Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is Trendimg of Toronto, Ontaria, Canada.
The disputed domain name <michelinman.org> is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2010. On March 30, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On April 9, 2010, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 April 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 30, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 5, 2010. 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.
Michelin was created in 1889. The Company has a strong reputation in the field of tire manufacturing for cars, trucks, motorcycles and planes. Michelin also offers a wide range of services such as car/truck assistance, publishing of road maps, restaurant, hotel and travel guides. Michelin Guide is the most well-known guide in France and abroad.
Michelin distributes its products in more than 170 countries. In 2008, Michelin manufactured 177 millions tires and printed 16 millions maps and guides.
Michelin is the owner of numerous trademark rights in many countries related to the tires production and sale, road maps and various guide publications in the field of hotels and restaurant. Complainant enjoys trademark protection in several countries worldwide. In addition, Complainant operates, among others, several domain names reflecting their trademarks. Michelin has been using its trademarks MICHELIN throughout the world for more than a century.
The company's symbol is the Michelin Man named Bibendum. Bibendum was created in 1898 by the imagination of the Michelin brothers and the paintbrush of the talented poster artist O'Galop, alias “Marius Rossillon”. Throughout history and innovations, the Michelin Man evolved to remain always in phase with his time. The Michelin Man was elected as the “Best logo of the century” by an international jury in 2000 (Annexes 4 and 5 of Complaint).
Complainant enjoys trademark protection in Canada, domicile of Respondent, through several national registrations, such as MICHELIN, No. LMC214191 registered on June 11, 1976 and duly renewed and MICHELIN, No. LMC642596, registered on June 21, 2005. In addition Complainant operates, among others, several websites reflecting their trademarks including: “www.michelin.com”, “www.michelinman.com”, “www.michelinman.net”, “www.michelinman.cn”, www.michelinman.co.uk, “www.michelinman.in”, “www.michelinman.es”, and “www.michelinman.mx”.
Complainant argues that the disputed domain name <michelinman.org> reproduces entirely Complainant's trademark MICHELIN which is very well-known especially in the field of tires production and sale, road maps and various guide publications in the field of hotels and restaurant. The disputed domain name features a generic word added to the trademark, which is “man”. The mere adjunction of this word is not sufficient to distinguish the disputed domain name from Complainant's MICHELIN trademark.
Furthermore, Complainant submits that the term “man” even increases the risk of confusion, because it is directly related to the famous Complainant's symbol. Complainant's symbol is the “Michelin Man” named “Bibendum”.
Complainant asserts that previous decisions have recognized that Complainant's trademark MICHELIN is a famous trademark.
Complainant further alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not affiliated with Complainant in any way. Complainant has not authorized Respondent to use and register its trademarks, or to seek the registration of any domain name incorporating said marks.
Furthermore, Complainant argues that Respondent has no prior rights or legitimate interest in the domain name. Respondent never used the terms “michelin” and “michelin man” in any way before or after Complainant started its business. Respondent has not proved so far to be the holder of prior rights or to have any legitimate interest in the disputed domain name. Complainant's rights in the MICHELIN trademark precede Respondent's registration by a considerable length of time. Additionally, Respondent is not known under the name “michelin” or “michelin man” or any similar term. In fact, since the disputed domain name is so identical to the famous trademark of Complainant, Respondent could not reasonably pretend it was attempting to conduct a legitimate activity. The adjunction of the term “man” does not eliminate the likelihood of confusion as this common word directly refers to Complainant's brand icon.
The only reason of Respondent in registering and using the disputed domain name is to benefit from the reputation of the trademark MICHELIN. Previous WIPO UDRP panels have considered that MICHELIN is a “well established and well-known” or “a very well known” trademark.
Complainant concludes that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
Complainant also argues that with regards to bad faith registration, it is obvious that Respondent knew or must have known Complainant's trademark MICHELIN at the time he registered the disputed domain name. MICHELIN is a well-known trademark throughout the world, and Respondent cannot have ignored Complainant's international reputation at the time of registration of the domain name. Complainant points out to previous WIPO UDRP panels that have considered that MICHELIN is a “well established and well-known” or “a very well known” trademark.
Finally, Complainant points out that the fact that the disputed domain name has not really been used since its registration should be considered as passive holding. According to Paragraph 4(b)(ii) of the Policy, the disputed domain name was registered for “holding” purposes and has not been used for bona fide offering of goods and services. Furthermore, the disputed domain name is not used for personal interest or for the presentation of products or activity. It is therefore fair to presume that Respondent has registered domain name including a well-known mark and corresponding to Complainant's brand icon to capitalize on Complainant's long history, reputation and goodwill. Respondent is very likely to be aware of the commercial value of names, and has registered the domain name for deriving revenue from it.
