WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin-Michelin & Cie v.

la bon vie and Gilles Epie

Case No. D2002-0092

1. The Parties

1.1 The Complainant in this administrative proceeding is Compagnie Générale des Etablissements Michelin-Michelin & Cie, 12 cours Sablon, Clermont-Ferrand, France.

1.2 The Respondent in this administrative proceeding is, according to the WHOIS database for Register.com, Inc., "la bon vie" (apparently an entity name) and "Gilles Epie", with the address: 8951 Appian Way, Los Angeles, CA USA.

 

2. The Domain Name and Registrar

2.1 The Domain Name, the subject of this dispute, is <michelinguide.com>

2.2 The Domain Name is registered with Register.com, Inc., 575 Eighth Ave., 11th Floor, New York, NY, USA.

 

3. Procedural History

3.1 The Complaint was filed electronically on January 29, 2002, and in hard copy on February 6, 2002.

3.2 The Complainant elected to have the dispute decided by a single-member Administrative Panel.

3.3 No legal proceedings have been initiated, as yet. (Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), paragraph 3(b)(xi)).

3.4 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500.00 has been made, payable to World Intellectual Property Organization ("WIPO").

3.5 The Complainant agreed that its claim and remedies concerning the registration of the Domain Name, the dispute, or the disputeís resolution shall be solely against the Domain Name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned Registrar, (c) the Registry Administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees and agents.

3.6 On February 4, 2002, the WIPO Arbitration and Mediation Center ("the Center") transmitted via e-mail to, a request for registrar verification in connection with this case and on February 4, 2002, the Center received a verification response confirming that the domain names are registered with Register.com and that the Registrant for the domain name is the Respondent.

3.7 Notification of Complaint and Commencement of Administrative Proceeding was sent to Respondent by the Center on February 13, 2002 (The shipment was later refused by recipient).

3.8 Notification of Respondents Default sent on March 8, 2002.

3.9 The single Panel member, Cecil O.D. Branson, Q.C., submitted a Statement of Acceptance and Declaration of Impartiality and Independence and was duly appointed on March 21, 2002, in accordance with paragraph 15 of the Rules. The Panel was required to forward its decision to the Center by April 4, 2002.

3.10 The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

 

4. Factual Background

4.1 The Complainant in this administrative proceeding is a well-known company that designs, manufactures and markets tyres for several vehicle industries. It is also involved in travel publications and vehicle racing and rallies. The Michelin Group has a business presence in more than 170 countries, including the United States, and it supplies a range of 36,200 products. Its consolidated sales figures for 2000 were of 15,396 millions of Euro and stands for 19.4 % of the tyre world market. Complainant has established its reputation in the field of travel publications through the well-known "Guide Michelin" that selects restaurants and hotels in France and other countries throughout the world. Complainant has made its guides well-known for the number of stars it grants to the listed restaurants and hotels. Complainant has also acquired its notoriety for travel publications through the full range of international titles it offers.

4.2 The Complainant has used and promoted its trademark MICHELIN for more than a century. Complainant states that it owns worldwide numerous trademark registrations for the word "MICHELIN".

4.3 The Complainant has established its main web site under the generic top-level domain name <michelin.com>. This portal (with IP address 208.134.241.118) gives access to specific pages for local markets. Another link in the "www.michelin.com" portal leads to another web site, "www.viamichelin.com" (with IP address 62.160.235.49) dedicated to Michelin Travel Publications. At the date of the disputed domain name registration (April 19, 2000), this site was accessible through the "www.michelin.com" web site, and also through the domain name <michelin-travel.com>. This site changed its name in early 2001 (<viamichelin.com> was registered on November 8, 2000). ViaMichelin is a MICHELIN Group subsidiary devoted to travel assistance services using digital media and is a complementary product to the MichelinGuides. The Complainant owns several domain names, as <guide-michelin.com>, <michelin-guide.com>, enabling Internet Users to find <viamichelin.com>. The site advertises Complainantís guidebooks and maps and offers online services like Route Calculation tools.

