WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin (Michelin) v. Above.com Domain Privacy / Direct Navigation Data Inc.
Case No. D2012-2423
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin (Michelin) of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Above.com Domain Privacy of Beaumaris, Australia/ Direct Navigation Data Inc., of Panama City, Panama.
2. The Domain Name and Registrar
The Disputed Domain Name <michelinltxms2.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2012. On December 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 13, 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 December 17, 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 December 21, 2012.
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 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2013.
The Center appointed Neil J. Wilkof as the sole panelist in this matter on February 5, 2013. 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 Disputed Domain Name <michelinltxms2.com> was registered on August 12, 2012 (the "Disputed Domain Name").
The Complainant has the following registrations (Annex 9 to the Complaint):
MICHELIN, International Trademark No. 348615, in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20, registered on July 24, 1968.
MICHELIN, International Registration No. 816915, in classes 35, 37, 39 and 42, registered on August, 27, 2003.
MICHELIN, European Community Trademark Registration No. 004836359, in classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17,18, 20, 21, 24, 25, 26, 34 and 39, registered on May, 1, 1972.
MICHELIN, Australian Trademark Registration No. 258104, in class 12, registered on August 18, 1995.
(collectively, "the MICHELIN Mark")
LTX M/S, International Trademark No. 641887, in class 12, registered on August 18, 1995 ("the LTX M/S Mark").
(The MICHELIN Mark and the LTX M/S Mark collectively, "the Mark").
5. Parties’ Contentions
The Complainant engages in the manufacture and marketing of tires for all types of vehicles, including automobiles, trucks and buses, and it has a commercial presence in over 170 countries. It employs 111,090 employees (Annex 4b to the Complaint). In addition, the Complainant is engaged in goods and services in connection with hotel and restaurant guides and map publications. The MICHELIN Mark enjoys a strong reputation with respect to vehicle tires and French gastronomy (Annex 4a to the Complaint). The Complainant maintains various Internet websites to offer its goods and services, including the website “www.michelin.com.au” (Annexes 5, 11 to the Complaint).
Since 1997, the Complainant has engaged directly in Australia with respect to its goods and services. For 50 years prior to that time, tire products bearing the MICHELIN Mark were distributed in Australia by local distributors (Annex 6 to the Complaint). The Complainant maintains an extensive sales and service network in Australia, with over 800 retailers selling passenger car and light truck tires and more than 300 retailers selling truck and bus tires (Annex 7 to the Complaint). As a result, the Complainant's products are the top choice in the region for customers, ranging from consumers to corporate fleets, government institutions, public transport and car racing teams.
The Complainant became aware of the registration of the Disputed Domain Name in the name of the Respondent. It determined that the Disputed Domain Name resolves to a web page that displays sponsored links related to tire products, including links to competitors of the Complainant. Because the Respondent provides for the registration of domain names on an anonymous basis, the Complainant did send a cease and desist letter requesting the identity and contact details of the registrant. The Complainant thus commenced the present action, seeking cancellation of the Disputed Domain Name.
Based on the foregoing, the Complainant alleges the following:
1. The Disputed Domain Name is confusingly similar to the Mark.
2. The Respondent has no rights or legitimate interests in the Disputed Domain Name.
3. The Disputed Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
Based on the registrations for the MICHELIN Mark and the LTX M/S Mark, the Panel rules that the Complainant has established rights in the Mark.
The registrations for each of these marks, dating back to 1968 for the MICHELIN Mark and to 1995 for the LTX M/S Mark, long predate the registration of the Disputed Domain Name, being August 12, 2012.
For purposes of discussion, the Disputed Domain Name can be divided in two components—the MICHELIN Mark and the LTX M/S Mark. With respect to the MICHELIN Mark, the Disputed Domain Name reproduces the MICHELIN Mark in its entirety. With respect to the LTX M/S Mark, the Disputed Domain Name contains the alphanumeric designation "ltxms2", which the Panel finds is confusingly similar to the LTX M/S Mark. The Complainant explains that the absence of the backslash is due to the fact that it is not possible to register such a sign as part of a domain name. Whether this is in fact true, the absence of the backslash and the addition of the numeral "2" are not sufficient to change the conclusion that the alphanumeric designation is confusingly similar to the LTX M/S Mark. This is especially so given that the Complainant uses the designation "LTX M/S-2" in connection with its tire products (see Annex 30 to the Complaint).
