WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy and Transure Enterprise Ltd
Case No. D2013-0226
1. The Parties
Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondents are Above.com Domain Privacy of Beaumaris, Victoria, Australia and Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“Respondents”).
2. The Domain Name and Registrar
The disputed domain name <michelintrucktire.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 January 31, 2013, and named Above.com Domain Privacy as Respondent, based on its appearance in the WhoIs directory as the registrant of the disputed domain name <michelintrucktire.com>.
On February 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2013, the Registrar transmitted by email to the Center its verification response. In this response the Registrar disclosed that Transure Enterprise Ltd was the underlying Registrant and provided its contact information. The Center sent an email communication to Complainant on February 5, 2013, providing the underlying Registrant’s identity and contact information, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 7, 2013, which named the underlying Registrant as an additional 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 Respondents of the Complaint and the amended Complaint, and the proceedings commenced on February 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2013. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on March 1, 2013.
The Center appointed Steven L. Snyder as the sole panelist in this matter on March 19, 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
For many years Complainant has used the MICHELIN mark in many countries around the world. It has sought to protect its mark through numerous registrations. See, e.g., MICHELIN, International Trademark No. 348615, registered July 24, 1968; MICHELIN, Australian Trademark No. 879562, registered June 18, 2001; and MICHELIN, Community Trademark No. 004836359, registered January 4, 2006.
Complainant has also incorporated the MICHELIN mark into numerous domain names, including <michelin.com>, which was registered on December 1, 1993, and <michelin.com.au>.
On October 18, 2012, many decades after Complainant’s MICHELIN mark had become well-known around the world, the underlying Registrant obtained the disputed domain name <michelintrucktire.com>. The disputed domain name leads to a website that advertises tires of many different manufacturers, as well as car insurance and hotels.
Complainant was initially unable to discover the underlying Registrant’s identity. This is because the underlying Registrant hired Above.com Domain Privacy to be the listed registrant in the WhoIs record. After the Complaint was filed, Complainant was able to discover that the underlying Registrant was actually Transure Enterprise Ltd and was located in the British Virgin Islands.
Transure Enterprise Ltd has been on the losing end of several other UDRP proceedings. See, e.g., Accor and SoLuxury HMC v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2012-0380 (ordering disputed domain name <sofiteltower.com> be cancelled); TRS Quality, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-0630 (ordering disputed domain names <radioshackl.com> and <radioshackultimate.com> be transferred to complainant).
5. Parties’ Contentions
Complainant contends that it owns the MICHELIN trademark, which is used around the world in connection with the automobile and tire manufacturing industries, hotel and restaurant guides, and maps. This trademark, Complainant contends, is protected in many of the 170 countries in which it does business. The mark is also used in Complainant’s various domain names, including <michelin.com>.
The underlying Registrant has allegedly used the disputed domain name, <michelintrucktire.com>, for a website displaying sponsored links in the field of tires.
Once it became aware of the disputed domain name, Complainant said it elected not to send a cease-and-desist letter to the underlying Registrant . It claims to have been aware that the underlying Registrant was shielding its identity via the Above.com Domain Privacy service and felt the underlying Registrant would not respond to correspondence. Instead, Complainant filed this proceeding, which seeks the transfer of the disputed domain name, <michelintrucktire.com>, to Complainant.
Complainant argues in its Complaint that the disputed domain name <michelintrucktire.com> is confusingly similar to the MICHELIN trademark. Citing numerous UDRP decisions, Complainant argues that the mere addition of the words “truck tire” to its famous mark does not lessen any confusion.
Neither Respondent has a right or legitimate interest in the disputed domain name, contends Complainant: Respondents are not affiliated with Complainant; they have not been authorized to use the MICHELIN trademark; they are not making a bona fide offering of goods in connection with the trademark; and they are not commonly known as “Michelin”. Complainant also suggests that the underlying Registrant’s lack of any right or legitimate interest is shown by its use of a service that hides its identity in the WhoIs directory.
As for the third and final argument, Complainant contends that the disputed domain name <michelintrucktire.com> was registered and is being used in bad faith. The underlying Registrant undoubtedly was aware that MICHELIN was a well-known mark prior to the registration of the disputed domain name <michelintrucktire.com>. Bad faith is further shown by the use of the disputed domain name to divert Internet users and to direct them to a webpage providing click-through revenues to the underlying Registrant.
