WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Ni How / Above.com Domain Privacy

Case No. D2012-1564

1. The Parties

The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France represented by Dreyfus & associés, France.

The Respondents are Above.com Domain Privacy of Beaumaris, Victoria, Australia and Ni How of Nanjing, China.

2. The Domain Names and Registrar

The domain names <estrellasmichelin.com> and <michelinha.com> (collectively, the “Disputed Domain Names”) are registered with Above.com Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 2, 2012. On August 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 6, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 6, 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 August 21, 2012.

The Center verified that 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 August 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2012.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on September 24, 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

The Complainant is a French company which operates in the automobile and tyre industries, as well as publishing hotel and restaurant guides under the MICHELIN trade mark. The Complainant has marketing operations in 170 countries throughout the world. The Complainant is the proprietor of many trademarks throughout the world incorporating MICHELIN, including an International Trade Mark registered on July 24, 1968. The Complainant is also the registrant of numerous domain names including <michelin.com>.

The Respondent, Ni How, is based in China, and registered the Disputed Domain Names using a privacy shield (Above.com Domain Privacy). All subsequent references to “the Respondent” shall be a reference to the underlying registrant, i.e., Ni How.

The Disputed Domain Name <michelinha.com> was registered on March 1, 2012. The Disputed Domain Name <estrellasmichelin.com> was registered on May 29, 2012. The Disputed Domain Names both resolve to parking pages which display sponsored links (collectively referred to as the “Websites”).

On a number of occasions when viewed by the Panel, the Disputed Domain Name <michelinha.com> pointed to the “www.gobuya.com” website which operates as an online marketplace selling various goods. However, at the time of drafting the decision, the Disputed Domain Name <michelinha.com> resolved to a parking page featuring sponsored links relating to tyres and other automobile-related goods and services. This is consistent with the Complainant’s description of this website at the time of filing the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarised as follows:

(a) The Disputed Domain Names are confusingly similar to a trade mark or service mark in which the Complainant has rights:

(i) the Complainant is the proprietor of a number of trade mark registrations incorporating “Michelin” across the world, including in Australia and China where the Respondents are located;

(ii) the Complainant also operates domain names incorporating its trademarks to promote its services, including:

i. <michelin.com>;

ii. <michelin.com.au>; and

iii. <michelin.com.cn>.

(iii) the Disputed Domain Names incorporate the Complainant’s trade mark in its entirety;

(iv) the addition of the Spanish word “estrellas”, i.e., stars in English to form the Disputed Domain Name <estrellasmichelin.com> is not sufficient to negate the similarity with the Complainant’s MICHELIN trade mark. The Complainant submits that the addition of the Spanish word “estrellas” will confuse Internet users as the term is a direct reference to the Complainant’s Michelin star rating, one of the most recognized rating systems in the culinary world;

(v) the addition of the term “ha” to form the Disputed Domain Name <michelinha.com> is not sufficient to negate the similarity with the Complaint’s MICHELIN trade mark. The Complainant submits that the addition of the term “ha” could refer to “high adhesion”, one of the main qualities of Michelin tyres; and

(vi) the Respondent has created a likelihood of confusion with the Complainant’s trade mark by registering the Disputed Domain Names, as the public would reasonably assume that the Disputed Domain Names would be owned by, or are related to, the Complainant.

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names:

(i) the Respondent is not commonly known by the name “Michelin” and the Complainant is not affiliated with the Respondent, nor has the Complainant authorised the Respondent’s use of the Complainant’s trade mark in the Disputed Domain Names;

(ii) the Respondent has no prior rights or legitimate interests in the Disputed Domain Names as the registration of the MICHELIN trade mark preceded the registration of the Disputed Domain Names by many years;

(iii) the term “michelin” has no dictionary meaning in English, the term of the Registration Agreement;

(iv) the Respondent cannot argue an intention to develop legitimate activities using the Disputed Domain Names as these domain names are so similar to the Complainant’s MICHELIN trade mark;

(v) the Respondent has not shown that the Disputed Domain Names are used for a bona fide offering of goods or services. The Disputed Domain Names both resolve to parking pages; and

(vi) the Respondent registered the Disputed Domain Names through a privacy shield service to hide its identity and prevent the Complainant from contacting the Respondent.

(i) It is implausible that the Respondent was not aware of the Complainant’s trade mark when registering the Disputed Domain Names as the Complainant and its MICHELIN trade mark are well-known throughout the world, including in China and Australia where the Respondents are located. Given the worldwide fame of the MICHELIN trade mark, bad faith registration may be inferred;

(ii) the Respondent’s reproduction of the trade mark in its entirety, combined with the generic terms “estrellas” and “ha” shows that the Respondent was aware of the existence of the Complainant’s trade mark;

(iii) the Respondent's failure to perform a trade mark search to reveal the existence of the Complainant and its trade mark is a contributory factor to its bad faith;

(iv) the Respondent’s registration of a well-known trade mark suggests opportunistic bad faith;

(v) the Respondent’s use of the Disputed Domain Names containing the Complainant’s MICHELIN trade mark to direct Internet users to webpages displaying pay-per-click links for commercial gain constitutes use in bad faith;

(vi) the Respondent registered the Disputed Domain Names to prevent the Complainant from registering the Disputed Domain Names itself; and

(vii) the Respondent’s use of the Disputed Domain Names containing the Complainant’s MICHELIN trade mark to display commercial links related to the Complainant’s competitors constitutes use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file such Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences submitted by the Compliant as true (See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:

a) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

c) the Disputed Domain Names have been registered and are being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in respect of the MICHELIN trade mark on the basis of the numerous trade mark registrations owned by the Complainant for MICHELIN.

It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com” should be disregarded (See Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0767).

