WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin (Michelin) v. Adam Mascall, DomainsByProxy.com, Domains By Proxy, LLC
Case No. D2013-1072
1. The Parties
Complainant is Compagnie Générale des Etablissements Michelin (Michelin), of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondents are Adam Mascall of Luton, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by himself, and Domains By Proxy.com and Domains By Proxy LLC of Arizona, United States of America (collectively “Respondent”).
2. The Domain Names and Registrar
The disputed domain names <michelinguides.com> and <michelinguides.info> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2013 and originally involved in addition to the disputed domain names the domain name <michelincars.com>. On June 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names <michelinguides.com>, <michelinguides.info> and <michelincars.com>. On June 14, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the domain names which differed from the named Respondent and contact information in the Complaint. The Center was informed by the concerned Registrar, GoDaddy.com, that the privacy shield had been removed and that the registrants of the disputed domain names differed (were not the same) from that named in the Complaint. According to that information, the registrant for the disputed domain names <michelinguides.com> and <michelinguides.info> was Adam Mascall (as in the Complaint) and for the domain name <michelincars.com> was D[.] M[.]. The Center sent an email communication to Complainant on June 21, 2013 with the information provided by the Registrar. The Center pointed to paragraph 3(c) of the UDRP Rules which provides that “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Complainant was requested to either: (i) file a separate Complaint for one or the other of the domain names, and file a short amendment to drop said separately-filed domain name from the current Complaint; or (ii) provide the Center with a brief amendment to the Complaint, adding the names of both registrar-disclosed registrants as formal Respondents and submitting evidence to demonstrate that both registrants are, in fact, the same entity. The deadline for submission of Complainant’s amendment or additional complaint was June 26, 2013. Complainant requested an extension to the due date for its submission. The amended Complaint was received on July 2, 2013
On July 23, 2013, Complainant transmitted by email to the Center a request to suspend the procedure for 30 days whilst it investigated the issue of Respondent identity for the disputed domain name <michelincars.com>. On July 23, 2013, Respondent Mascall submitted to the Center a request that Complainant’s request for suspension be denied. On July 24, 2013, the Center informed the parties that suspensions are typically granted to allow parties to explore settlement options and when both parties agree to the suspension of the proceedings.
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 July 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2013. The Response was filed by Adam Mascall on July 22, 2013.
The Center appointed Andrew F. Christie as the sole panelist in this matter on August 13, 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
Since the early 19th century, Complainant has owned and used the trademark MICHELIN in connection with the automobile and tire manufacturing industries, as well as in connection with the publication of hotel/restaurant guides and maps. Complainant has a strong reputation in the automotive industry and in French and foreign gastronomy, and has marketing operations in more than 170 countries. As at December 31, 2012, Complainant employs 113,400 employees.
Complainant owns numerous trademark registrations around the world for the trademark MICHELIN, dating from at least as early as 1968. Complainant owns, and mainly communicates its services and products on the Internet via, various websites including “www.michelin.com” and “www.michelin.co.uk”.
The disputed domain names <michelinguides.com> and <michelinguides.info> were registered on December 4, 2012 in the name of Adam Mascall (hereafter “Respondent Mascall”). The domain name <michelincars.com> was registered on February 8, 2013 in the name of D[.] M[.]. According to screenshots from December 28, 2012 provided by Complainant, the disputed domain name <michelinguides.com> initially resolved to a website related to computing, and the disputed domain name <michelinguides.info> initially redirected towards a parking page displaying sponsored links related to Complainant’s field of activities.
On January 23, 2013, Complainant sent a cease and desist letter to Respondent Mascall, requesting him to cease using and to cancel the two domain names registered on December 4, 2012. Respondent Mascall did not reply to this letter. On February 8, 2013, Complainant sent a follow-up cease and desist letter to Respondent Mascall, to which he replied that he would stop placing any advertising whatsoever, and any content in any way related to Complainant, on websites to which either of those disputed domain names resolved, but would keep the disputed domain names and would develop the websites to which they resolved. On February 8, 2013, the date on which Complainant sent its follow-up cease and desist letter to Respondent Mascall, the disputed domain name <michelincars.com> was registered. Complainant has provided screenshots of the websites to which the disputed domain names resolved on May 21, 2013 (after Respondent Mascall replied to the cease and desist letter), showing that they now contained numerous photomontages of the current UEFA president Mr. Michel Platini.