It is well-established that “a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the UDRP” (Dr. Ing. H.c.F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888). As noted, the Disputed Domain Name reproduces the MICHELIN Mark in its entirety. Moreover, the second component of the Disputed Domain Name is confusingly similar to the LTX M/S Mark. The presence of the generic top level domain (gTLD) “.com” should be disregarded in comparing a domain name to a trademark (Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
For the foregoing reasons, the Panel rules that the Disputed Domain Name is confusingly similar to the Mark, taken as a whole.
B. Rights or Legitimate Interests
Here, as well, the Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
The Panel finds that the Complainant has carried its burden of proof on this element and it has demonstrated a prima facie case that the Respondent has no rights or legitimate interests.
Having regard to the three grounds set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in the Disputed Domain Name, there is no basis to conclude that any of them apply. The Respondent has not registered nor otherwise established any rights in any mark that consists of, or contains, the Mark taken as a whole, or in either the MICHELIN Mark or the LTX M/S Mark, respectively. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the Mark taken as a whole, or in either the MICHELIN Mark or the LTX M/S Mark, respectively. The name of the Respondent bears no resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the Mark, taken as a whole, or by either the MICHELIN Mark or the LTX M/S Mark, respectively. Further, there is no evidence that the Respondent is making legitimate noncommercial or fair use of the Disputed Domain Name.
Based on the foregoing, the Panel rules that the Respondent has no rights or legitimate interests in the Mark.
C. Registered and Used in Bad Faith
Here, as well, the Respondent has failed to respond to the Complainant. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
Paragraph 4(b) of the Policy sets out circumstances that point to bad faith conduct on the part of the Complainant. Given the wide diversity of circumstances in which bad faith conduct may be found, the list provided in Paragraph 4(b), as follows, is non-exhaustive:
(i) Circumstances indicate that the Respondent has registered the Disputed Domain Name primarily to sell or otherwise transfer it to the Complainant who is the owner of the trademark or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.
(ii) The Disputed Domain Name has been registered to prevent the Complainant from reflecting its Mark in a corresponding domain name.
(iii) The Disputed Domain Name has been registered primarily for the purpose of disrupting the business of a competitor.
(iv) The use of the Disputed Domain Name indicates an intention to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
Under the circumstances, the Respondent's selection of the Mark supports the conclusion that it acted in bad faith. This is especially so with respect to the MICHELIN Mark. Other panels have found that the MICHELIN Mark is a well-known mark (see e.g. Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd., Host Master/Above.com Doman Privacy, WIPO Case No. D2012-0045). As such, it is not reasonable to conclude that the Respondent did not have knowledge, or should have had knowledge, of the MICHELIN Mark prior to the adoption of the Disputed Domain Name. Under such circumstances, the adoption of a domain name that is so similar to a well-known trademark has been held as a basis for a finding of bad faith (Sanofi-Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303). This conclusion is applicable in the instant circumstances.
Further, the use of the Disputed Domain Name by the Respondent indicates an intention to attract Internet users to its website for commercial gain by taking advantage of the Complainant's reputation, especially in connection with the MICHELIN mark. The Disputed Domain Name resolves to a website that includes a list of so-called "Related Searches", some of which purport to relate to tires or tire products. Above the list is a photograph of an automobile wheel and tire. The photograph and listings under the caption "Related Searches" suggest a connection with tire products, the very products that are so strongly identified with the Complainant. There is a reasonable likelihood, therefore, that a user will be confused into thinking that there is a connection between the Complainant and the website.
In attempting to carry out a "Related Search", a user is directed to various sponsored links apparently belonging to third parties. It is well-established that a Panel may visit the website linked to the Disputed Domain Name to obtain further information about its use. In so doing , the Panel notes that the claim by the Complainant that the user is directed to links of competitors of the Complainant's competitors was not supported. Nevertheless, for the reasons set out above, this point does not affect the ultimate disposition of the case. The circumstances so described are evidence of bad faith.
This has been well-described in section 3.8 of the "WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition", as follows:
"3.8 Can third party or "automatically" generated material appearing on a website form a basis for finding bad faith?
Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant, unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks."
No such good faith attempt by the Respondent has been shown in the instant case, further supporting the conclusion that the Respondent has acted in bad faith.
Therefore, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith.
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 <michelinltxms2.com> be cancelled.
Neil J. Wilkof
Date: February 15, 2013