WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Ready Asset
Case No. D2014-1563
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Above.com Domain Privacy of Beauvmaris, Victoria, Australia / Ready Asset of Xiamen, China.
2. The Domain Name and Registrar
The disputed domain name <michelinb2b.net> (the “Domain Name”) 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 September 11, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 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 September 19, 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 September 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2014.
The Center appointed Gustavo Patricio Giay as the sole panelist in this matter on November 3, 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 is a global tire manufacturer based in Clermont-Ferrand, France, with operations in more than 170 countries and 111,190 employees as of December 31, 2013.
The Complainant is the owner of the MICHELIN trademark which is used in connection with automobile and tire manufacturing industries, hotel/restaurant guides and map publications throughout the world, including in Australia.
In 2000, Complainant registered the domain name <michelinb2b.com>, which is used for the presentation of its services and products to Internet users.
The Domain Name was registered on February 1, 2014. According to the evidence submitted by the Complainant, the Domain Name leads to a pay-per-click parking site featuring sponsored links to different tire manufacturers, including the Complainant and its competitors.
5. Parties’ Contentions
The Complainant requests the cancellation of the Domain Name on the following grounds:
(i) The Domain Name is identical or confusingly similar to a trade or service mark in which the Complainant has rights.
The Complainant argues that the Domain Name is confusingly similar to its well-known MICHELIN trademark as it reproduces said trademark in its entirety. In this context, the Complainant further contends that neither the addition of the generic “b2b” term nor the addition of the “.net” generic Top-Level Domain exclude the likelihood of consumer confusion.
(ii) The Respondent has no rights or legitimate interests in connection with the Domain Name.
The Complainant asserts that the Respondent is not commonly known by the name “Michelin”; it is not affiliated in any way with the Complainant and has shown no use -or demonstrable preparations to use- the Domain Name in connection with a bona fide offering of goods or services.
(iii) The Domain name was registered and is being used in bad faith.
The Complainant contends that the Respondent registered the Domain Name in bad faith based on the worldwide notoriety and reputation of the MICHELIN trademark, which would make it impossible for the Respondent not to have it in mind while registering the Domain Name. In addition, the Complainant highlights that the Respondent deliberately concealed its identity when registered the Domain Name, another factor that adds to a showing of bad faith at the time of registration.
The Complainant also argues that the Respondent uses the Domain Name in bad faith, based on the absence of license or permission from the Complainant. Furthermore, the Complainant points to the fact that the Respondent uses the Domain Name to direct Internet users to a parking website displaying pay-per-click links related to tires, including those of the Complainant and its competitors. From this context, the Complainant argues that the clear inference to be drawn is that the Respondent is trying to benefit from the fame and reputation of the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail in the proceedings, paragraph 4(a) of the Policy requires a showing of the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) That the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it owns numerous trademark registrations for MICHELIN throughout the world. The Complainant has also shown that it owns registrations for and operates at least three domain names that contain its MICHELIN trademark, namely: <michelin.com>, <michelinb2b.com> and <michelin.com.au>.
Previous UDRP panel decisions have held that MICHELIN is a well-known trademark especially in connection with (but not limited to) tires (among others, Compagnie Générale des Etablissements Michelin v. Alex Moore, WIPO Case No. D2014-0048; Compagnie Générale des Etablissements Michelin (Michelin) v. Vyacheslav Nechaev, WIPO Case No. D2012-0384).
The Domain Name incorporates the Complainant’s MICHELIN trademark in its entirety, differing only in the incorporation of the “b2b” particle. Previous UDRP panels have held that wholly incorporating a complainant’s registered trademark in a domain name may be sufficient to establish confusing similarity for the purposes of the Policy, particularly where the trademark is highly recognizable and famous (see, e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). In addition, prior UDRP decisions have consistently held that adding a generic or descriptive term to a registered trademark does not prevent the domain name from being confusingly similar (among others, Microsoft Corporation v. J. Holiday Co, WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; and Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694). Moreover, the addition of generic terms may even contribute to increase the risk of consumer confusion, as the combination of the Complainant’s trademark with an ordinary word or term may suggest a legitimate connection between the Domain Name and the Complainant (Compagnie Générale des Etablissements Michelin v. Alex Moore, WIPO Case No. D2014-0048).
In this context, the Panel finds that adding the term “b2b” to the MICHELIN trademark does not lessen the confusing similarity between the Domain Name and the Complainant’s well-known trademark.
Therefore, the Panel finds that the Complainant has met its evidentiary burden under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant argues -uncontested- that the Respondent is not known by the name “Michelin” or any combination including that word, and that the Respondent was never authorized to use the Complainant’s MICHELIN trademark in any way or context.
In addition, no evidence was brought before this Panel suggesting that Respondent is engaged -or is even demonstrably preparing to engage- in a bona fide offering of goods or services or in any other type of legitimate business that would warrant the registration of the Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Previous UDRP panels have held that the Complainant’s trademark MICHELIN is a well-known mark (among others, Compagnie Générale des Etablissements Michelin v. Alex Moore, WIPO Case No. D2014-0048; Compagnie Générale des Etablissements Michelin (Michelin) v. Vyacheslav Nechaev, WIPO Case No. D2012-0384) and the Complainant has produced ample evidence to that effect. The MICHELIN trademark is also inherently distinctive and has no primary meaning in English. Thus, it is inconceivable that the Respondent was unaware of the Complainant’s trademark and its activities at the time of the Domain Name registration.
Further, according to the Complainant’s submissions, the Respondent has made use of the Domain Name as a pay-per-click site with links to Complainant’s competitors’ websites. This amounts to evidence of use in bad faith, as the Respondent has intentionally diverted Internet traffic on the basis of a misleading suggestion of an association with the Complainant.
Lastly, the Respondent sought to conceal its identity when registering the Domain Name, another factor that adds to a showing of bad faith.
The Panel therefore holds that the Domain Name was registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <michelinb2b.net> be cancelled.
Gustavo Patricio Giay
Date: November 19, 2104