5. Parties’ Contentions
A. Complainant
Complainant contends that the Complaint may be brought in relation to all three of the disputed domain names, despite the fact that the registrants of record disclosed by the Registrar are not the same for all three disputed domain names, on the ground that all three disputed domain names are “managed by the same person”. Complainant contends that it can be concluded that all three disputed domain names are managed by the same person because: (i) the registrants of all three disputed domain name are located in the United Kingdom; (ii) the Registrar for all three disputed domain names is the same; (iii) the registrants use the same privacy service for all three disputed domain names; (iv) the disputed domain names adopt a common format, comprising Complainant’s trademark MICHELIN followed by the descriptive word “guides” or “cars”; (v) the websites to which each of the three disputed domain names resolve are very similar, comprising “a photomontage in bad taste featuring Mr. Michel Platini.”; (vi) the contact phone number for the disputed domain name <michelincars.com> is not a valid phone number; (vii) the disputed domain name <michelincars.com> was registered on the same date on which Complainant sent its follow-up cease and desist letter to Respondent Mascall and on which Respondent Mascall replied to that letter; (viii) the WhoIs information shows that the registrant of the disputed domain names <michelinguides.com> and <michelinguides.info> commenced use of a privacy service one day before the disputed domain name <michelincars.com> was registered with the same privacy service.
Complainant contends that the disputed domain names are confusingly similar to Complainant’s MICHELIN trademark because: (i) they reproduce it in its entirety; (ii) they feature the descriptive words “guides” and “cars”, which thereby increases the risk of confusion since they are descriptive of Complainant’s field of activities, namely manufacturing of automobile tires and publication of hotel/restaurant guides (including the Red and Green ones published each year) and maps; (iii) Complainant has used the MICHELIN trademark in connection with a wide variety of products and services around the world and the public has learned to perceive the goods and services offered under this trademark as being those of Complainant; and (iv) the extension “.com” and “.info” are irrelevant as it is well established that the generic Top Level Domain is insufficient to avoid a finding of confusing similarity.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names because: (i) Respondent is not affiliated with Complainant in any way nor has it been authorized by Complainant to use and register its MICHELIN trademark, or to seek registration of any domain name incorporating its MICHELIN trademark; (ii) the registration of the MICHELIN trademark preceded the registration of the disputed domain names by some years; (iii) the disputed domain names are so confusingly similar to Complainant’s famous MICHELIN trademark that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain names; (iv) Respondent is neither commonly known by the name “Michelin” nor in any way affiliated with Complainant; (v) although Respondent said he would completely remove “any content in any way related to MICHELIN on either domain name” and remove “any advertising whatsoever” there are still commercial links and paid advertising under Google’s AdSense program on the websites resolving from the disputed domain names <michelinguides.com> and <michelinguides.info>, including advertisements related to tourism and hotel/restaurant businesses, which are one of Complainant’s fields of activities; (vi) it is obvious Respondent tried to create a legitimate interest after receiving Complainant’s cease and desist letter because it changed the content of the websites to which the disputed domain names resolve, and this does not confer a legitimate interest; (vii) at the date of registration of the disputed domain names Registrant’s identity was accessible from the WhoIs database but it later used a privacy shield service to hide it and thereby prevent Complainant from contacting it; (viii) the current use of the websites resolving from the disputed domain names violate Mr. Michel Platini’s rights and affect his reputation; and (ix) Respondent Mascall tried to use the press to consolidate his legitimate interest but the press articles did not reveal the fact that he changed the content of the websites after receipt of Complainant’s cease and desist letter.
