WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Direct Navigation Data Inc.

Case No. D2012-1448

1. The Parties

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

Respondent is Above.com Domain Privacy / Direct Navigation Data Inc., of Beaumaris, Australia and

Panama, Panama, respectively.

2. The Domain Name and Registrar

The disputed domain name <mchelin.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 July 17, 2012. On July 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 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 Complainant on August 1, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 2, 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 Respondent of the Complaint, and the proceedings commenced on August 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 24, 2012.

The Center appointed Fernando Triana as the sole panelist in this matter on August 31, 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

Complainant has owned MICHELIN trademark registrations in Australia, the European Community, and the International Trademark System (Madrid System for the International Registration of Marks) since before the disputed domain name was registered by Respondent. According to the International Trademark System, MICHELIN trademark is registered to identify:

Complainant has owned the domain name <michelin.com> since December 1, 1993.

5. Parties’ Contentions

A. Complainant

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 Community and within the International Trademark System (Madrid System for the International Registration of Marks).

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

The disputed domain name <mchelin.com> resolves to a parking page displaying sponsored links related to tires and Complainant’s competitors.

Complainant had previously initiated a proceeding against the same disputed domain name. In that prior proceeding the domain name was cancelled and a month later was registered by the Respondent.

The disputed domain name substantially reproduces Complainant’s trademark with the mere deletion of the letter “I”. The aforementioned deletion does not affect the appearance or pronunciation of the disputed domain name.

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

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

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

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

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 sponsored links in the field of tires, 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

Respondent did not reply to Complainant’s contentions.

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 in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Likewise, paragraph 10(d) of the Rules, provides that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

The Panel wants to place special emphasis on the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence. The Panel is empowered to confirm this evidence ex officio.

Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that a disputed domain name be cancelled or transferred:

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

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

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

This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:

First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent.

A. Identical or Confusingly Similar

Complainant contends it is the owner of the trademark MICHELIN in Australia, the European Community and within the International Trademark System (Madrid System for the International Registration of Marks), to identify goods and services related to automobile and tire manufacturing industries as well as in connection with hotel and restaurant guides and maps publication.

Existence of a trademark or service mark in which the Complainant has rights

Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. As a matter of general principle, industrial property rights are typically acquired by registration before a competent office.

The generally accepted definition of a trademark, involves the concept of a distinctive force as the most relevant element. It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

However, the UDRP does not discriminate between registered and unregistered trademarks¹ and thus, it is well established that a Complainant is not required to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

In this case, Complainant has proven its rights in the trademark MICHELIN (Exhibit 6 to the Complaint), such as:

- Australian Trademark Registration No. 879562 registered on June 18, 2001, to identify goods and services in classes 5, 6, 7, 8, 9, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42;

- European Community Trademark Registration No. 4836359 registered on March 13, 2008, to identify goods and services in classes 1,3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 34 and 39; and

- International Trademark System (Madrid System for the International Registration of Marks) Trademark Registration No. 348615 registered on July 24, 1968, to identify goods and services in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20.

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated goods and services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.

Thus, Complainant established its rights in the trademark MICHELIN.

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark MICHELIN for purposes of Paragraph 4(a)(i) of the Policy.

Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark

Complainant alleges that the disputed domain name substantially reproduces Complainant’s trademark with the mere deletion of the letter “i” which does not affect the appearance or pronunciation of the disputed domain name.

In the first place, before establishing whether or not the disputed domain name <mchelin.com> is confusingly similar to the Complainant’s trademark MICHELIN, the Panel wants to point out that the addition of generic top-level domains (gTLD), i.e., “.com,” “.biz,” “.edu,” or “.org”, are not generally considered when determining if the disputed domain name is identical or confusingly similar to the registered trademark². Neither do the addition of country code top-level domains (ccTLD), i.e., “.co.”, “.de”, “.cr”, “.es”, nor the insertion of a gTLD have a distinctive function³.

UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, WIPO Case No. D2000-0477, the panel stated that:

“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.

Furthermore, the Panel believes that the disputed domain name <mchelin.com> is confusingly similar to the trademark MICHELIN as per the typical UDRP criteria. Moreover, the spelling similarity is a criterion used by several Trademark Offices⁴ to determine whether or not two trademarks are confusingly similar⁵. It refers to the coincidence in the position of the letters that make up the trademarks compared, making emphasis on the similarities rather than on the differences. In this case, the Panel will use the same criterion to determine if the trademark MICHELIN and the disputed domain name <mchelin.com> are similar: seven out of the eight letters that make up the trademark MICHELIN are present in the disputed domain name <mchelin.com> in the exact same position. The only difference found between them in the absence of the letter “i” in the disputed domain name. Thus, they are confusingly similar.

