WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. isman to
Case No. D2012-0739
1. The Parties
Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is isman to of Semarang, Jawa Tengah, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <michelinwinterreifen.info> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2012. On April 10, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 10, 2012, eNom 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 April 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2012. Upon Complainant’s request to suspend the proceeding in order for the Parties to explore a possible settlement, the Center suspended the proceeding on May 7, 2012. On June 4, 2012, Complainant requested reinstitution of the proceeding. The proceeding was reinstituted on June 5, 2012. Accordingly, the due date for Response was June 10, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 11, 2012.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 13, 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
Complainant is a French company with legal domicile in Clermont-Ferrand, France, and is active in the field of the automobile and tire manufacturing industry as well as in connection with hotel and restaurant guides and maps publications.
Complainant is the owner of at least the following registrations for the trademark MICHELIN:
• Word mark MICHELIN, International Registration Number: 348615, Registration Date: July 24, 1968; Status: Active;
• Word mark MICHELIN, Office for the Harmonization in the Internal Market (OHIM), Registration Number: 004836359, Registration Date: March 13, 2008; Status: Active.
Complainant, furthermore, is the owner of the domain name <michelin.com>.
According to the publicly available WhoIs database, the disputed domain name <michelinwinterreifen.info> was registered on September 27, 2011. On March 21, 2012 the disputed domain name redirected to a website “www.michelinwinterreifen.info” displaying advertisements for the sale of Complainant’s Michelin tires as well as those of Complainant’s competitors on the tires market through the website “www.amazon.de”.
Complainant’s Cease and Desist letter sent to Respondent by registered letter on December 21, 2011 was returned as undeliverable.
Complainant requests the disputed domain name to be cancelled.
5. Parties’ Contentions
Complainant claims to own registered rights in the MICHELIN trademark also in Indonesia (Indonesian trademark number 259984, registered on October 24, 1988, duly renewed and covering goods in class 12), thus at the place where Respondent apparently is located.
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s MICHELIN trademark because (1) the disputed domain name reproduces Complainant’s MICHELIN trademark in its entirety and (2) the mere addition of the generic and descriptive terms “winter” as well as “reifen” is not capable to distinguish the disputed domain name from Complainant’s MICHELIN trademark, especially since the (German) term “Winterreifen” is directly linked with Complainant and its products.
Complainant further suggests that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) Complainant has never granted Respondent any license or other authorization to use its MICHELIN trademark, (2) Respondent is not commonly known by the name “Michelin” nor is it affiliated with Complainant in any other way and (3) Respondent uses the disputed domain name to resolve to a website displaying advertisements for the sale not only of Michelin tires but also of tires of Complainant’s direct competitors on the tires market.
Finally, Complainant claims that the disputed domain name was registered and is being used in bad faith since (1) given the worldwide recognition of Complainant’s MICHELIN trademark, it is inconceivable that Respondent registered the disputed domain name unaware of Complainant’s rights and reputation in the said designation, (2) a regular Internet search would have revealed Complainant’s existence and its MICHELIN trademark and (3) the redirection of the disputed domain name to a website which sells both Complainant’s and its competitors’ products clearly indicates that Respondent has intentionally attempted to attract for commercial gain Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website or location of a product.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <michelinwinterreifen.info> is confusingly similar to the MICHELIN trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the MICHELIN trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic terms “winter” as well as the German term for tires, namely “reifen”, both of which directly refer to Complainant’s business, is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s MICHELIN trademark into the disputed domain name.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate, noncommercial or fair use without intent for commercial gain.
Complainant has produced evidence that the disputed domain name redirected on March 21, 2012 to a website at “www.michelinwinterreifen.info” displaying advertisements for the sale not only of Complainant’s own tires but as well of those of Complainant’s competitors on the tires market through the website “www.amazon.de”.
The Panel, therefore, concludes that Respondent – irrespective of the alleged reputation of the MICHELIN trademark throughout the world – apparently was aware of Complainant’s MICHELIN trademark at the time of the registration of the disputed domain name and that the latter obviously alludes to Complainant’s MICHELIN trademark and product.
Against this background, the use of the disputed domain name to redirect to an online sales platform for both Complainant’s tires as well as those of Complainant’s direct competitors on the tires market is certainly neither noncommercial nor fair use of the disputed domain name without intent for commercial gain. Moreover, such use is also not fulfilling the requirements of a bona fide offering of goods or services because (1) Respondent obviously has never been authorized to use Complainant’s MICHELIN trademark as a domain name or on Respondent’s website or in any other way and (2) Respondent is using the disputed domain name to run a website that does not accurately and prominently disclose its relationship with the trademark holder and (3) competitors’ goods are also advertised on the website associated with the disputed domain name (see WIPO Overview 2.0, paragraph 2.3).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on April 17, 2012.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s trademark MICHELIN, to a website for the online sale of products of Complainant’s direct competitors on the tires market without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to his own website, by creating a likelihood of confusion with Complainant’s MICHELIN trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product thereon. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent not only kept silent on Complainant’s Cease and Desist letter of December 21, 2011 as well as on the Complaint, but that Respondent apparently also provided improper WhoIs information for the disputed domain name since the Cease and Desist letter sent to the address supplied by Respondent in the respective WhoIs information was returned as undeliverable.
All of those circumstances taken together throw a light on Respondent’s behavior which at least supports the finding of a registration and use of the disputed domain name in bad faith.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
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 <michelinwinterreifen.info> be cancelled.
Stephanie G. Hartung
Dated: June 19, 2012