Complainant contends that the disputed domain names were registered and are being used in bad faith because: (i) Complainant and the MICHELIN trademark are well-known throughout the world and it is implausible that Respondent was unaware of Complainant and Complainant’s proprietary rights in the trademark when it registered the disputed domain names; (ii) given the reputation of the MICHELIN trademark, registration in bad faith can be inferred; (iii) a quick trademark search would have revealed to Respondent the existence of Complainant and its trademark; (iv) before receipt of Complainant’s cease and desist letter, Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services; (v) Respondent registered the disputed domain name <michelincars.com> after receiving the cease and desist letter advising Respondent of Complainant’s trademark rights and requesting the cancellation of the other two disputed domain names; (vi) the initial use of the disputed domain names to resolve to websites displaying pay-per-click links which are likely to generate revenues is evidence of bad faith by taking advantage of the MICHELIN trademark reputation; (vii) it is likely that Respondent registered the disputed domain names to prevent Complainant from reflecting its trademark in those domain names; (viii) by going to the press, Respondent Mascall was trying to discourage Complainant from defending its intellectual property rights; and (ix) there is no doubt that many Internet users attempting to visit Complainant’s website have ended up on the web pages set up Respondent that resolve from the disputed domain names.
B. Respondent
Respondent Mascall contended that Complainant had failed to prove that all three disputed domain names are registered by the same domain name holder on the grounds that: (i) the fact that the two registrants live in the same country does not prove they are the same person because 61.8 million people live in that country; (ii) the fact that the three disputed domain names are registered with the same registrar does not prove the registrants of them are the same person because approximately 55 million domain names are registered with that registrar; (iii) the fact that the two registrants use the same privacy service does not prove they are the same person because that privacy service is provided by the registrar used by the registrants and so it is only logical that it be used by them; (iv) the fact that the three disputed domain names have a common format does not prove they are owned by the same person; (v) the fact that the websites to which all three disputed domain names resolve does not prove the registrants are the same person because “a copycat website was set up by the registrant of <michelincars.com> after the media hype surrounding my original website”; (vi) the fact that an invalid contact phone number was listed for the registrant of the disputed domain name <michelincars.com> is irrelevant and should be ignored; (vii) the disputed domain name <michelincars.com> was registered one day after the original news story regarding the disputed domain name <michelinguides.com>, supporting the view that it was registered by a copycat; (viii) the registrant of the disputed domain names <michelinguides.com> and <michelinguides.info> adopted use of the privacy service one day before the original news story about them because he did not wish readers of the news story to have access to his name and contact details.
Respondent Mascall contended that the disputed domain names <michelinguides.com> and <michelinguides.info> are not confusingly similar to Complainant’s MICHELIN trademark because: (i) the websites to which they resolve are related to “Michel In Guides”, but adopt the format they do because spaces are not permitted in domain names; (ii) no genuine customer would be confused because the websites to which they resolve clearly display the titles “Michel In Guides”, and have no relation to the business of Complainant; (iii) the registrant would be happy to place in the header of the websites stating that Michel In Guides is not associated with Michelin or Michelin Guides.
Respondent Mascall contended that he had rights or legitimate interests in the disputed domain names <michelinguides.com> and <michelinguides.info> because: (i) the project of Michel In Guides was planned prior to purchase of the domain names; (ii) one of the disputed domain names was forwarded to a computer based project website being developed by him which displayed advertisements regarding computer based product, but he “never made a single penny in revenue from these adverts as they were also test adverts”; (iii) the other disputed domain name resolved to a parking page established by the Registrar, from which he received no revenue; (iv) once Complainant alerted him to the existence of the advertisements displayed on the websites to which the domain names resolved he forwarded them to the Michel In Guides websites which contain no advertisements; (v) he has been open with Complainant from the beginning and has not tried to hide his identity from it; (vi) Michel In Guides is known around the world, from Austria to Zimbabwe, and receives fan mail and hits from thousands of Internet users every day; and (vii) Michel In Guides is a legitimate activity that is in no way connected with or at the expense of Complainant.
Respondent Mascall contended that the disputed domain names <michelinguides.com> and <michelinguides.info> were not registered and are not being used in bad faith because: (i) he did not consider the Complainant’s MICHELIN trademark when he registered the domain names; (ii) the domain names were registered to display content relating to Michel In Guides not Michelin Guides; (iii) he did not persist in registering disputed domain names by registering <michelincars.com> after receiving Complainant’s cease and desist letter because he is not the registrant of that particular domain name; (iv) the project of Michel In Guides was planned prior to purchase of the domain names; and (v) Michel In Guides is a global phenomenon, with a huge following across social networks.