Complainant request the Administrative Panel appointed in the administrative proceeding issue a decision that the disputed domain name <michelinman.org> should be transferred to Complainant.
Respondent did not reply to Complainant's contentions.
The Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a response (See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (See ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425).
The Panel finds that the disputed domain name <michelinman.org> is confusingly similar to the MICHELIN marks in which Complainant has rights.
Panels have considered in many decisions that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant's registered mark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; Kate Spade LLC v. Karen Vog, WIPO Case No. D2005-0284; Balenciaga S.A. v. Samir Kumar, Case No. D2009-0758). In this case, Respondent's domain name is nearly identical or confusingly similar to Complainant's trademarks because it fully incorporates the mark.
It is also well established that the mere adjunction of the gTLD “.com” is not a distinguishing feature and does not change the likelihood of confusion. In fact many panels have considered that the adjunction of the gTLD “.com” does not attenuate the risk of confusion (Accor v. Noldc Inc., WIPO Case No. D2005-0016), merely because it is necessary for the registration of the domain name itself. The gTLD extensions are not taken into consideration when examining the identity or similarity between the previous marks and the disputed domain names (Gianni Versace S.P.A v. Nicolino Colonnelli – Europe SRL, WIPO Case No. D2008-0570).
In addition, the use of the term “man” in this case leads the Panel to conclude that the disputed domain name is confusingly similar to the trademark in which Complainant has rights. The company's symbol is the “Michelin Man” named “Bibendum”. This symbol has been in use by Complainant for over a century. Accordingly, such combination clearly evokes the trademark of Complainant.
The Panel concludes, therefore, that Complainant has established the first element of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
There is no evidence of the existence of any of those rights or legitimate interests. Complainant has not authorized, licensed, or permitted Respondent to register or use the domain name or to use the trademarks. Complainant has prior rights in the trademarks which precede Respondent's registration of the disputed domain name by several decades. Complainant has therefore established a prima facie case that Respondent has no rights and legitimate interests in the domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1 and cases cited therein).
Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
The Panel finds, also in view of the Panel's findings below, that the second element of the Policy has been met.
Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Complainant's allegations with regard to Respondent's registration and use of the domain name in bad faith has been considered by the Panel. These allegations have not been contested by Respondent because of its default.
Complainant's trademarks are famous, are registered in Respondent's jurisdiction, and have evidently been known to Respondent when registering the contested domain name. Said domain name is highly unlikely to have been registered if it were not for Complainant's trademarks. In this respect, see Compagnie Generale des Etablissements Michelin, Michelin et Cie, Michelin Recherche et Technique S.A. v. Alvaro Collazo, WIPO Case No. D2004-1095; Compagnie Générale des Établissements Michelin - Michelin et Cie v. Petdorf Racing, WIPO Case No. D2005-0210; Compagnie Générale des Etablissements Michelin v. Pavol Horecny, WIPO Case D2009-1554; Compagnie Générale des Etablissements MICHELIN v. Los Planetas (LoIsrael Rondón), WIPO Case No. D2002-0875; Compagnie Générale des Etablissements Michelin-Michelin & Cie v. la bon vie and Gilles Epie, WIPO Case No. D2002-0092; Compagnie Générale des Établissements Michelin - Michelin & Cie v. Manuel Manero Peláez, WIPO Case No. D2001-0215 and Compagnie Générale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, WIPO Case No. D2000-1414 (all decisions recognizing MICHELIN as a well-known trademark).
Given the fame of Complainant's MICHELIN marks, and its corporate symbol “Michelin Man” which were widely used for more than century before the disputed domain name was registered, the Panel concludes that Respondent had actual knowledge of Complainant's trademarks (American Express Marketing & Development Corp. v. Gabriyel Akbulut, WIPO Case No. DME2010-0003).
In addition, a finding of bad faith use can be made inter alia where respondent “knew or should have known” of complainant's trademark rights, and nevertheless used a domain name incorporating a mark, in which he had no rights or legitimate interests (Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722; Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 and Compagnie Générale Des Établissements Michelin v. Rakshita Mercantile Limited, WIPO Case No. D2009-0808).
The disputed domain name has not been in active use, and Complainant asserts that the Respondent's sole purpose of registering the disputed domain name has likely been to prevent Complainant from registering the disputed domain name.
Considering that Complainant's trademark MICHELIN is famous, that the disputed domain name includes the very wording of Complainant's symbol (Michelin Man), that Respondent has not shown that it is using or preparing to use the domain name for any legitimate purpose and that the domain name is not in active use, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.
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 <michelinman.org> be transferred to Complainant.
Pablo A. Palazzi
Dated: May 19, 2010