Complainant is Compagnie Générale Des Établissements Michelin, of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is Rakshita Mercantile Limited, of Mumbai, Maharashtra, India.
The disputed domain name <mymichelin.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2009. On June 19 and 23, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. There appeared to be a problem of communication between the Center and the Registrar, but finally, after many exchanges of electronic mails, on July 4, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on July 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 28, 2009.
The Center appointed Kamen Troller as the sole panelist in this matter on August 4, 2009. 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 designation “michelin” is Complainant's company name, its Trademark and corresponds to its Internet designation. Complainant has been active under this designation on a worldwide basis for many decades.
Complainant manufactures and sells tires for all kinds of vehicles, publishes maps and guides and operates a number of digital services in more than 170 countries.
From the invention of the radial tire to the steel wheel, and from the first gastronomic guide, Complainant has played an active role at every stage of the automotive adventure.
Complainant was created in 1889 and enjoys a strong reputation in the field of tire manufacturing for cars, trucks, motorcycles and planes. Complainant also offers a wide range of services such as car/truck assistance, publishing of road maps, restaurant, hotel and travel guides. Complainant states that the Michelin Guide is the most well-known guide in France and abroad.
The replacement tire market represents 72% of Complainant's sales in volumes in the Passenger Car-Light Truck market, and 83% in the Truck market. Accordingly, before being an equipment supplier for vehicle manufacturers, Complainant was primarily a player on the consumer market for passenger cars and motorcycles and on the professional consumer goods market for light and heavy utility vehicles.
Complainant is active on all continents, from France to Brazil and from the United States of America to India.
Complainant distributes its products in more than 170 countries. In 2008, Complainant manufactured 177 million tires and printed 16 million maps and guides.
Complainant owns and mainly communicates on the Internet via various websites in order to present and to propose to Internet users its services and products, the main one is “www.michelin.com” but Complainant has also registered various local websites such as “www.michelin.in” in India.
Complainant is present in India through its subsidiary Michelin India Tyres Pvt Ltd, situated at Jasola District Center, New Delhi. The Indian press very often issues articles featuring Complainant and its activities in India.
Complainant states that all three elements of paragraph 4(a) of the Policy are satisfaied in the present case.
Respondent did not reply to the Complainant's contentions.
Complainant is the owner of numerous trademark rights in many countries related to the production and saleof tires, road maps and various guide publications in the field of hotels and restaurant.
Complainant owns particularly the following international trademarks:
1 MICHELIN, International Trademark No. 348615, registered on July 24, 1968, renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20.
2 MICHELIN + logo, International Trademark No. 416597, registered on June 25, 1975, renewed and covering goods in classes 6 and 8.
3 MICHELIN, International Trademark No. 452542, registered on May 8, 1980, renewed and covering services in classes 35 and 41.
4 MICHELIN, International Trademark No. 457819, registered on December 1, 1980, renewed and covering goods in classes 09, 11, 14, 16, 20, 21, 24, 25, 26, 28 and 34.
5 MICHELIN, International Trademark No. 492879, registered on May 10, 1985, renewed and covering goods in class 12.
6 MICHELIN, International Trademark No. 517586, registered on September 24, 1987, renewed and covering goods and services in classes 9, 35 and 38.
7 MICHELIN, International Trademark No. 574577, registered on May 6, 1991 and covering goods in classes 6, 16, 18, 21 and 25.
8 MICHELIN, International Trademark No. 740073, registered on August 8, 2000 and covering goods in classes 6, 7, 12 and 17.
9 MICHELIN, International Trademark No. 771031, registered on June 11, 2001 and covering goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42.
10 MICHELIN, International Trademark No. 816915, registered on August 27, 2003 and covering services in classes 35, 37, 39 and 42.
Moreover, Complainant operates, among others, domain names reflecting its trademarks:
1 “www.michelin.com”, registered on December 1, 1993;
2 “www.michelintires.com” registered on May 20, 1999;
3 “www.michelin.in” registered on February 16, 2005.
The disputed domain name <mymichelin.com> entirely incorporates Complainant's MICHELIN trademark and adds the word “my”.
Panels have considered in many decisions that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant's registered mark (AT&T Corp. v. William Gormally, WIPO Case No. D 2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; Kate Spade LLC v. Karen Vog, WIPO Case No. D2005-0284; Balenciaga S.A. v. Samir Kumar, Case No. D2009-0758).
In this case, Respondent's domain name is nearly identical or confusingly similar to Complainant's trademarks because it fully incorporates the mark. Numerous Panel decisions decided that the mere addition of a generic or descriptive term such as “my” to Complainant mark does not influence the similarity between a trademark and a domain name (Bumble & Bumble LLC v. Eduard Gladyshev, WIPO Case No. D2008-1956; Kate Spade LLC v. Karen Vog, WIPO Case No. D2005-0284; Balenciaga S.A. v. Samir Kumar, WIPO Case No. D2009-0758). The mere adjunction of the generic term “my” is not able to give to the disputed domain name a sufficient distinctiveness.
