WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin (Michelin) v. Privacy Protection Service INC d/b/a PrivacyProtect.org / Sergey Asmik
Case No. D2014-1015
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin (Michelin) of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Sergey Asmik of St. Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <viamichelim.com> is registered with Media Elite Holdings Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2014. On June 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2014, 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 June 19, 2014 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 June 24, 2014.
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 June 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2014.
The Center appointed Seth M. Reiss as the sole panelist in this matter on July 22, 2014. 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 claims ownership of the fanciful word mark MICHELIN, with numerous trademark registrations throughout the world including in the Russian Federation since 1968 and in Australia since 2001. The Complainant uses its MICHELIN mark in connection with the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides and maps publications.
The Complainant has distributed its automobile and tire products in Australia for the last 50 years and has had a corporate presence there since October 1997. The Complainant also has had a commercial presence in Eastern Europe, including operating a factory in the Russian Federation, near Moscow, established there in 2004.
In 2001, the Complainant adopted and began using the trade name “ViaMichelin” in conjunction with a wide range of digital mobile services including mapping, route plans, on-line hotel bookings, Michelin Guide hotel, restaurant and tourist recommendations, and weather and traffic reports, which the Complainant makes available to consumers through the Internet, mobile handsets, and personal navigation devices.
The Complainant promotes its products and services on the Internet through a variety of websites including those located by the domain names <michelin.com>, <viamichelin.com>, <michelin.au>, and <michelin.ru>. Its <michelin.com> domain name was registered in 1993, and its <viammichelin.com> domain name was registered in 2000.
According to the WhoIs record, the disputed domain name <viamichelim.com> was first registered in April 2010. At the time the Complaint was filed, the disputed domain name <viamichelim.com> was registered to the privacy service Privacy Protection Service Inc. d/b/a PrivacyProtect.org of Nobby Beach, Queesland, Australia. When the Center notified the Registrar of the subject proceeding, the Registrar informed the Center that the current registrant of the domain name was Sergey Asmik of St. Petersburg, Adygeja, the Russian Federation. The Center’s communications directed to Sergey Asmik at the contact information given by the Registrar were returned undeliverable.
At the time the Complaint was filed, as well as at the time this decision was prepared, the disputed domain name resolves to a parking page that displays commercial links. The commercial links are predominantly to maps and route-planning resources, similar to those provided by the Complainant but unrelated to the Complainant and its goods and services.
Because the WhoIs record revealed only a privacy service, the Complainant made no attempt to resolve the dispute with the Respondent.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to its MICHELIN mark and ViaMichelin trade name in which the Complainant holds rights. The MICHELIN mark is well-known and famous for the Complainant's automobile and tire products and travel guide services. According to the Complainant, the Respondent is engaging in “typosquatting” by having substituted the letter “m” for the letter “n” in the Complainant’s trade name ViaMichelin to derive the disputed domain name <viamichelim.com>.
The Complainant next argues that the Respondent has no rights or legitimate interests in respect to the disputed domain name as the Respondent is not affiliated with the Complainant, has not been authorized to use the Complainant’s marks, is not commonly known by the word MICHELIN, and because the MICHELIN mark is too well-known for the Respondent’s unlicensed use of the disputed domain name to be bona fide.
Lastly the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because the Respondent could not have been unaware of the Complainant and its MICHELIN and ViaMichelin marks at the time the Respondent registered and began using the <viamichelim.com> domain name. Likewise, the Respondent’s substitution of the letter “m” for the letter “n” at the end of the trade name ViaMichelin, and the Respondent's use of the disputed domain name to point to a website containing links that resolve into website offering competitive travel related services while likely generating pay-for-click revenues from Internet traffic traversing the links, is strong evidence that the Respondent registered and is using the disputed domain name in bad faith.
The relief requested by the Complainant is that the disputed domain name be transferred to it.
As noted above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs that the “Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant has the burden of establishing the existence of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This Panel finds that the disputed domain name <viamichelim.com> is identical or confusingly similar to the marks MICHELIN and VIAMICHELIN in which the Complainant has rights.
The Complainant holds rights to the MICHELIN mark through multiple national registrations including in countries where the Respondent appears to reside. The Panel also finds that the Complainant has unregistered trademark rights in the VIAMICHELIN mark through commercial use since 2001 in particular in conjunction with services offered through the Complainant’s “www.viamichelin.com” mobile media site. Other panels have characterized the Complainant’s MICHELIN mark as “well-known” or “famous”, e.g., Compagnie Generale des Etablissements Michelin v. Milan Kovac / Privacy--Protect.org, WIPO Case No. D2012-0634, and this Panel concurs with such characterizations.
The addition of the prefix “via” fails to distance the disputed domain name from the Complainant’s well-known MICHELIN mark sufficiently to avoid confusion, in particular in light of the Complainant’s rights in the VIAMICHELIN mark. Nor does the substitution of the letter “m” for the letter “n” in the mark MICHELIN or VIAMICHELIN avoid confusion. “A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name” as it does in this case. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.10.
It is very well established that the addition of a Top Level Domain suffix is typically irrelevant to the examination of the identicality / confusing similarity element. Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of a domain name is that:
[w]hile the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In the pending case the Complainant has alleged that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent is neither authorized, licensed, endorsed or otherwise permitted by the Complainant to use the Complainant’s marks MICHELIN or VIAMICHELIN in the disputed domain name or otherwise. This establishes a prima facie case and shifts the burden to the Respondent to demonstrate rights or legitimate interests in the domain name.
By not submitting a response, the Respondent has failed to invoke some circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that the Respondent holds some right or legitimate interest in the disputed domain name. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323.
In addition, noting the fame of the Complainant’s MICHELIN mark and how the disputed domain name is being used, this Panel finds that the Respondent’s use of the <viamichelim.com> domain name is not bone fide.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy is clearly implicated by the facts here at issue. The Respondent is using the disputed domain name to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s MICHELIN and VIAMICHELIN marks, and in particular, with the Complainant’s ViaMichelin branded mobile device website and its travel related services.
As explained in the discussion of the second element above, the very well-known nature of the MICHELIN mark raises the inference of bad faith registration and use. When a domain name incorporates a famous mark comprised of a coined or fanciful term, “it would be difficult, perhaps impossible, for Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights.” Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000).
As suggested by the Complainant, it is likely the Respondent obtains pay-for-view revenues as a result of Internet traffic attracted to and funneled through the Respondent’s “www.viamichelim.com” website. When a domain name incorporating a famous mark is used to attract Internet traffic to fuel click-through revenues, a conclusion of bad faith registration and use under paragraph 4(a)(iii) of the Policy is warranted. The Sportsman’s Guide, Inc. v. Asia Ventures, Inc., WIPO Case No. D2002-1116 (use of domain name to attract traffic for commission based search engine); Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2005-1136 ( “[I]t is now a well-known practice to display on a web page or search engine various links to other commercial websites, every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections.”)
Finally, the Respondent’s obvious substitution of the letter “m” for the letter “n” in the Complainant’s mark VIAMICHELIN in order to arrive at the disputed domain name <viamichelim.com> presents a clear case of "typosquatting", generally regarded as per se evidence of bad faith registration and use. Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith and that the third and final element of the Policy is established.
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 <viamichelim.com> be transferred to the Complainant.
Seth M. Reiss
Date: August 4, 2014