WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Shu Lin

Case No. D2012-1921

1. The Parties

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

The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Shu Lin of Dalian, China.

2. The Domain Name and Registrar

The disputed domain name <michelinn.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 September 27, 2012. On September 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 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 October 2, 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 October 4, 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 October 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2012.

The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on November 7, 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 tire industries, as well as publishing hotel and restaurant guides under the MICHELIN trademark. The Complainant has marketing operations in 170 countries throughout the world. The Complainant is the owner of many trademarks throughout the world incorporating MICHELIN, including the International Trademark No. 348615 registered on July 24, 1968. The Complainant is also the registrant of numerous domain names including <michelin.com> and <michelin.com.au>.

The disputed domain name <michelinn.com> was registered on May 15, 2012 and resolves to a parking page which displays commercial links relating to tourism services.

5. Parties’ Contentions

A. Complainant

The Complainant owns the MICHELIN trademark, which is largely protected around the world in connection with the automotive industry, hotel and restaurant guides and maps, especially in Australia, the European Union and within the International Trademark System (Madrid System for the International Registration of Marks).

MICHELIN is a “well-known” and “famous” trademark. Consequently, the Respondent knew about the Complainant’s trademark before the disputed domain name was registered.

The disputed domain name <michelinn.com> resolves to a parking page displaying commercial links.

The disputed domain name comprises the Complainant’s trademark with a single misspelling of an element of the mark: a double consonant “n” at the end.

The Respondent has no prior rights or legitimate interests in the disputed domain name.

The Respondent is not affiliated with the Complainant in any way nor has the Respondent been authorized to use the trademark MICHELIN.

The Respondent has never been commonly known by the disputed domain name or the trademark MICHELIN.

Respondent used a typographical error to engage in “typosquatting”.

The Respondent uses the disputed domain name to divert web traffic for commercial gain using the good will built up by Complainant.

The disputed domain name resolves to a parking page displaying commercial links, which evidences Respondent’s intention to exploit Internet user’s confusion between Complainant’s trademark and the disputed domain name to obtain commercial benefit.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules requires this Panel to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established it has rights to the MICHELIN trademark.

The disputed domain name incorporates the Complainant’s MICHELIN trademark in its entirety. The only difference between the disputed domain name and the Complainant’s mark is the inclusion of the letter “n”.

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” may be disregarded (See Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).

Additionally, as the Respondent is in default, it has brought no argument to support the contention that the disputed domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Respondent has failed to demonstrate such rights or legitimate interests. The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods or services by its using of the disputed domain name and has not rebutted the Complainant’s prima facie case. Nor has the Respondent shown that it has been commonly known by the disputed domain name.

The Panel finds that given the use made of the disputed domain name, when the Respondent registered the disputed domain name it knew that MICHELIN was the trademark of the Complainant. It registered the disputed domain name because it would be recognized as such.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel considers as an inescapable conclusion from the undisputed facts and circumstances reflected in the record that the Respondent knew of and had in mind the Complainant’s trademarks when registering the disputed domain name. See generally Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant, the very use of the domain name by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. See also Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. In view of the foregoing, and for reasons discussed as well under the preceding heading, the Panel can ascribe no motive for the Respondents’ registration and use of the disputed domain names as reflected in the record except to trade on the goodwill associated with the Complainant’s trademarks.

There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a connection to the disputed domain name or that there is conceivable good faith use for the disputed domain name. After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

The Panel is persuaded from the evidence submitted that the Respondent has indeed sought to gain commercially by attracting Internet users to its website by causing confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, as per paragraph 4(b)(iv) of the Policy.

Accordingly the Panel finds in favour of the Complainant on the third element of paragraph 4(a) of the Policy.

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 <michelinn.com> be transferred to the Complainant.

Dilek Ustun Ekdial
Sole Panelist
Date: November 16, 2012