Each of the Disputed Domain Names incorporates the Complainant’s MICHELIN trade mark in its entirety. The only difference between each of the Disputed Domain Names and the Complainant’s mark is the inclusion of the generic terms “estrellas” and “ha”. It is well established that in cases where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the disputed domain name and the mark. (See Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088).

The Panel finds that “Michelin” is the distinctive and prominent component of each of the Disputed Domain Names and the addition of the generic terms “estrellas” and “ha” does nothing to distinguish the Disputed Domain Names from the Complainant’s trade mark. Given that the Complainant publishes culinary guides awarding restaurants with “Michelin Stars”, the “estrellas” (which means “stars” in English) component of the <estrellasmichelin.com> Disputed Domain Name serves to increase the likelihood that consumers will be misled into thinking that this domain name is somehow associated with the Complainant. Further, the Panel is of the view that the addition of the generic letters “ha” in the <michelinha.com> Disputed Domain Name is insufficient to distinguish the Disputed Domain Names from the Complainant’s trade mark.

The Panel accordingly finds that the Disputed Domain Names are confusingly similar to the MICHELIN trade mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of proof to demonstrate it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant contends that the Respondent is not connected or associated with the Complainant’s business and is not on any other basis licensed or authorised to use its MICHELIN mark. Further, the Complainant submits that the Respondent has never been commonly known by the Michelin name. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names and the Respondent has the burden of proving that it does possess such rights or legitimate interests. As no response has been submitted by the Respondent, the Panel will base its findings in this respect, on inferences that can be reasonably drawn from the Complainant’s evidence.

The Panel accepts that the Complainant has not licenced or otherwise authorised the Respondent to use the MICHELIN trade mark. The Panel agrees that the Complainant’s use of the MICHELIN trade mark (which has no dictionary meaning in English) in its entirety renders no plausible explanation as to why the Respondent selected the trade mark other than to trade on the goodwill of such a mark (See RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242). The Panel also accepts that there is no evidence to suggest that the Respondent is commonly known by either the Disputed Domain Names or the MICHELIN mark.

Accordingly, the Respondent needs to demonstrate that it has acquired rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy through use of the Disputed Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial use.

The Disputed Domain Names both resolve to websites which feature sponsored links promoting the products of the Complainant’s competitors, from which the Respondent presumably derives income. Therefore, the finding of legitimate noncommercial use is precluded.

The use of a domain name containing a well-known trade mark for the purpose of collecting referral fees from sponsored advertising links, has been consistently held not be a bona fide offering of goods and services. (See Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437, and PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162).

Accordingly, the Panel finds that there is insufficient evidence that the Respondent can assert rights or legitimate interests in either of the Disputed Domain Names and therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Names in bad faith.

Evidence of bad faith can include actual or constructive notice of a well-known trade mark at the time of registration of a domain name by a Respondent (see Samsonite Corporation v. Colony Holding, NAF Claim No. FA 94313). The Panel accepts that the Complainant’s MICHELIN trade mark was well known worldwide in connection with the automobile and tyre manufacturing industry, as well as in connection with hotel/restaurant guides and map publications when the Respondent registered the Disputed Domain Names in 2012.

The Panel accepts that the Respondent knew of the Complainant’s MICHELIN trade mark at the time of registering the Disputed Domain Names, based in part on the worldwide fame of the MICHELIN trade mark as accepted by other UDRP panelists in various domain name proceedings involving the Complainant (see Compagnie Générale des Etablissements Michelin v.Transure Enterprise Ltd, Host Mater / Above.com Domain Privacy, WIPO Case No. D2012-0045; Compagnie Générale des Etablissements Michelin v. Terramonte Corp, Domain Manager, WIPO Case No. D2011-1951; Compagnie Générale des Etablissements Michelin (Michelin) v. Jorge Almeida, WIPO Case No. D2011-0147; Compagnie Générale des Etablissements Michelin v. Gioacchino Zerbo, WIPO Case No. D2010-0865; Compagnie Générale des Etablissements Michelin v. Pavol Horecny, WIPO Case No. D2009-1554; Compagnie Générale des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022).

The incorporation of the word “estrellas” (meaning “stars” in English) in the Disputed Domain Name <estrellasmichelin.com> is a clear reference to the Complainant’s Michelin Star rating system and further evidence that the Respondent knew of the Complainant and its rights in the MICHELIN trade mark. The Panel finds that there is no plausible explanation for the Respondent’s use of the famous MICHELIN trade mark in its entirety other than to trade on the Complainant’s goodwill in the trade mark (see RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242). In these circumstances the Panel finds that there is no basis on which to infer that the Respondent has used the Disputed Domain Names in any manner or for any purpose otherwise than in bad faith.

The Disputed Domain Names both resolve to parking pages containing sponsored links to the Complainant’s competitors, which is clear evidence of bath faith use (see Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753; S.N.C. Jesta Fontainebleau v. Po Ser, WIPO Case No. D2009-1394; and Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).

Given the degree of fame of the Complainant’s MICHELIN trade mark, the Panel accepts that the Respondent has registered and used the Disputed Domain Names solely for the purpose of capitalising on the Complainant’s reputation and goodwill to generate profits from sponsored links contained on the websites. Not only has the Respondent done so by attracting to the Websites customers, who the Panel accepts would be drawn to the Websites on the mistaken assumption that the Websites were authorised by or connected with the Complainant, but also then pointing those customers to competitors of the Complainant. In these circumstances the Panel finds that there is no basis on which to infer that the Respondent has used the Disputed Domain Names in any manner or for any purpose otherwise than in bad faith.

The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Names.

7. Decision

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, <estrellasmichelin.com> be transferred to the Complainant, and the Disputed Domain Name <michelinha.com> be cancelled.

Gabriela Kennedy
Sole Panelist
Dated: October 9, 2012