The Panel confirms that the disputed domain name <mchelin.com> is indeed a misspelling of the trademark MICHELIN, which does not seem to be accidental but rather a purposeful decision of Respondent. This topic will be further addressed in Section C below.

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name <mchelin.com> is confusingly similar to the Complainant’s trademark MICHELIN and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.

B. Rights or Legitimate Interests

Prima Facie Case

Regarding this second element of paragraph 4(a) of the Policy, UDRP Panels have agreed that requiring a complainant to prove the lack of rights or legitimate interests of a respondent in the disputed domain name is often an impossible task: it not only requires proving a negative but also demands access to information that is usually within the knowledge of a respondent⁶.

In Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121, the panel stated that:

“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.

Therefore, a complainant is required to make a prima facie case that respondent lacks of rights or legitimate interests in a disputed domain name. Once this prima facie case is made, the burden of production shifts to respondent, who must come forward with concrete evidence of its rights or legitimate interests⁷. If a respondent fails to do so, a complainant is deemed to have met the second element of paragraph 4(a) of the Policy.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <mchelin.com> because: i) Respondent is not commonly known by the disputed domain name; ii) Respondent has not been authorized by Complainant to use the trademark MICHELIN in any manner; iii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services because the disputed domain names is a parked website with sponsored links in the field of tires, hence, Respondent is not making a legitimate, noncommercial or fair use of the domain names; iv) Respondent has no prior rights or legitimate interest in the disputed domain name; and v) Respondent knew Complainant’s trademark since it is a “well-known” and “famous” trademark⁸.

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.

Respondent’s rights or legitimate interests in the disputed Domain Name

Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a disputed domain name:

(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel notes that Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that Respondent has failed to submit a Response to the Complaint filed against it. In particular, Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests to the disputed domain name. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as it is consider appropriate, which are that Respondent is unable to adduce evidence of any rights or legitimate interests to the disputed domain name.

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(i) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the disputed domain name or reasons to justify the choice of the word ”mchelin” in its business operation.

(ii) There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the MICHELIN trademark or to apply for or use any domain name incorporating the MICHELIN trademark;

(iii) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name.

(iv) There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name.

(v) The disputed domain name is confusingly similar to Complainant’s MICHELIN trademark.

(vi) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

Thus, the Complainant established that the Respondent does not have rights or legitimate interests in the disputed domain name <mchelin.com>, which the Respondent did not rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a disputed domain name in bad faith:

(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website 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 his/her website or location or of a product or service on his/her website or location.

Complainant asserts that Respondent registered the disputed domain name <mchelin.com> in bad faith, since he must have had knowledge of the trademark MICHELIN on March 26, 2012⁹.

The Panel agrees with Complainant. The fact that Respondent chose the word “mchelin” to make up his domain name <mchelin.com> is in this Panel’s view evidence per se of his bad faith. The Panel finds this selection was deliberate and not product of chance: “mchelin” is not a common word in the English, Spanish, German or French language as the Panel confirmed through searches conducted in different online dictionaries¹⁰. Given the extent of the trademark MICHELIN’s well-known character, Respondent simply could not have been unaware of it. Thus, the Panel finds Respondent deliberately took someone else’s trademark to register a domain name and to create a business around it. Indeed, MICHELIN is a well-known and famous trademark as has been established before:

“A review of prior decisions confirms Complainant’s claim that the MICHELIN trademark has been cited as a well-known and famous trademark. Specifically, the following cases have held that the MICHELIN trademark is famous or well-known as outlined below:

Compagnie Générale des Etablissements Michelin v.Trending, WIPO Case No. D2010-0484, acknowledges that the MICHELIN trademark is famous;

Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy/Transure Enterprise Ltd., WIPO Case No. D2010-2085 states that the “MICHELIN trademark is well known throughout the world“;

Compagnie Générale des Etablissements Michelin (Michelin) v. BMtexnologiya MMC, Tural Malikov, WIPO Case No. D2010-2150 states that “The Complainant has indicated that its trademark MICHELIN is well-known and the Panel agrees.“

Compagnie Générale des Etablissements Michelin v. Pavol Horecny, WIPO Case No. D2009-1554 acknowledges that the trademark MICHELIN is well-known; and

Compagnie Générale des Etablissements Michelin v. Geoacchino Zerbo, WIPO Case No. D2010-0865, acknowledges that the trademark MICHELIN is famous”¹¹.