4.4 Although, according to Registrar.com WHOIS database, the Respondent in this Administrative Proceeding is listed, for the Domain Name in dispute as "la bon vie" and "Gilles Epie" with an address at 8951 Appian Way, Los Angeles, CA 90046, USA, very little, in anything, can be uncovered concerning "la bon vie". As for the Respondent Gilles Epie, Complainant has not identified a reliable address for him, but has been able to communicate with him through his listed e-mail address "gillesepie@aol.com". Further, Complainant has found the existence of a French professional cook chef of the name of Gilles Epie working in Los Angeles, who had previously worked for several years in Paris, France, at a Restaurant named "Le Miraville" and who Complainant believes is currently working for a French restaurant in Hollywood, called "LíOrangerie".

4.5 On July 18, 2001, Complainantís representative sent a letter informing the Respondent that the Domain Name in question constituted an infringement of Complainantís industrial property rights on the trademark MICHELIN and proposed an amicable settlement of the matter for the best interest of the parties. The letter was sent both by hardcopy and emailed. Consequent to this, Complainant says that its representative received an e-mail purportedly from the Respondentís lawyer in France on July 26, 2001, after which negotiations are said to have taken place between Complainantís lawyers and Respondentís lawyer, in order to settle the dispute amicably. The contents of these communications were not provided to the Panel, but the Complainant says that nothing material occurred as a consequence of the aforesaid communications.

 

5. Partiesí Contentions

A. Complainant

5.1 The domain name <michelinguide.com> is confusingly similar to Complainantís trademark MICHELIN. (Paragraph 4a(i) of the Policy)

The Complainant says that Domain Name <michelinguide.com> is confusingly similar to Complainantís trademark MICHELIN as per para. 4(a)(i) of the Policy. In this regard, the Complainant bases its Complaint mainly on United States Trademark Registration No. 2207844, registered on December 8, 1998, for Goods and Services IC 035. US 100 101 102. G & S: data processing services in the field of transportation and tourism. The Complainant has provided a correct copy of this USPTO certificate and identifies further Michelin trademarks in the U.S. territory through its American branch, Michelin Tire Corporation, for numerous and various classes including Class 16 for printed matter, namely, travel guides, maps, calendars and cards, first use in commerce 0-0-1927.

5.2 The Complainant asserts that given the fame, the extensive reputation and notoriety throughout the world of MICHELIN, the public would expect the owner and user of the Domain Name to be associated with the Complainant and says also that it believes that the mere addition of the descriptive term "guide" is not sufficient to consider that MICHELIN has lost its distinctive and attractive character in the whole denomination "michelinguide". Indeed the Domain Name, says the Complainant, involves the Complainantís mark in conjunction with a word that is descriptive of some products offered under the denomination MICHELIN, namely guidebooks. In support of these arguments Complainant cites Telstra Corp. Ltd. v. Ozurls, WIPO Case No. D2001-0046 and Compagnie Générale des Etablissements Michelin, Michelin & Cie v. Mitchell J. Newdelman, WIPO Case D2001-0512.

5.3 Respondent has no legitimate interest in the Domain Name <michelinguide.com> - (Paragraph 4a(ii) of the Policy)

Complainant says that the Respondent has no business or any other connection or affiliation with the Complainant, that the Complainant has not licensed, expressly or impliedly, or otherwise permitted the Respondent to use the trademark MICHELIN or to apply for any Domain Name incorporating the trademark MICHELIN. Nor has the Complainant found any other facts or elements to justify prior rights or a legitimate connection to the names "Michelin" or "Michelin Guide". Respondent is not otherwise known to the Complainant or to the public under the name in question, either in business or personally. Complainant says further that during contacts made with the Respondent via both partiesí lawyers, it does not appear that the Respondent claimed or brought evidence of any examples set out in para. 4(c) of the Policy demonstrating Respondentís rights or legitimate interests in the Domain Name:

(i) Respondent has apparently not made demonstrable preparations to use the Domain Name;

(ii) Respondent is not commonly known by the Domain Name;

(iii) Respondent is not making a legitimate non-commercial or fair use of the Domain Name. Indeed, the Domain Name points to the Registrar page, where, among other advertising for Register.com products, Internet users have the opportunity to make an offer on the Domain Name.

