WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / Above.com Domain Privacy

Case No. D2012-0045

1. The Parties

The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.

The Respondents are Transure Enterprise Ltd, Host Master of Road Town, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Above.com Domain Privacy of Beaumaris, Australia.

2. The Domain Name and Registrar

The disputed domain name <guidemicheline.com> is registered with Above.com Pty Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2012. On January 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 16, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 17, 2012, which included the registrant, Transure Enterprise Ltd, Host Master, as a party, and both parties named in the amended Complaint (Above.com Domain Privacy and Transure Enterprise Ltd, Host Master) are hereafter referred to collectively as “the Respondent”.

The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on January 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2012.

The Center appointed Richard Tan as the sole panelist in this matter on February 16, 2012. 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.

4. Factual Background

The Complainant is a company based in France that owns registrations for the trademark MICHELIN in many countries around the world, including Australia, in connection with the automobile and tire manufacturing industries and the publication of hotel and restaurant guides and maps. It is well known in the gastronomic world for its guide books and publications relating to food and restaurants. It has provided evidence of its various trademark registrations, which include trademarks registered in Australia for MICHELIN GUIDE, registered on March 30, 1999, for MICHELIN registered on August 23, 2000, and an International Trademark for MICHELIN, registered on July 24, 1968.

The Complainant has been established in Australia since October 1997. It also owns various websites and uses them to promote its services and products and owns domain names including <michelin.com> and <michelin.com.au> where the Respondent, Above.com Domain Privacy, is based.

The disputed domain name resolved to parking pages displaying pay-per-click links, a picture of a tire, and commercial links in English and French relating to tires, hotel and restaurant businesses and maps, and although the parking pages were at some point slightly modified, with the picture of the tire being removed, commercial links relating to itineraries, maps, the automobile industry and other fields of activity in which the Complainant operates remained.

The Respondent registered the disputed domain name on June 24, 2011.

The Complainant sent a cease-and-desist letter to the Respondent and several reminders but the letters went unanswered.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the trademarks MICHELIN and MICHELIN GUIDE in which it has rights. It contends that the disputed domain name reproduces the trademark MICHELIN, which is a famous and well-known mark, in its entirety.

In respect of its rights, the Complainant relies on the trademark registrations it owns around the world including Australia, and its long and extensive use of its trademarks, and its use and ownership of the domain names, <michelin.com> and <michelin.com.au> to advertise and promote its businesses.

The Complainant contends that the disputed domain name includes the generic word “guide”, which increases the risk of confusion as it is related to the products and services of the Complainant, which includes, as mentioned above, the publication of the Complainant’s Michelin guide books in the form of the Red and Green Guides published each year. The addition of the letter “e” to the word MICHELIN at the end of the disputed domain name is a deliberate misspelling and constitutes typosquatting. The addition of the top-level domain “.com” in the disputed domain name does not render the disputed domain name less confusing and ought to be disregarded.

It further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant and no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademarks. The Respondent has no prior rights or legitimate interests in the disputed domain name and the registration of the Complainant’s trademarks preceded the registration of the disputed domain name by many years.

The Respondent is also not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen a domain name based on the Complainant’s fame and reputation in order to generate traffic to its website that displays parking pages and pay-per-click links to goods and services of the same kind as those offered by the Complainant. The use of the website to obtain revenue from such links to take unfair monetary advantage, is not a bona fide use of the disputed domain name.

The Complainant also contends that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent must have known of the Complainant's legal rights in the trademarks at the time of the registration. It must have been the fame of the trademarks that motivated the Respondent to register the disputed domain name, and that conduct constitutes opportunistic bad faith. The Complainant further contends that the Respondent has engaged in a long pattern of abusive registration and cybersquatting and has cited various UDRP proceedings at Annex 35 of its Complaint involving the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint”. Paragraph 14(b) of the Policy further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences”, from the Respondent’s failure to comply with the Rules, “as it considers appropriate”. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed: see for example The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

A. Identical or Confusingly Similar

Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant’s MICHELIN and MICHELIN GUIDE marks are famous and well-known trademarks in which the Complainant has rights.

