WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Lisa Katz, Domain Protection LLC/Domain Hostmaster, Whois Privacy Services Pty Ltd
Case No. D2015-1078
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Lisa Katz, Domain Protection LLC of Dallas, Texas, United States of America; Domain Hostmaster, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <michelin2b.com> (the "Domain Name") is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2015. On June 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 25, 2015, 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 June 29, 2015 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 July 3, 2015.
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 proceeding commenced on July 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2015.
On July 23, 2015, the Complainant requested to suspend the proceeding. On July 24, 2015, the Center notified the suspension of the proceeding. Upon the Complainant's request, the proceeding was reinstituted on August 20, 2015 with a new Response due date of August 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 25, 2015.
The Center appointed Dawn Osborne as the sole panelist in this matter on September 2, 2015. 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 owns the trade mark MICHELIN across the world in connection with the automobile and tire manufacturing industries, hotel/restaurant guides and map publications, dating back first in time to 1968.
The Domain Name resolves to a parking page displaying commercial links some of which are related to tires including those of the Complainant and its competitors. The Domain Name was registered in 2004 over thirty years after the Complainant registered its MICHELIN trade mark.
5. Parties' Contentions
The Complainant's submissions can be summarized as follows:
The Complainant owns the trade mark MICHELIN across the world in connection with the automobile and tire manufacturing industries, hotel/restaurant guides and map publications, dating back first in time to 1968. It also has a reputation in the automotive industry and in gastronomy. It has a marketing operation in more than 170 countries.
The Complainant is established in Australia through Michelin Pty Ltd. It was established in October 1997 to manage and develop Australia, New Zealand and the Pacific Islands. Prior to this the Michelin brand had been in Australia for the last 50 years through its importation by sales distributors.
The Complainant owns and communicates on the Internet via various websites to present its services and products, among them "www.michelin.com.au" and "www.michelinb2b.com".
No reply was received to a cease and desist letter sent to the Respondent regarding the Domain Name.
The Domain Name is identical or at least confusingly similar to the Complainant's famous mark MICHELIN reproducing it entirely and combining it with the generic term "2b" which is a common abbreviation describing business to business transactions. The public would reasonably assume that the Domain Name would be owned by or related to the Complainant. The addition of the ".com" generic Top-Level Domain ("gTLD") suffix does not affect the likelihood of confusion.
The Respondent has no prior rights or legitimate interests in the Domain Name. The registration of the Complainant's MICHELIN mark preceded the registration of the Domain Name by years. The Respondent is not commonly known by the Michelin name, nor is it authorised or licensed to use the MICHELIN mark in any way. The Domain Name resolves to a parking page displaying commercial links some of which are related to tires and notably those of the Complainant and its competitors. Given the famous nature of the Complainant's name the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the Domain Name or that it has been used in connection with a bona fide offering of goods or services. Since the use is commercial there is no legitimate noncommercial or fair use by the Respondent. Additionally the Respondent's name has been registered with a privacy service in an attempt to hide identity.
"Michelin" has no meaning in English and the only result found online is the Complainant.
Bad faith can be found where the Respondent knew or should have known of the Complainant's trade mark rights and, nevertheless registered a domain name in which it had no rights or legitimate interests.
The Respondent has not tried to defend its rights nor state any valid arguments to justify registration of the Domain Name and has attempted to hide its identity indicating bad faith.
Use of such a similar name should mean that confusion should be presumed. By use of the Domain Name for a web page displaying pay per click links which are likely to generate revenues the Respondent is taking undue advantage of the Complainant's trade mark to generate profits. The use of the Domain Name to divert Internet users to a web page for commercial gain constitutes a use in bad faith pursuant to the Policy. In addition there is no indication of the Respondent's own activities on the aforementioned site and there are links diverting users to the Complainant's competitors. It was likely that the Domain Name was registered to prevent the Complainant from using its trade mark in the Domain Name and the Respondent did not reply to the Complainant's cease and desist letter. The Respondent has registered and used the Domain Name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
The Complainant has trade mark registrations for MICHELIN covering the automotive industry and tires dating back first in time to 1968. The Domain Name is confusingly similar to the Complainant's trade mark consisting of the Complainant's MICHELIN registered trade mark and the generic text "2b", which appears to refer to the common generic expression "b2b" meaning business to business and can be readily interpreted by the human mind as "Michelin to business". The distinctive part of the Domain Name is the MICHELIN mark. The addition of the non-distinctive text "2b" does nothing to prevent the confusing similarity of the Domain Name with the Complainant's MICHELIN trade mark. As such the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests of the Respondent
The Respondent has not filed a Response. It has no consent from the Complainant, has not used the Domain Name for a bona fide offering of goods or services given its confusing use, as discussed below, and is not commonly known by the Domain Name. Nor is it making noncommercial fair use of it. In the circumstances of this case, and in view of the Panel's discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
"by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location."
The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainant's trade mark with only generic terms added. The Domain Name was registered over thirty years after the Complainant's mark was registered. Further, in the opinion of the Panel the use made of the Domain Name is misleading. The website at the Domain Name has been used for advertisement links to third party products and to promote products in the same industry as and referring to the Complainant, showing knowledge of the Complainant and its business. In the absence of a Response from the Respondent, considering the fame of the Complainant and the material attached to the Domain Name the Panel is satisfied that the Complainant has shown that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to its website for commercial gain by creating a likelihood of confusion that its website or links displayed on it are connected to the Complainant. As such the Panel finds that the Domain Name has been registered and used in bad faith satisfying the third limb 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 Domain Name <michelin2b.com> be cancelled.
Date: September 15, 2015