5.4 Respondent has registered and is using the Domain Name in bad faith - (Paragraph 4a(iii) of the Policy)

Complainant asserts the Domain Name has been registered in bad faith in that at the time of registration, Respondent knew of Complainantís fame and ownership of its trademark. Given (i) the Complainantís trademark registrations for the word MICHELIN in the world and in the United States, (ii) its worldwide notoriety and established reputation in the MICHELIN brand and the notoriety of its travel guide, (iii) its <michelin.com> Domain Name leading to a web-site dedicated, inter alia to MICHELIN Guides publications, and other Domain Names like <guide-michelin.com> and <michelin-guide.com> leading to the travel assistance portal Viamichelin, and (iv) the fact that the Respondent has a "chef" background indicating he is fully aware of Complainantís extensive notoriety, it is not possible to conceive of a plausible circumstance in which Respondent could ignore that the Domain Name registration was infringing Complainantís rights and legitimate use of the Domain Name.

Complainant further alleges that Respondent is using the Domain Name in bad faith based on the fact that it was made aware of the dispute in July 2001, after which both partiesí lawyers had been in negotiation to November 2001, and that at the end of October, Complainant sent a letter by post and email to which Respondent has not responded. Complainant further says that <michelinguide.com> points to a web page advertising about Register.com services. This page contains a dynamic frame offering any Internet User checking this page to make an offer, for at least 200 USD, on this domain. Furthermore says the Complainant, Internet Users are also made aware they can make offers on the Domain Name by searching the Whois on Register.com database.

The Complainant accepts that the above type of use is not listed in para. 4(b) of the Policy as evidence of use in bad faith, but asserts that this "passive" use could eventually produce financial gains to Respondent "in respect to the spirit of the UDRP". Complainant believes this is equal to a use of the Domain Name in bad faith". Further, considering Gilles Epie is a professional chef, Complainant asserts that the risk of confusion is profitable to Respondent, no matter the Respondent is actively using the domain name or not. Given his cooking background, the Complainant says the Respondent is necessarily aware of Michelinís attractive power as a brand and the registration of the Domain Name indicates Respondentís intention to benefit somehow from the Respondentís reputation and goodwill in respect of its activities and products, notably the Michelin Guides. [Italics added]

While accepting that the Respondent is not for the time being using the Domain Name for a personal web site use, the Complainant says that, nevertheless, as the Registrant of <michelinguide.com> is a professional chef, Internet Users checking the Whois of the Domain Name could consider Gilles Epie is affiliated with the Complainant. Furthermore, Complainant adds that Gilles Epie being a chef it is not possible to conceive Respondent could use the Domain Name for a site of his own without bad faith. [Italics added]

The Complainant cites and relies on an earlier case, Michelin-Michelin & Cie v. Mr. Kristian Marjin van Wezel, WIPO Case D2001-0598 which involved the disputed domain name <michelin-guide.com> which had not been actively used at the date of the decision. In particular, the Complainant relies on the following statement in this decision:

"When the Respondent registered the Domain Names he knew that they were names, which were ideal to indicate the Complainantís guide. He knew that they were names, which would be ideally suited to anybody seeking to visit the Complainantís site and with a view to accessing information relating to the Complainantís guide. In so doing he knew that he would attract to his site visitors intending to visit the Complainantís site. Necessarily, therefore, by using the Complainantís names he will derive business opportunities that would not otherwise have been open to him. In other words, by doing what he has done he will attract visitors to his site who would not otherwise have visited him. The fact that he has not yet connected the Domain Names to his planned site is irrelevant. It is a threat hanging over the Complainantís head. [Complainantís emphasis]

"It is for these reasons that the Panel finds that the Domain Names were registered in bad faith and are being used in bad faith."

B. Respondent

5.5 Respondent did not file a Reply to the Complaint.

C. No Other Submissions

5.6 The Panel has not received any requests from Complainant or Respondent regarding further submissions beyond the Complaint, and the Panel has not found it necessary to request any further information from the Parties.

 

6. Discussion and Findings

6.1 The Complaint was submitted on the basis of the provisions of the Registration Agreement in effect between the Respondent and Register.com, Inc. which incorporates, by reference, the Policy in effect at the time of the dispute. The Policy requires that Domain Name Registrants such as Respondent submit to a mandatory Administrative Proceeding regarding third-party allegations of abusive Domain Name registration (Policy, paragraph 4(a)).

6.2 Such Administrative Proceedings are conducted by ICANN-approved dispute resolution service providers such as WIPO. The Policy provides an administrative means for resolving disputes concerning allegations of abusive Domain Name registration, subject to referral of the dispute to a court of competent jurisdiction for independent resolution (Policy, paragraph 4(k)).

