WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Christian Viola
Case No. D2012-2102
1. The Parties
Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is Christian Viola of Woldingham, Surrey, United Kingdom of Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <michelinfoodguide.com> and <michelinguide.net> (the “Domain Names”) are registered with Webfusion Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 23, 2012, the Registrar 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 November 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 11, 2012. After the Notification of Respondent Default by the Center, Respondent submitted Supplemental Filings by email on December 11 and December 12, 2012, including an offer by Respondent to sell the Domain Names for GBP 1,000. After having been asked by the Center, Complainant informed the Center by email of December 12, 2012 that it was not willing to suspend the proceedings in order to explore a possible settlement. The Center advised parties on December 17, 2012 that it would proceed to Panel Appointment.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on December 18, 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
According to the evidence submitted by Complainant, Complainant has numerous trademark registrations for MICHELIN, including a Community trademark registration with number No. 004836359 with date of registration of March 3, 2008 in various classes, including for tyres and tourist guides. Complainant is a leading global tyre manufacturer with operations in more than 170 countries. In addition, it publishes tourist and food guides. Complainant owns and communicates via its websites, including “www.michelin.co.uk”. The trademark registrations of Complainant have been issued prior to the registration of the Domain Names.
The Domain Names <michelinfoodguide.com> and <michelinguide.net> were registered on October 25, 2011.
5. Parties’ Contentions
Complainant submits that the Domain Names are identical or confusingly similar to its MICHELIN trademark as they contain the MICHELIN trademark in its entirety. The addition of the generic words “food” and “guide” added to the MICHELIN trademark is not sufficient to distinguish the Domain Names from the MICHELIN trademark. According to Complainant, the addition of the two generic words even increases the risk of confusion as the words directly relate to the MICHELIN green and red tourist and food guides which Complainant publishes every year. The word “food” is a direct reference to the guides which are also about restaurants.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Names as Respondent is not affiliated or related to MICHELIN in any way, nor is Respondent licensed or authorized to use the MICHELIN trademark. Respondent is also not commonly known by the Domain Names and has not acquired any trademark or service mark rights in the name or trademark. Internet users are directed to a website which is a parking page; Respondent did not demonstrate use of the Domain Names in connection with a bona fide offering of goods or services. Complainant submits that Respondent has registered and is using the Domain Name in bad faith as Respondent no doubt had knowledge of the well-known trademark of Complainant. Complainant finally mentions that Respondent had indicated that he had a buyer for the Domain Names for an amount of GBP 1,200.
Respondent did not file a substantive reply to the Complainant’s contentions contained in its Complaint. In its Supplemental Filings, Respondent offered the Domain Names for sale to Complainant for an amount of GBP 1,000.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that the Domain Names should be transferred or cancelled:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
The Panel is satisfied that the registrant of record for the Domain Names is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has established that it is the owner of various trademark registrations for MICHELIN, in particular the Community trademark registration with number 004836359 with date of registration of March 3, 2008. The Panel notes that Complainant’s registrations predate the creation date of the Domain Names.
The Domain Names <michelinfoodguide.com> and <michelinguide.net> incorporate the entirety of the well-known MICHELIN trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety. The addition of the common, descriptive or non-distinctive elements “guide” and “food” is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Names are confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names. This is particularly true as Respondent is not making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Based on the evidence provided by Complainant, Respondent redirects Internet users to a parking website. Respondent makes use of the value of the MICHELIN trademark and the likelihood of confusion with the trademark of Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. Respondent is not commonly known by the Domain Names nor has it acquired trademark rights.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Names have been registered and are being used in bad faith.
The trademarks of Complainant have been existing for a long time. Respondent knew or should have known that the Domain Names included Complainant’s MICHELIN famous trademark.
The Panel notes that the website at the Domain Names is currently a parking page. However, passive holding of the website does not prevent the Panel from finding registration and use in bad faith. The Panel further notes that Respondent undeveloped use of the website at the Domain Names which incorporates Complainant’s trademark in its entirety indicates that Respondent possibly registered the Domain Names with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, as per paragraph 4(b)(iv) of the Policy. Furthermore, the Panel finds that bad faith registration and use of the Domain Names is further indicated by the fact that Respondent offered for sale the Domain Names for amounts of GBP 1,200 and 1,000, respectively, which circumstances indicate that Respondent registered the Domain Names primarily for the purpose of the selling the Domain Names for valuable consideration in excess of the out-of-pocket costs directly related to the Domain Names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <michelinfoodguide.com> and <michelinguide.net> be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: December 24, 2012