WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Companie Gnrale des tablissements Michelin - Michelin & Cie. v. IPSOS New Media Research SRL

Case No.DRO2006-0004

 

1. The Parties

The Complainant is Companie Gnrale des stablissements Michelin – Michelin&Cie., of France, represented by Cabinet Dreyfus & Associs, France.

The Respondent is IPSOS New Media Research SRL, of Romania.

 

2. The Domain Name and Registrar

The disputed domain name <michelin.ro> is registered with RNC.ro.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on August11,2006. On August15,2006, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On August16,2006, RNC.ro transmitted by email to the Center its verification response confirming the contact details for the administrative, billing, and technical contact. On August23,2006, the Center requested confirmation regarding the identity of the registrant of record. On August23,2006, RNC.ro confirmed the identity of the registrant of record as IPSOS New Media Research SRL. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August23,2006. The Center verified that the Complaint together with the amendment to 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“SupplementalRules”).

In accordance with the Rules, paragraphs2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August31,2006. Inaccordance with the Rules, paragraph5(a), the due date for Response was September20,2006. As no Response or other communication was received from the Respondent by that date, despite the fact that the Respondent was properly notified, the Center subsequently issued a Notification of Respondent Default.

The Center appointed BeatriceOnicaJarka as the Sole Panelist in this matter on October13,2006. 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, paragraph7.

The Panel finds that the language of the present proceeding should be English, although the Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement was Romanian.

The Panel concludes that, according to Rules, paragraph11(b), the language of the proceedings shall be English for the following reasons:

- the Complainant requested for the English language to be used in these proceedings;

- there are no provisions on the Registrar’s website for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement at this moment, and in the past as this Panel found in other previous cases: Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.WIPO Case No.DRO2006-0001, DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No.DRO2006-0003, the registration agreement was simultaneously English and Romanian, so the domain applicant accepts the use of both languages;

- despite the fact of being properly notified, the Respondent did not provide any Response mentioning any objection to English as the language of these proceedings.

 

4. Factual Background

The Complainant is part of a well-known group Michelin that designs, manufactures and markets tires for several vehicle industries (including among others the car, truck, aviation, and two-wheel vehicle industries). It is also highly involved in vehicle racing (Formula One and Motorcycle Grand Prix and Super bikes) and rallies.

The group Michelin also offers a wide range of services in the field of travel assistance providing consumers with maps and guides as well as digital products. It also provides consumers with a large range of what are described as innovative, stylish and desirable lifestyle products developed for consumers market.

Michelin has a business presence in more than 170 countries and supplies a range of 36200 products.

Michelin uses and widely promotes its trademarks MICHELIN and owns worldwide numerous trademarks registrations for the term “Michelin”, including a number of international trademark registrations for the mark MICHELIN which include Romania.

Moreover, the Complainant owns and actively runs the official website “www.michelin.com”.

Before introducing this UDRP action, the Complainant sent to the contact name given for the Respondent a first warning letter dated September27,2005 and a second one on August8,2006.

The disputed domain name does not resolve to any active webpage.

 

5. Parties’ Contentions

A. Complainant

Complainant alleges in the English language that:

- it is the proprietor of numerous trademarks MICHELIN throughout the world and in particular a number of international registrations for the mark MICHELIN covering Romania dating to 1968;

- it operates the domain name reflecting its trademark, <michelin.com>, registered since 1993;

- the Respondent is not affiliated with the Complainant in any way as the Complainant has not authorized the Respondent to use and register its trademark and service marks, or to seek the registration of any domain name incorporating said mark.

- the Respondent has no prior rights or legitimate interest in the disputed domain name. TheRespondent has never used the term “Michelin” in any way before or after the Complainant started their business.

- the Respondent is not known under the name “Michelin” or any similar term. Besides, “Michelin” is not the family name of the Respondent.

- despite the fact that the disputed domain name was registered by the Respondent in 2000 it has always remained inactive, a fact which confirms that Respondent has no intention to develop a legitimate activity.

- the domain name was registered and is being used in bad faith because the Respondent knew or must have known the trademark MICHELIN at the time he registered the domain name.

- the disputed domain name is currently inactive and the continued existence of the said domain name in the name of the Respondent will erode goodwill in the name and create confusion, as people accessing the Internet will associate said domain name with the Complainant, who is the trademark owner.

B. Respondent

Respondent did not provide a Response.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

A.1. The Complainant’s trademark or service mark rights

It is undisputed that the Complainant has rights in the trademark MICHELIN as it owns numerous international trademark registrations all over the world and in particular in Romania.

The Complainant also owns the domain name <michelin.com> registered on 1993, which contains a website associated with its domain name <michelin.com> providing information and services related to MICHELIN branded products.

A.2. The disputed domain name is identical to the Complainant’s trademark

Respondent’s domain name <michelin.ro> is identical to the Complainant’s MICHELIN trademark, as it incorporates this mark in its entirety. It is well established that the specific top level of the domain name such as “.com” or “.ro” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a trademark (see Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525, Rollerblade, Inc. v. Chris McCrady, WIPO Case No.D2000-0429, Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; and OSRAM GmbH, v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004).

For these reasons, the Panel finds the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

It is the opinion of the Panel that the Complainant has established a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply. Having done so, the burden of proof on this element shifts to the Respondent to rebut the showing.

In addition, the fact that the Domain Name does not resolve to any active webpage indicates, that before any notice to the Respondent of the dispute, Respondent has not made any use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

It is the Panel’s opinion that the Respondent in all likelihood knew about the fame of the MICHELIN trademark in the world and in Romania when it registered that mark as a Romanian domain name. Such knowledge is a strong indication of the Respondent’s intent to register the domain name with the hope of capitalizing on the fame of the Complainant and its mark. As noted, the Respondent did not have at the registration time any rights in respect of the MICHELIN mark, and he did not provide the Panel with any explanation of any intended legitimate use of the disputed domain name. Nor in view of the fame of the Complainant and its MICHELIN mark is any such legitimate use conceivable in the circumstances. The fact that the Respondent ignored the letters sent by the Complainant to the applicable contact person for the disputed domain name is, in the opinion of the Panel, further indication of the bad faith registration and use of the disputed domain name by the Respondent.

In addition, the apparent passive holding of the disputed domain name by the Respondent provides in the circumstances a further indication of lack of good faith. In direct connection to the other findings in this case, having regard to the fame of the Complainant’s mark and the lack of conceivable good faith use, the Panel reaches the conclusion that the disputed domain name is in all likelihood being held by the Respondent in bad faith. See Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.

Accordingly, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs4(i) of the Policy and 15of the Rules, the Panel orders that the domain name <michelin.ro> be transferred to the Complainant.

 


Beatrice Onica Jarka
Sole Panelist

Dated: October 27, 2006