6.3 The Policy, and the Rules, establish procedures intended to assure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

6.4 The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

6.5 Paragraph 15(a) of the Rules addresses the principles to be used in rendering a decision:

"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In order to obtain the relief requested under the Policy, Complainant must prove in the Administrative Proceeding that each of the three elements of paragraph 4(a) are present:

(i) that the Domain Name registered by the Respondent 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.

6.6 (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

Proof of this element is obtained through a two-part test. The first part is whether the Complainant has rights in a relevant mark. In this case the Complainant has demonstrated, that it has numerous MICHELIN marks registered.

The Complainant bases its case not on the Respondentís Domain Name being identical but, rather, that it is confusingly similar.

On the bases asserted above in paras. 5.1 and 5.2 this Panel finds this element to have been proved.

6.7 (ii) Respondent has no rights or legitimate interests in respect of the domain name.

Where Respondent has not filed a Response to the Complaint, in the absence of exceptional circumstances, under para. 5(e) of the Rules, the Panel shall decide the dispute based on the Complaint. See Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Hewlett-Packard Co. v. Full System, NAF Case FA 0094637; David G. Cook v. This Domain is 4 Sale, NAF Case FA 0094957; Gorstew Jamaica and Unique Vacations Inc. v. Travel Concierge, NAF Case FA 0094925. It may also permit a Panel to infer that the Respondent does not deny the facts which the Complainant asserts nor the conclusions which the Complainant asserts can be drawn from those facts. See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Hewlett-Packard Co. v. Full System, NAF Case FA 0094637; David G. Cook v. This Domain is 4 Sale, NAF Case FA 0094957; Gorstew Jamaica and Unique Vacations Inc. v. Travel Concierge, NAF Case FA 0094925; America Online Inc. v. Andy Hind, WIPO Case No. D2001-0642.

Based on the assertions of the Complainant in support of this element, the Panel finds that it has been proved that the Respondent has no legitimate interests in the Domain Name <michelinguide.com>.

6.8 (iii) Respondent has registered and is using the Domain Name in bad faith.

To begin with, it must be noted that the Complainant eschews any suggestion that the type of use demonstrated by the Respondent in this case is among those listed in para. 4(b) of the Policy. This rules out the following:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.

However, these types of uses not being exhaustive, the Complainant asserts that the Respondentís "passive use could eventually produce financial gains to Respondent in respect to the spirit of the UDRP", Complainant believes this is equal to a use of the Domain Name in bad faith. [Italics added]". As mentioned above, in this regard the Complainant relies on dicta from Compagnie Générale des Etablissements Michelin-Michelin & Cie v. Mr. Kristian Marjin van Wezel, WIPO Case No. D2001-0598. Unfortunately, we are not given any guidance as to where this "spirit" is to be found. The "spirit of the UDRP" is a dangerous horse to ride, as "spirits" (at least in the context mentioned by the Complainant) are not noted for their substance. This does not, however, rule out a teleological approach to the interpretation of the Policy. There are two mainstream methods used to aid in the interpretation of legal enactments in the resolution of disputes. The first, and until recently the most commonly used, is by strictly interpreting the language found in the enactment in question and taking no account of the policy considerations which led to the drafting of the enactment. The second, which is gaining in its use is the teleological or purposive approach which focuses more on the policy behind the introduction of the legislative tests. This approach involves a consideration of the perceived harm which the legislation in question was meant to overcome. An example of the purposive approach is to be found in Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415 where that learned Panel saw the purpose of the Policy being "to prevent the extortionate behavior commonly known as Ďcybersquatting,í in which parties registered Domain Names in which major trademark owners had a particular interest in order to extort money from those trademark owners", or otherwise profit there from. Further insight into the scope of application of the UDRP is to be found in the Final Report of the First WIPO Process, April 1999, as follows:

163 The WIPO Interim Report discussed in detail the respective advantages and disadvantages of, on the one hand, applying the administrative procedure to any intellectual property dispute arising out of a domain name registration and, on the other hand, limiting the application of the procedure to clear cases of abusive registrations of domain names or "cybersquatting." The description of those advantages and disadvantages will not be repeated here.

164 The views of commentators on the desirable scope of the administrative procedure were divided. Certain commentators favored the broad approach of opening the procedure to any intellectual property dispute with respect to a domain name registration. In general, they favored the development of a body of administrative law that would, through the procedure, provide an effective international enforcement mechanism for intellectual property rights as an alternative to expensive and time-consuming multijurisdictional litigation.