Thus, this Panel deems that the mere fact of knowingly incorporating a third-party’s well-known mark in a domain name constitutes registration in bad faith¹². See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.

In addition, Complainant contends in the Complaint that Respondent is using the domain name <mchelin.com> in bad faith, since “as the disputed domain name resolves to a parking page displaying sponsored links in the field of tires, it appears pretty obvious that the Respondent is intentionally exploiting the user’s confusion between Complainant’s trademark and the Domain Name in order to obtain a commercial benefit”

The Panel concurs. This intention explains the selection of words with which Respondent made the disputed domain name up. The Panel finds that Respondent must have known that it would attract Internet users seeking the Complainant to the website from which he expected to make money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark. The more diverted Internet users Respondent could attract, the more profit it would make.

Complainant also mentions that Respondent’s web site contains sponsored links being a pay-per-click site, and the Panel accepts the uncontested evidence submitted by Complainant that Respondent has used the disputed domain name to host a page consisting of pay-per-click links to commercial websites related to, among other things, automobile tires. As in Microsoft Corporation v. Abdullah Ali, NAF Case No. 1423605, this Panel believes that “pay-per-click advertisement is a valid Internet advertising model which does not necessarily entail use of a domain name in bad faith. However, this Panel also believes that registering a domain name which comprises someone else’s well-known mark so as to make profit from diverted Internet users in the form of pay-per-click fees, is use in bad faith as per Policy 4(b)(iv)”.

Hence, the Panel concludes that such use of the disputed domain name by Respondent constitutes an attempt to use Complainant’s trademark to attract Internet users to its site for commercial gain which constitutes evidence of bad faith usage under paragraph 4(b)(iv) of the Policy.

Consequently, the three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to Respondent of the disputed domain name.

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 domain name, <mchelin.com> be transferred to the Complainant

Fernando Triana
Sole Panelist
Dated: September 14, 2012

¹ See MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205; see also British Broadcasting Corporation v. Jamie Renteria, WIPO Case No. D2000-0050.

² See Altec Industries, Inc. v. I 80 Equipment, NAF Case No. 1437753.

³ See YottaMark, Inc v. Lukasz Chudy, NAF Case No. 1392357.

⁴ The Trademark Offices of the Andean Community countries members (Colombia, Peru, Ecuador and Bolivia) apply this criterion, among others, to determine if two trademarks are similar. The Andean Court of Justice has adopted it from the Hispano-American Trademark doctrine (including authors such as Guillermo Cabanellas de las Cuevas, Carlos Novoa and Luis Eduardo Bertone, among others), and accordingly, has ordered the Andean Trademark Offices to use this criterion to carry out the registrability exams.

⁵ See F. Hoffmann-La Roche AG v. Rajiv Gupta, WIPO Case No. D2012-0541.

⁶ See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, WIPO Case No. D2012-0875; see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, WIPO Case No. D2012-0474.

⁷ See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

⁸ See Compagnie Générale des Etablissements Michelin v. Mikhail Bulateckij, WIPO Case No. D2011-0473:

“The record shows that Complainant has established trademark rights in MICHELIN in multiple jurisdictions including Respondent’s country of residence and that these rights have existed for decades. A review of prior decisions confirms Complainant’s claim that the MICHELIN trademark has been cited as a well-known and famous trademark. Specifically, the following cases have held that the MICHELIN trademark is famous or well-known as outlined below:

Compagnie Générale des Etablissements Michelin v. Trending, WIPO Case No. D2010-0484, acknowledges that the MICHELIN trademark is famous;

Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy/Transure Enterprise Ltd., WIPO Case No. D2010-2085 states that the “MICHELIN trademark is well known throughout the world“;

Compagnie Générale des Etablissements Michelin (Michelin) v. BMtexnologiya MMC, Tural Malikov, WIPO Case No. D2010-2150 states that “The Complainant has indicated that its trademark MICHELIN is well-known and the Panel agrees”.

Compagnie Générale des Etablissements Michelin v. Pavol Horecny, WIPO Case No. D2009-1554 acknowledges that the trademark MICHELIN is well-known; and

Compagnie Générale des Etablissements Michelin v. Geoacchino Zerbo, WIPO Case No. D2010-0865, acknowledges that the trademark MICHELIN is famous”.

⁹ See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, WIPO Case No. D2012-0474.

¹⁰ English: “www.merriam-webster.com”; Spanish: “ www.rae.es”; French: “www.larousse.com/en/dictionaries/french”; and German: “www.canoo.net”.

¹¹ See Compagnie Générale des Etablissements Michelin v. Mikhail Bulateckij, supra.

¹² See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, supra.