The Complainant is Compagnie Generale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Vaclav Novotny, Czech Republic.
The disputed domain name <michelinstars.info> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2009. On July 30, 2009, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the disputed domain name. On August 6, 2009, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of 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 Doman 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 10, 2009. In accordance with the Rules, Paragraph 5(a), the due date for Response was August 30, 2009. The Respondent did not submit any response. Accordingly the Center notified the Respondent's default on August 31, 2009. The Center appointed Clive Duncan Thorne as the sole panelist in this matter on September 2, 2009. 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.
The Complainant manufactures and sells tyres for all kinds of vehicles, publishes maps and guides and operates a number of digital services in more than 170 countries.
From the invention of the radial tyre to the steel wheel, and from the first gastronomic guide, Michelin has played an active role in every stage of the automotive adventure. The Complainant which was created in 1889 enjoys a strong reputation in the field of tyre manufacturing for cars, trucks, motorcycles and planes.
The replacement tyre market represents 72% of the Complainant's sales and volumes in the Passenger Car-Light Truck market and 83% in the Truck market. Accordingly before being an equipment supplier for vehicle manufacturers Michelin was primarily a player on the consumer market for passenger cars and motorcycles and on the professional consumer goods market for light and heavy utility vehicles.
Michelin also offers wide range of services such as car/truck assistance, publishing of road maps, restaurant, hotel and travel guides. The Michelin Guide is a well-known guide in France and abroad.
The Red Guide, existing in several languages, has established itself with a strong reputation covering hotels and restaurants all around the world. The famous Michelin “three stars” rewards the best restaurants from all around the world. From 2005 to 2007 Guides were released for cities outside Europe such as New York, San Francisco, Los Angeles, Tokyo and Las Vegas.
Michelin is active on all continents, from France to the Czech Republic and from the United States of America to India.
Michelin distributes its products in more than 170 countries. In 2008 Michelin manufactured 177 million tyres and printed 16 million maps and guides. It is accelerating its industrial and commercial expansion in Central and Eastern Europe, South America and Asia to serve tyre demand with local production and increases its share of business in those high growth regions.
The Complainant owns and mainly communicates on the Internet via various websites in order to present and to propose to Internet user's services and products. The main one is “www.michelin.com”. It also has registered various local websites such as “www.michelin.cz” in the Czech Republic. A screenshot showing this is set out at Annex 6 to the Complaint.
The Complainant owns a large number of international trademarks which are set out in the Complaint and exhibited at Annex 13 for the mark MICHELIN:-
- MICHELIN, International Trademark no. 348615, registered on July 24, 1968 renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17, and 20.
- MICHELIN, International Trademark no. 457819, registered on December 1, 1980, renewed and covering goods in classes 09, 11, 14, 16, 20, 21, 24, 25, 26, 28 and 34.
- MICHELIN, International Trademark no. 574577, registered on May 6, 1991 and covering goods in classes 6, 16, 18, 21 and 25.
- MICHELIN, International Trademark no. 771031, registered on June 11, 2001 and covering goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42.
- MICHELIN, International Trademark no. 452542, registered on May 8, 1980, renewed and covering services in classes 35 and 41.
- MICHELIN, International Trademark no. 492879, registered on May 10, 1985, renewed and covering goods in class 12.
- MICHELIN, International Trademark no. 517586, registered on September 24, 1987, renewed and covering goods and services in classes 9, 35 and 38.
- MICHELIN, International Trademark no. 740073, registered on August 8, 2000 and covering goods in classes 6, 7, 12 and 17.
- MICHELIN, International Trademark no. 816915, registered on August 27, 2003 and covering services in classes 35, 37, 39 and 42.
It also owns Community Trademark no. 004836359, MICHELIN registered on March 13, 2008 and covering 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. Details are exhibited at Annex 14 to the Complaint.