165 The preponderance of views, however, was in favor of restricting the scope of the procedure, at least initially, in order to deal first with the most offensive forms of predatory practices and to establish the procedure on a sound footing. Two limitations on the scope of the procedure were, as indicated above, favored by these commentators.

166 The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations. The definition of such abusive registrations is discussed in the next section.

The Report went on to say that "The purpose of the Policy is to prevent clearly abusive acts of cyber-squatting."

As for the decision in Compagnie Générale des Etablissements Michelin-Michelin & Cie v. Mr. Kristian Marjin van Wezel, WIPO Case No. D2001-0598, while it is accurate to say that it found that in the circumstances of that case, that the fact that the Respondent had not yet connected the Domain Names to his planned site was irrelevant in light of the threat hanging over Complainantís head, there are a number of materially distinguishing features between that case and the one before this Panel. For instance, in that case the Panel found there to be five circumstances in support of the allegation of bad faith, including an offer by the Respondent to sell the name to Complainantís investigators and the Respondentís stated intention to set up a competing web-site to that of the Complainant, thereby disrupting the Complainantís business. In the case before this Panel such circumstances do not exist.

Finally, the Complainant makes the point that given all the circumstances of this case, particularly the fact that the Respondent is a professional chef, it is not possible to conceive Respondent could use the Domain Name for a site of his own without bad faith. This brings to mind the leading decision under the UDRP, Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In that case, the Panelist made note of the use of both the past and present tenses in para. 4(a)(iii) of the UDRP and opined that consideration must be given to the circumstances applying both at the time of registration and thereafter. The requirement that the Domain Name "has been registered and is being used in bad faith" will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith. He then dealt, separately, with the two situations. In regard to the past fact of registration that Panel concluded that it was not possible to conceive of a plausible situation in which the Respondent could legitimately use the Domain Name and that it was also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. These findings, together with a previous finding made by that Panel that the Respondent had no rights or interests in the Domain Name, led that Panel to conclude that the Domain Name was registered by the Respondent in bad faith.

The Panel in Telstra then turned to the question of whether the Complainant had proved the additional requirement that the Domain Name "is being used in bad faith" by the Respondent. Note was taken of the fact that the Domain Name did not resolve to a web-site or other online presence, there was no evidence that a web site or other online presence was in the process of being established which would use the Domain Name, there was no evidence of advertising, promotion or display to the public of the Domain Name, and there was no evidence that the Respondent has offered to sell, rent or otherwise transfer the Domain Name to the Complainant, a competitor of the Complainant, or any other person. The Panel concluded: "In short, there is no positive action being undertaken by the Respondent in relation to the domain name."

The Telstra Panel then noted the importance of the distinction between undertaking a positive action in bad faith and acting in bad faith, the significance being that the concept of a Domain Name "being used in bad faith" is not limited to positive action; inaction is within the concept. It is possible therefore, in certain circumstances, for inactivity by the Respondent to amount to the Domain Name being used in bad faith. Under these circumstances the conclusion was reached that to prove bad faith use additional facts were necessary, such as an intention to sell, rent or transfer the registration, a pattern of conduct preventing a trade mark ownerís use of the registration, or the primary purpose of disrupting the business of a competitor. An important point was that paragraph 4(b) recognises that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a Domain Name being used in bad faith. That Panel then identified five particular circumstances in that case which led to a conclusion that the Respondent had been acting in bad faith. These were:

(i) The Complainantís trademark has a strong reputation and is widely known, as evidenced by its substantial use,

(ii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Domain Name,

(iii) The Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) The Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainantís rights under trademark law.

This Panel, in the case concerning the Domain Name <michelinguide.com> does not see any significant material difference between the circumstances in the Telstra case as above and this case. They are either similar or ejusdem generis. The Panel is therefore prepared to find that the bad faith element of the UDRP has been proved.

7. Decision

7.1 This Administrative Panel decides that the Complainant has proved each of the three elements in para. 4(a) of the Policy. Accordingly, this Administrative Panel requires that the Domain Name <michelinguide.com> be transferred to the Complainant.

 


Cecil O.D. Branson, Q.C.

Sole Panelist

Dated: March 27, 2002