It is also well established that the mere adjunction of the gTLD “.com” is not a distinguishing feature and does not change the likelihood of confusion. In fact many panels have considered that the adjunction of the gTLD “.com” does not attenuate the risk of confusion (Accor v. Noldc Inc, WIPO Case No. D2005-0016), merely because it is necessary for the registration of the domain name itself. The gTLD extensions are not taken into consideration when examining the identity or similarity between the previous marks and the disputed domain names (Gianni Versace S.P.A v. Nicolino Colonnelli – Europe SRL, WIPO Case No. D2008-0570).
Accordingly, the Panel finds that the disputed domain name <mymichelin.com> is confusingly similar to the trademarks registered by Complainant.
Respondent does not appear to be affiliated with Complainant in any way. Complainant has not authorized Respondent to use and register its trademarks and service marks, or to seek the registration of any domain name incorporating said marks.
Furthermore, Respondent does not appear to have prior rights or legitimate interests in the domain name. Respondent never used the term “michelin” in any way before or after Complainant started its business. The registration of the MICHELIN trademarks preceded the registration of the domain name <mymichelin.com> by many years. Additionally, Respondent appears not to be commonly known under the name “michelin” or any similar term.
Respondent appears not to have used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is linked to a website with the presence of what appears to be pay-per-click advertising links. Respondent's use of the disputed domain name likely served the purpose of generating income via advertised pay-per-click products and links and it has been held in previous decisions that such use in the circumstances does not represent a use in connection with a bona fide offering of goods and services (Société Nationale des Chemins de Fer Français v. ostrid company, Domains by Proxy, Inc., WIPO Case No. D2008-0627; Educational Testing Service (ETS) v. International Names Ltd, WIPO Case No. D2007-0449; Pepperdine University v. The CJ Group, LLC, WIPO Case No. D2007-1389; L'Oreal v. Tracey Johnson, WIPO Case No. D2008-1721).
In the Panel's view, the likely reason why Respondent registered and used the disputed domain name seems to be the possibility for him to benefit from the reputation of the MICHELIN trademarks (Compagnie Générale des Établissements Michelin - Michelin & Cie. v. IPSOS New Media Research SRL, WIPO Case No. DRO2006-0004).
The fact that, before filing the Complaint, Complainant sent a warning letter to Respondent informing him that the registration and use of the disputed domain name infringed its intellectual property rights, and that Respondent has not reacted and in no way alleged the existence of prior rights or legitimate interest with regards to the disputed domain name, lends support to the Panel's finding in this case that Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires Complainant to prove that Respondent registered and used the disputed domain name in bad faith. The language of paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be proved.
In view of the activities of Complainant on a worldwide basis and more particularly in India it seems obvious to the Panel that Respondent knew or must have known Complainant's trademarks at the time he registered the domain name. Complainant has furthermore shown that numerous articles in Indian newspapers attest that Complainant's trademark is well-known and is exploited in India.
It can be noted that the word “michelin” does not have any meaning in English or in Hindi, - this is a further argument that Respondent had no reason to choose this domain name other than profiting from the reputation of Complainant.
A trademark search prior to the registration of the domain name would have revealed Complainant's registrations. Even a simple Internet search surely would have allowed Respondent to take note of Complainant's trademarks. Presently, a search on Google or by means of any other search engine using the keyword “michelin” shows that all first results relate to Complainant's websites, products or services. In this case, this further supports a finding of Respondent's registration in bad faith (L'Oréal v Domain Park Limited, WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc v. Rarenames, Webreg, WIPO Case No. D2006-0964).
Other Panels have held that bad faith may be presumed where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (Sanofi-Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303. The reputation of the MICHELIN trademarks in this case gives support to a finding of bad faith registration.
Consequently, in view of the above, the Panel holds that Respondent registered the disputed domain name in bad faith.
A finding of bad faith use can be made inter alia where respondent “knew or should have known” of complainant's trademark rights, and nevertheless used a domain name incorporating a mark, in which he had no rights or legitimate interests (Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763).
The disputed domain name directs to a website displaying commercial links in the field of tires, maps, route planners, guides and with the presence of what appear to be pay-per-click advertising links. This indicates that the purpose of Respondent for registering the disputed domain name was likely to redirect Internet users to websites offering goods and services in direct competition with Complainant's products and services. It appears that Respondent has set up this redirection in the expectation of some financial return, because these links appear to be the so-called click-through or pay-per-click devices where the operators of other websites pay a commission to Respondent for traffic redirected to them. Such practices are generally considered to be indicative of use in bad faith (Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten, WIPO Case No. D2008-0463; Société Nationale des Chemins de Fer Français v. ostrid company, Domains by Proxy, Inc., WIPO Case No. D2008-0627; Educational Testing Service (ETS) v. International Names Ltd, WIPO Case No. D2007-0449; Pepperdine University v. The CJ Group, LLC, WIPO Case No. D2007-1389; L'Oréal v. Tracey Johnson, WIPO Case No. D2008-1721; Mobile Communication Service Inc v. Webreg, RN, WIPO Case No. D2005-1304; TT-Line Company Pty v. Vertical Axis, Inc, WIPO Case No. D2007-1742).
Consequently, in view of the above, the Panel concludes that Respondent used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) 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 name <mymichelin.com> be transferred to Complainant.
Dated: August 7, 2009