6. Procedural Issue – Single Complaint against Nominally Different Registrants
Paragraph 3(c) of the Rules provides that “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Respondent Mascall objected to the Complaint being brought in relation to the disputed domain name <michelincars.com>, on the basis that the name of the registrant of this domain name (D[.] M[.]) is different from the name of the registrant of the other two disputed domain names (Adam Mascall) and Complainant had not proven that the registrants of all three disputed domain names are the same.
Paragraph 3(c) of the Rules appears to have the effect of prohibiting a complaint from relating to more than one domain name unless the holder of each of those domain names is the same person. As has been previously stated by the Panel (see Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, WIPO Case No. D2009-1345), the justification for paragraph 3(c) of the Rules appears to be to prevent unfairness to respondents and, possibly, to prevent procedural inefficiency. The bringing of a single complaint in relation to multiple domain names of which the registrants are not the same has the potential to be unfair to those registrants where there is no connection between them. The corollary, however, is that where the registrants are in fact the same person or they hold a common interest in the disputed domain name (see Kimberly-Clark, above, and Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281), bringing a single complaint against them is unlikely to be unfair to them. For that reason, WIPO panels have articulated principles governing the filing of a complaint against more than one respondent, and have concluded that a complaint may be filed against nominally different respondents where “the domain names or the websites to which they resolve are subject to common control” and “the consolidation would be fair and equitable to all parties” (see WIPO Overview 2.0 paragraph 4.16).
In this case, Complainant asserted that the circumstantial evidence (summarized in the first paragraph of section 5A above) was such as to establish that all three disputed domain names were “managed by the same person”. Respondent Mascall, in the only Response to the Complaint, argued that the circumstantial evidence did not prove this, on the basis of lack of probative value and alternative explanation (as summarized in section 5B, above). The matter is a very close call. The burden is on Complainant to make its case (see WIPO Overview 2.0 paragraph 4.16), on the balance of probabilities (see WIPO Overview 2.0 paragraph 4.7). The Panel concludes that the circumstantial evidence identified by Complainant fails to establish, on the balance of probabilities, that the registrant of the disputed domain name <michelincars.com> is either the same person as, or holds a common interest in that disputed domain name with, the registrant of the disputed domain names <michelinguides.com> and <michelinguides.info>.
The reasons that have led the Panel to this conclusion are as follows. Respondent Mascall’s attack on the probative value of Complainant’s circumstantial evidence of the respondents being located in the same country, having the same registrar, and using the same privacy service, and of one of them providing an invalid contact number, is sound. Further, Respondent Mascall’s alternative explanations as to why the disputed domain names have a similar format and resolve to similar websites, and as to the timing of the registration of the disputed domain names and the adoption of privacy services, while not wholly convincing, are plausible. The Panel has paid particular attention to the format of the website to which each of the disputed domain names resolves. The websites to which <michelinguides.com> and <michelinguides.info> resolve appear to be identical. The website to which <michelincars.com> resolves bears a similarity, but only rather a basic one, to the other two. Whereas the former two websites are substantial (requiring 45 A4 pages to capture their content of more than 80 photographic images and some text), the latter is rather short (requiring only two A4 pages to capture its content of four photographic images). Moreover, the look and feel of the latter website is not significantly similar to that of the former two. Furthermore, none of the other factors that have persuaded panels in other cases that different domain names are under common control – such as common administrative or technical contact information – appear to be present in this case. In summary, the evidence in the case record before the Panel is such that, while the scenario postulated by Complainant is plausible, it is not clear that it is more likely true than is the scenario postulated by Respondent Mascall.
In these circumstances, the Panel finds that Complainant has not established that each of the disputed domain names is under common control, and thus has not established that this Complainant may properly be brought in respect of all three disputed domain names. Accordingly, the Panel orders that the Complaint be discontinued against the disputed domain name <michelincars.com>. This order is made without prejudice to the possibility of a subsequent complaint being filed under the Policy by Complainant in relation to this domain name, with such a filing not to be precluded by the principles under the Policy regarding re-filed complaints.
The Complaint can, and should, continue against the disputed domain names <michelinguides.com> and <michelinguides.info>, since the registrant of these is the same person, Respondent Mascall.