The Panel accepts that the disputed domain name is confusingly similar to the Complainant’s trademarks.

The disputed domain name reproduces the MICHELIN mark in its entirety but merely includes the letter “e” at the end of the disputed domain name.

The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.

In this Panel’s view, this threshold test is satisfied. The MICHELIN mark is instantly recognizable as the dominant or principal component of the disputed domain name. The Panel accepts the evidence of the Complainant that that mark has acquired widespread fame and reputation around the world and is a
well-known and famous mark, as had also been found by previous UDRP panels.

The addition of the letter “e” does not prevent the disputed domain name from being regarded as confusingly similar to the MICHELIN trademark. Neither would the presence of the top-level domain “.com” be sufficient to escape a finding of substantial or confusing similarity since that is a technical requirement of registration.

In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel accordingly finds that the disputed domain name is confusingly similar to the MICHELIN trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In the absence of a Response, the Panel is entitled to draw certain inferences against the Respondent that it has no rights or legitimate interests. The Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The evidence is that the Respondent registered the disputed domain name on June 24, 2011, which was long after the Complainant began doing business around the world and had its trademarks registered around the world, including in Australia, where the Respondent Above.com Domain Privacy is based.

There is no evidence that the Respondent was using the disputed domain name prior to notice of this dispute in connection with a bona fide offering of goods or services.

There is also no evidence that the Respondent is or has been commonly known by the disputed domain name or that the disputed domain name is in any other way identified with or related to any rights or legitimate interests of the Respondent.

On the evidence, the Complainant is in no way associated or affiliated with the Respondent nor is there any relationship between the Complainant and the Respondent that could give rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s mark.

The Panel accepts the Complainant’s contentions that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.

The Respondent is using the website to which the disputed domain name resolves to generate revenue though parking pages and pay-per-click links on its website. This use does not confer rights or legitimate interests arising from a "bona fide offering of goods or services" especially where resulting in a connection to goods or services competitive with those of the rights holder, as in this case.

It is clear that the Respondent has intentionally chosen a domain name based on a well known registered trademark in order to generate traffic to its website. The use of the website to obtain revenue from such links is not a bona fide use of the disputed domain name.

The Panel accepts that the use of a mark with an intention to derive advantage from user confusion is not legitimate use and does not confer any rights in favor of the Respondent.

The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name. In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent, namely, that it has no rights or legitimate interests in the disputed domain name.

The Panel accordingly accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and used in bad faith.

The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trademark or a mark similar thereto.

The Respondent registered the disputed domain name well after the Complainant’s mark was in use and became well-known. The Panel finds that the Respondent must have known about the Complainant’s mark and business when registering the disputed domain name. It is highly improbable that given the reputation and fame of the MICHELIN trademark, the Respondent was unaware of it at the time of the registration of the disputed domain name.

The Respondent’s choice of the disputed domain name which incorporated the MICHELIN mark and coupled that mark with the word “guide”, in circumstances where the Complainant was well known for its MICHELIN guide books on gastronomy can only lead to the conclusion that the Respondent was trying to derive unfair monetary advantage from the Complainant’s reputation by its use of the website which contained links from which revenue could be derived.

The addition of the letter “e” to the MICHELIN mark at the end of the disputed domain name was a case of typosquatting and as found in decisions like Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011, is inherently parasitic and of itself capable of being evidence of bad faith.

The Panel also notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith: see for example Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562.

The Panel also accepts the submission of the Complainant that the Respondent has engaged in a long pattern of abusive registration and cybersquatting. The Complainant has cited various UDRP decisions where the Respondent has registered domain names and in each case the panels concerned have found bad faith on the part of the Respondent. Such conduct which involves multiple UDRP cases and multiple domain names is capable of constituting bad faith.

The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <guidemicheline.com> be transferred to the Complainant.

Richard Tan
Sole Panelist
Dated: March 4, 2012