The Complainant also owns the following domain names which reflect the trademark MICHELIN: <michelin.com>, <michelin.cz> and <michelintravel.com>. Details are set out at Annexes 4, 5, and 15 to the Complaint.
The history of the dispute is as follows:
A registered cease and desist letter and an email was sent to the Respondent on May 11, 2009 asking for cancellation of the domain name in dispute. This letter is exhibited at Annex 10 to the Complaint. It was followed by a series of reminder letters which are exhibited at Annex 11. Despite this the Respondent appears not to have replied to the letters nor to the reminders. The Respondent nevertheless appears to have received the original cease and desist letter dated 11 May 2009. This is shown by the Post Office receipt exhibited at Annex 12 to the Complaint.
In the absence of a Response the Panel accepts the above facts as proved.
(1) The Complainant submits that the domain name in dispute is confusingly similar to the mark MICHELIN in which the Complainant has rights. In particular it submits that the domain name in dispute is identical to the mark MICHELIN save for the addition of the generic word “stars” to the domain name.
(2) The Respondent has no rights or legitimate interests in respect of the domain name for the following reasons:-
(i) That the Respondent is not affiliated with the Complainant in any way;
(ii) The Complainant relies upon the cease and desist letter;
(iii) The Complainant relies upon the fact that the domain name in dispute is “so identical” to the Complainant's mark which is a famous trademark.
(3) The domain name is registered and is being used in bad faith.
(i) The Complainant relies upon the fact that the domain name incorporates the famous mark MICHELIN;
(ii) The fact that the Respondent failed to respond to the cease and desist letter for the contents of the Respondent's website.
The Respondent did not reply to the Complainant's contentions.
The Panel accepts on the evidence that the Complainant has both registered and unregistered trademark rights in the mark MICHELIN. It is undoubtedly true that the domain name in dispute incorporates the mark MICHELIN in its entirety. As the Complainant points out the additional feature to the domain name in dispute is the use of the generic word “stars” added to the word “Michelin”. The Panel therefore finds that the domain name in dispute is confusingly similar to the Complainant's trademarks MICHELIN.
The Panel finds on the evidence that the Respondent is not affiliated with the Complainant in any way nor is there any evidence that the Complainant has authorised the Respondent to use and register domain names incorporating the trademark MICHELIN. There is also force in the submission raised by the Complainant that the fact the Respondent failed to respond to the cease and desist letter and its reminders is evidence that the Respondent had no legitimate interests in the domain name. If the Respondent had such an interest it seems probable that he would have responded to the cease and desist letter.
The Panel also accepts the fact that the mark MICHELIN is a “famous” trademark and that therefore it can legitimately be inferred on the evidence that the Respondent could not “reasonably pretend it was attempting to conduct a legitimate activity”. The Panel finds that the Complainant succeeds on this element.
Given the Panel's finding that the Complainant's mark MICHELIN is a “well-known” or “famous” trademark the Panel agrees with the Complainant's submission that the Respondent knew or must have known of the Complainant's trademarks at the time of registration of the domain name.
There is also considerable force in the submission raised by the Complainant that the fact that the Respondent failed to respond to the cease and desist letter is a recognition of both a bad faith registration and use. There is significant authority from earlier UDRP decisions, which are cited by the Complainant at Annexes 25 to 28 of the Complaint, that a failure on the part of the Respondent without good reason, to respond to a cease and desist letter is evidence of bad faith registration and use.
Further points relied upon by the Complainant are the fact that the Respondent's website is composed of plagiarised text pictures and information and the fact that the Respondent's website displays commercial links which demonstrate the Respondent has a commercial interest in using the domain name. In particular there is evidence that the Respondent has “plagiarised” information found on the Michelin Guide and Langenscheidt website without authorisation. This is shown by Annex 30 to the Complaint.
In all these circumstances the Panel therefore finds that the Respondent did both register and use the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <michelinstars.info> be cancelled as requested by the Complainant.
Clive Duncan Thorne
Dated: September 16, 2009