7. Discussion and Findings
A. Identical or Confusingly Similar
Respondent Mascall contends, in effect, that the natural reading of the string “michelinguides” in the disputed domain names <michelinguides.com> and <michelinguides.info> is “Michel In Guides”. This contention is fanciful. The Panel has no doubt that the natural and most common reading of the string “michleinguides” is “Michelin Guides”. By virtue of its length and magnitude of use, Complainant’s trademark MICHELIN is well-known worldwide. One of the goods in respect of which this trademark is well-known is restaurant/hotel guides. Thus, the most likely reading an Internet user would give to the string “michelinguides” in the disputed domain names <michelinguides.com> and <michelinguides.info> is of Complainant’s trademark, MICHELIN, followed by a good in respect of which that trademark is well-known, namely guides – that is to say, “Michelin Guides”.
The disputed domain names <michelinguides.com> and <michelinguides.info> incorporate the whole of Complainant’s registered trademark MICHELIN, with the addition of a descriptive word, being either “guides” or “cars”. The dominant element of each of these disputed domain names is Complainant’s trademark MICHELIN. The Panel finds that the addition of the descriptive word does not lessen the inevitable confusion of these disputed domain names with Complainant’s trademark. This is especially so given that the additional word describes a good (“guides”) in respect of which Complainant’s trademark is well-known.
Accordingly, the Panel finds that each of the disputed domain names <michelinguides.com> and <michelinguides.info> is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Respondent Mascall contends, in effect, that he has a right or legitimate interest in the disputed domain names <michelinguides.com> and <michelinguides.info> because he uses them to resolve to the so-called “Michel In Guides” website, consisting of photomontages of the current UEFA president Mr. Michel Platini, some of which depict him dressed in a girl guides uniform. Once again, this contention is fanciful. No explanation was proffered as to the legitimate purpose this website serves. Complainant has provided evidence establishing that initial uses of the disputed domain names <michelinguides.com> and <michelinguides.info> were, respectively, to resolve to a website being developed by Respondent Mascall containing advertisements for computer products, and to resolve to a website with pay-per-clink links to other websites related to the Complainant’s fields of business. Use of the disputed domain names to resolve to the so-called “Michel In Guides” website occurred only after Complainant sent Respondent Mascall a cease and desist letter. The Panel is satisfied that this later use is merely an attempt to provide a veneer of legitimacy to the unauthorized use of Complainant’s trademark in the disputed domain names.
Respondent Mascall is not a licensee of, or otherwise affiliated with, Complainant, and has not been authorized by Complainant to use its MICHELIN trademark. According to the present record, the disputed domain names <michelinguides.com> and <michelinguides.info> are not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Furthermore, Respondent Mascall has not provided any evidence that he has been commonly known by these disputed domain names, or that it has, for any other reason, rights or legitimate interests in these disputed domain names.
Accordingly, the Panel finds that Respondent Mascall has no rights or legitimate interests in the disputed domain names <michelinguides.com> and <michelinguides.info>.
C. Registered and Used in Bad Faith
The disputed domain names <michelinguides.com> and <michelinguides.info> were registered many decades after Complainant first registered its MICHELIN trademark. The evidence on the record provided by Complainant with respect to the extent of use of its MICHELIN trademark, combined with the absence of any evidence provided by Respondent Mascall to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain names <michelinguides.com> and <michelinguides.info> were registered, Respondent Mascall most likely knew of the Complainant’s MICHELIN trademark, and knew that he had no rights or legitimate interests in these disputed domain names.
The evidence on the record provided by Complainant with respect to the initial use of the disputed domain names <michelinguides.com> and <michelinguides.info> indicates that Respondent Mascall used them to attract, or to attempt to attract, for commercial gain, Internet users to various websites by creating confusion with Complainant’s trademark as to the affiliation of those websites.
For all these reasons, the Panel is satisfied that each of the disputed domain names <michelinguides.com> and <michelinguides.info> has been registered and is being used in bad faith.
8. Decision
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 names <michelinguides.com> and <michelinguides.info> be transferred to Complainant.
Andrew F. Christie
Sole Panelist
Date: September 10, 2013