WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Kim Bum LLC / PrivacyProtect.org
Case No. D2012-2092
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Kim Bum LLC of Seoul, Republic of Korea / PrivacyProtect.org of Nobby Beach, Australia.
2. The Domain Name and Registrar
The disputed domain name <michelinrewards.com> is registered with RegisterMatrix.com Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 22, 2012. On October 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 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.1 The Center sent an email communication to the Complainant on October 26, 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 amendment to the Complaint on October 30, 2012.
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” 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 November 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2012.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on December 5, 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 Michelin owns the trademark MICHELIN, as used in connection with automobiles and tires, as well as in connection with hotel/restaurant guides and maps. Michelin has marketing operations in more than 170 countries, including Australia and the Republic of Korea.
The mark MICHELIN has been registered by Complainant in countries around the world, including in Australia and the Republic of Korea. (See Complaint, Annexes 10 and 28.) Complainant also owns the domain name registration for <michelin.com>.
The disputed domain name, <michelinrewards.com>, was registered on June 14, 2012. It resolves to a website displaying sponsored links in the field of tires. (See Complaint, Annex 8.) The links direct Internet users towards websites offering for sale different brands of tires, including those of Complainant’s competitors.
5. Parties’ Contentions
Complainant maintains that the disputed domain name is confusingly similar to Complainant’s MICHELIN mark. Complainant points out that the disputed domain name reproduces the MICHELIN mark in its entirety and that the addition of the generic term “rewards” does not dispel any likelihood of confusion, especially in view of the fact that Complainant offers a rewards program. Furthermore, Complainant adds, “the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name.”
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <michelinrewards.com>. Complainant indicates that Respondent is not affiliated with Complainant in any way nor has Respondent been authorized by Complainant to use and register its marks, or to seek registration of any domain names incorporating such marks. Complainant adds that Respondent is not commonly known by the “Michelin” name and has so far not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
On the issue of “bad faith” registration and use, Complainant first maintains that, in view of the fact that Complainant and its MICHELIN mark are well-known throughout the world, it is implausible that Respondent was not aware of Complainant when the disputed domain name was registered. “The use of the disputed domain name suggests that Respondent was perfectly aware of Complainant and its MICHELIN trademark. Indeed, the term `reward’ is a direct reference to the Michelin star rating, which is one of the most recognized rating system[s] in the world.”
Complainant points out that previous UDRP panels have held that the use of domain names to divert Internet users and to direct them to a webpage providing click-through revenue evidences bad faith. Moreover, Complainant asserts, “there is no doubt that many Internet users attempting to visit Complainant’s website have ended up on the web page set up by Respondent.”
Complainant also argues that it is likely that Respondent registered the disputed domain name to prevent Complainant from reflecting its trademark in the disputed domain name, in violation of paragraph 4(b)(iii) of the Policy.
Finally, Complainant asserts that the presence of the generic word “reward” in the disputed domain name illustrates Respondent’s bad faith since it refers to Complainant’s activities, i.e., its star rating program.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the MICHELIN mark. As noted by Complainant, the domain name incorporates the mark in its entirety. Moreover, as Complainant suggests, the addition of the generic term “rewards” to the disputed domain name heightens the similarity to the Panel between the mark and domain name in view of Complainant’s well-known use of the term “reward” in connection with its star rating system.
The evidence further establishes that Complainant has rights in the MICHELIN mark. Such rights are established by Complainant’s ownership of registrations for such mark around the world as well as its long use of such mark.
B. Rights or Legitimate Interests
The Panel finds that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, is commonly known by the disputed domain name, or is making a legitimate non-commercial or fair use of the disputed domain name. Nor is there any evidence that Complainant authorized Respondent to use the MICHELIN mark or to register a domain name incorporating such mark.
C. Registered and Used in Bad Faith
The Panel concludes that the disputed domain name was registered and is being used in bad faith. The evidence establishes that Respondent’s confusingly similar disputed domain name resolves to a pay-per-click website displaying sponsored links to sites offering brands of tires, including those of Complainant’s competitors. Presumably, Respondent earns income from such site. As a result, and consistent with the views of other UDRP panels, the instant Panel concludes that, by using the disputed domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to its site or those of others by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such sites or of the goods or services found at such sites, in violation of paragraph 4(b)(iv) of the Policy.
Further evidence of the requisite “bad faith” registration and use may be found in the fact that the disputed domain name incorporates the MICHELIN mark, which has been registered and used around the world long prior to registration of the disputed domain name and that the disputed domain name incorporates a term, “rewards,” which is a direct reference to the Michelin star rating system in the culinary world.
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 <michelinrewards.com> be cancelled.
Jeffrey M. Samuels
Date: December 19, 2012
1 Specifically, the Registrar indicated that the domain name in issue was owned by Kim Bum LLC, as opposed to PrivacyProtect.org. In its “preliminary remarks” to the Amended Complaint, Complainant indicated that it decided not to replace PrivacyProtect.org with Kim Bum LLC but to add Kim Bum LLC as a named Respondent.