant's submission and has not asserted, proven or provided the Panel with any elements to consider a different version of the facts.
In view of all the above, Respondent's registration and use of the disputed domain names constitutes use in bad faith within the meaning of the Policy.
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 names, <michelin-restaurant-recipes.com>, <michelin-recipes.com>, <le-guide-rouge-recipes.com> and <redbook-recipes.com> be transferred to the Complainant.
Dated: May 25, 2004