WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin (Michelin) v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2012-2224
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin (Michelin) of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Above.com Domain Privacy / Transure Enterprise Ltd of Beaumaris Victoria, Australia and Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, respectively.
2. The Domain Name and Registrar
The disputed domain name <viamichelinfr.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 November 13, 2012. On November 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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 November 14, 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 November 19, 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 November 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2013.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on January 8, 2013. 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 company based in France, which is active mainly in the automobile and tire manufacturing industries as well as in the field of hotel and restaurant guides and maps. It is present in more than 170 countries and employs more than 110,000 employees.
The Complainant owns the trademark MICHELIN, which is protected in many countries around the world, in particular in Australia and in the United Kingdom. It also holds various domain names incorporating the trademark MICHELIN. Under these domain names, it operates websites to present and offer its products and services. Among other things, the Complainant operates a website intended for the Australian market, where it has been active since 1997, under the domain name <michelin.com.au>. Also, the Complainant holds a trade name VIAMICHELIN that is used for a range of services such as mapping, route plans, on-line hotel booking, hotel and restaurant guides.
The Complainant’s trademarks and domain names put forward in the Complaint were registered long before the registration of the disputed domain name, <viamichelinfr.com>. This domain name was registered by the Respondent on June 10, 2012.
On the website “www.viamichelinfr.com”, the Respondent does not appear to offer any goods or services, but merely lists links to external websites.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its MICHELIN trademarks and to its VIAMICHELIN trade name. It stresses the fact that the disputed domain name entirely comprises the aforementioned distinctive signs.
Furthermore, the Complainant states that the Respondent is not affiliated or related to it in any way, and that it did not authorize the Respondent to use the trademark and trade name in question. The Complainant also states that the Respondent is not generally known by the disputed domain name and that it has not acquired any trademark rights in it.
At last, the Complainant contends that Respondent generates revenue via the disputed domain name by consumers “clicking through” to sites offering the goods and services of the Complainant’s direct competitors and other third parties, which in its view constitutes bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
A. The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
B. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
C. The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds several word marks for MICHELIN. These trademarks are registered for various goods and services, in particular for tires in class 12 and for travel guides in class 16, in many countries of the world, in particular in France, where the Complainant has its registered office, in the European Union, and in Australia, where one of the Respondents resides. The trademarks put forward by Complainant are sufficient to found the Complaint.
Under the UDRP, the identical or confusingly similar requirement under paragraph 4(a) of the Policy only requires identicalness or confusing similarity between the Complainant’s trademarks and respondent’s domain name. There is no requirement of similarity of goods and/or services (e.g., AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc. / Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485).
The existence of a confusing similarity within the meaning of paragraph 4(a) of the Policy is not in doubt in the present case, given that the main element in the disputed domain name, i.e. “michelin” is identical with Complainant’s very distinctive trademark MICHELIN. Indeed, it is obvious that there is a high risk that Internet users, when confronted with the disputed domain name, would believe the domain name and/or the attached website belongs to the Complainant. As the Complainant rightly points out, the incorporation of a trademark in its entirety is typically sufficient to establish a domain name is identical or confusingly similar to a trademark (RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059. The other elements of the disputed domain name, i.e. the elements “via” and “fr” are not sufficient to avoid confusing similarity. While the element “via” is present in the Complainant’s trade name VIAMICHELIN which is used to designate a certain range of the Complainant’s products and services, namely digital travel assistance products and services for road users, the element “fr” - being the ccTLD for France - is likely to be understood by the public as a reference to the Complainant’s home country. Therefore, these two elements cannot possibly help avoid the risk of confusion created by the identical use of the trademark MICHELIN.
As far as the gTLD “.com” is concerned, this element has a mere technical function and therefore does not need to be taken into account when assessing the issue of identity or confusing similarity (e.g., Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102).
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has shown that it owns MICHELIN trademarks, and it has explicitly contested having granted the Respondent any right to use its trademarks. Whether MICHELIN is a famous trademark or not does not need to be established here, it being sufficient to state that the trademark MICHELIN is well known. MICHELIN being a global brand, this is the case also for Australia where the Complainant also holds a MICHELIN trademark and domain name and for the British Virgin Islands. As the Complainant rightly points out, UDRP panels found in previous decisions that in the absence of any license or permission from the Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of a disputed domain name could reasonably be claimed (Lego Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
Therefore, the Panel finds that the Complainant has made a prima facie showing that the Respondent knew about the Complainant’s trademark when registering the disputed domain name, and that its intention was to take advantage from the well-known MICHELIN trademark. Furthermore, the Respondent cannot argue that the disputed domain name was being used for legitimate noncommercial or fair use purposes, as it is using the domain name only as a parking page displaying commercial links related to mapping, cartography and GPS devices, some of which links lead to offers from the Complainant’s competitors. It seems very likely that the Respondent receives commercial revenue from the display of these links (Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038). For this reason, there is not either a bona fide offering of goods or services according to paragraph 4(c)(i) of the Policy (Baccarat SA v. Speedeenames.com / Troy Rushton, WIPO Case No. D2010-0953).
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The undisputed prima facie evidence establishes that the Respondent is not affiliated with the Complainant, and has no license or other authorization to use the Complainant’s trademark or name.
The Respondent registered the disputed domain name well after the Complainant’s mark was in use and became well-known. The Panel finds that the Respondent should have known about the Complainant’s trademark and business when registering the disputed domain name. It is highly improbable to this Panel that given the reputation and fame of the MICHELIN trademark, the Respondent was unaware of it at the time of the registration of the disputed domain name.
The Respondent’s choice of the disputed domain name, which incorporated the MICHELIN trademark, in combination with the term “via” and the letters “fr”, indicates that the Respondent was aware of the existence of the Complainant’s trademark and of its trade name VIAMICHELIN. The Panel also notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562). Given the fact that the MICHELIN trademark is well-known, registration in bad faith can be inferred.
The Panel finds that by using the Complainant’s trademark as the distinctive element of the disputed domain name, the Respondent creates a risk of confusion, at least in the sense that the visitors to the website will, at least initially, expect a website operated by the Complainant or by one of its retailers. In any case, a visitor will have the impression that the website to which the disputed domain name resolves is associated with, or endorsed by, the owner of the MICHELIN trademark, i.e. the Complainant. The fact that the links displayed on the website lead to the Complainant’s competitors and to unrelated products of third-party providers, shows bad faith conduct on the Respondent’s part (e.g. Deceuninck NV v. William Vaughan, smtm investments ltd, WIPO Case No. D2007-1911), all the more so as the Respondent likely derives commercial revenue from the display of these links.
The Panel also accepts the submission of the Complainant that the Respondent has engaged in a long pattern of abusive registration and cybersquatting. The Complainant has cited various UDRP decisions where the Respondent registered domain names and in each case the panels concerned found bad faith on the part of the Respondent. Such conduct, which involves multiple UDRP cases and multiple domain names is capable of constituting bad faith.
The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
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 <viamichelinfr.com> be transferred to the Complainant.
Date: January 21, 2013