Complainant asks that the disputed domain name <michelintrucktire.com> be transferred to Complainant.
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
To obtain the cancellation of a domain name, a complainant must prove three elements, regardless of whether the respondent deigns to file a response to the complaint.
A. Identical or Confusingly Similar
The first element the complainant must establish is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” Policy paragraph 4(a)(i).
Complainant clearly has rights in the MICHELIN trademark: Complainant uses the mark on goods that are sold in 170 countries, it has numerous trademark registrations, and it has incorporated its mark into many domain names which lead to websites advertising Complainant’s products and services.
It is also clear that the disputed domain name <michelintrucktire.com> is confusingly similar to the widely known MICHELIN mark. Consumers would naturally assume that the disputed domain name <michelintrucktire.com> leads to a website affiliated with Complainant, one of the world’s leading tire manufacturers.
A domain name that is created by the combination of a famous mark with a generic or descriptive term will often be considered confusingly similar to the mark. See LEGO Juris A/S v. PrivacyProtect.org / Kim Bum LLC, WIPO Case No. D2012-2462 (“the addition of descriptive terms to a trademark is generally not a distinguishing feature….”); accord SoLuxury HMC v. Above.com Domain Privacy / Transure Enterprise Ltd., WIPO Case No. D2012-0380 (“the Domain Name differs from the Complainant’s mark only by the addition of the word “tower”. That is not sufficient to distinguish the Domain Name from the Complainant’s mark.”).
Complainant has established the first element.
B. Rights or Legitimate Interests
The second element a complainant must prove to prevail is that the registrant has “no rights or legitimate interests in respect of the domain name.” Policy paragraph 4(a)(ii). To rebut the complainant’s proof, the registrant may attempt to show it is using the trademark “in connection with a bona fide offering of goods or services,” or is “commonly known by the domain name,” or is “making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.” See Policy paragraph 4(c).
In this case, Respondents have made no attempt to prove they have rights or legitimate interests in the disputed domain name, <michelintrucktire.com>. Perhaps that is because Respondents’ use of the famous MICHELIN mark is obviously intended to misleadingly divert consumers. The disputed domain name leads to a website that advertises the goods of Complainant’s competitors. Neither of the Respondents has a right or legitimate interest in using Complainant’s famous mark to trick consumers into visiting a site that hawks the wares of Complainant’s competitors. See LEGO Juris A/S v. PrivacyProtect.org / Kim Bum LLC, WIPO Case No. D2012-2462 (“The Panel believes that the only reason why the Respondent registered and used the disputed domain name was to redirect Internet traffic intended for the Complainant away from it to the Respondent’s website with the intention to create income for the Respondent.”).
Complainant has established the second element.
C. Registered and Used in Bad Faith
The third element for a complainant to establish is that the “domain name has been registered and is being used in bad faith.” Policy paragraph 4(a)(iii). One way to do this is to show the registrant has “intentionally attempted to attract, for commercial gain, Internet users to [the] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on [the] web site or location.” Policy paragraph 4(b)(iv).
There is a great similarity between Complainant’s widely known MICHELIN mark and the disputed domain name, <michelintrucktire.com>. Internet users would likely believe that when they clicked on the disputed domain name, they would be taken to a website affiliated with Complainant.
The underlying Registrant apparently makes a practice of registering domain names that consist of famous trademarks and generic or descriptive terms, and then linking those domain names to websites that offer commercial goods and services of third parties. See TRS Quality, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-0630 (“The Panel has found approximately 11 WIPO cases . . . where this Respondent was cited. Transfers were ordered in all instances.”).
There is ample reason to believe that the underlying Registrant’s practice is motivated by a desire for commercial gain. See LEGO Juris A/S v. PrivacyProtect.org / Kim Bum LLC, WIPO Case No. D2012-2462 (“The Panel believes that the Respondent may benefit directly or indirectly from such confusion, for instance, by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal….”).
Complainant has established the third element.
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 <michelintrucktire.com> be transferred to Complainant.
Steven L. Snyder
Date: April 2, 2013