WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Mark Hill
Case No. D2015-2274
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Mark Hill of London, United Kingdom of Great Britain and Northern Ireland (“the United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <michelinrestaurants.london> is registered with Host Europe Group (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2015. On December 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2016.
The Center appointed Petter Rindforth as the sole panelist in this matter on February 10, 2016. 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.
The Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant is a tire company, which also provides a hotel and restaurant reference guide, the “Michelin Guide”.
The Complainant is the owner of the Community Trademark (CTM) No. 004836359 MICHELIN (word), registered on March 13, 2008 in respect of goods and services in classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34 and 39.
The disputed domain name <michelinrestaurants.london> was registered on September 22, 2014. No information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant states that it is the leading tire company, dedicated to improve the mobility of goods and people by manufacturing and marketing tires for every type of vehicle. The Complainant is also offering electronic mobility support services on “www.viamechelin.com” and publishes travel guides, hotel and restaurant guides, maps and road atlases.
The Complainant is headquartered in France, but present in more than 170 countries, has 112,000 employees and operates production plants in 17 different countries. In the United Kingdom, the Complainant was incorporated on May 11, 1905.
The Michelin brothers created the Michelin Guide in 1900, and it is today available in 14 editions covering 23 countries and sold in nearly 90 countries. Michelin Guides and Michelin-starred restaurants are also famous and present in various regions of the United Kingdom.
On July 2, 2015, the Complainant sent a cease-and-desist letter to the, by that time, listed registrant of <michelinrestaurants.london>, but received no reply. Instead, the disputed domain name was transferred to the Respondent. On September 21, 2015, the Complainant sent a cease-and-desist letter to the Respondent. Despite of several reminders, the Respondent never replied to the Complainant.
The disputed domain name initially pointed to a web page offering <michelinrestaurants.london> for sale. As the disputed domain name now has apparently been suspended by the Registrar due to the failure of the Registrar to verity WhoIs information, it now directs to an inactive web page.
The Complainant argues that <michelinrestaurants.london> is identical or at least confusingly similar to the Complainant’s trademark MICHELIN. The trademark is well-known. The addition of the generic term “restaurants” does not dispel any likelihood of confusion, but rather increases the level of confusion since it corresponds to one of the Complainant’s activities. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The prior use of <michelinrestaurants.london> to point to a web site indicating that the disputed domain name was for sale indicates that the only reason why the Respondent registered <michelinrestaurants.london> was for the purpose of selling it to the Complainant for a valuable consideration in excess of documented out-of-pocket costs directly related to <michelinrestaurants.london>.
Finally, the Complainant states that the disputed domain name was registered and is being used in bad faith.
It is impossible that the Respondent was unaware of the Complainant’s prior rights when registering <michelinrestaurants.london>, as the Complainant’s trademark MICHELIN is well-known throughout the world, including the United Kingdom where the Respondent is located.
The Respondent’s reproduction of the trademark MICHELIN in its entirety, combined with the generic term “restaurants,” as well as with the Top-Level Domain (TLD) “london”, increases the likelihood of confusion and clearly proves that the Respondent was aware of the existence of the Complainant’s trademark.
As to the bad faith use, the Complainant refers to a number of previous UDRP cases, where also passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy.
Here, the Complainant refers to the fact that: i) in the absence of any license or permission from the Complainant to use a well-known trademark such as MICHELIN, no actual or contemplated bona fide or legitimate use of the disputed domain name can be reasonable claimed; ii) <michelinrestaurants.london> is confusingly similar to the Complainant’s trademark; iii) the Respondent has not replied to the cease-and-desist letters sent by e-mail, and the postal version returned undelivered and marked as “address incomplete”, indicating that the Respondent has tried to hide its identity.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
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 each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner the trademark MICHELIN, registered as a Community Trademark (covering the European Union, including the United Kingdom).
The relevant part of the disputed domain name is “michelinrestaurants”, as it is well established in previous UDRP decisions that the added TLD – being a required element of every domain name – may be irrelevant when assessing whether or not a domain name is identical or confusingly similar to a trademark. In this case, the TLD, if considered, only refers to a specific geographic place, the city of London, which indicates geographically the city where the Respondent is located, but also the capital of a country where the Complainant has been active and well-known for a long time.
The Panel concludes that the disputed domain name consists of the Complainant’s trademark MICHELIN, with the addition of the generic word “restaurants”. As stated in many UDRP cases, the addition of a generic term does not necessarily distinguish a domain name from a trademark. In this case, MICHELIN, directly followed by “restaurants” can be seen to refer to the Complainant’s special Michelin Guide of restaurants. See Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627, holding that “[t]he addition of the generic term ‘online’…is not a distinguishing feature. In fact, in this case it seems to increase the likelihood of confusion because it is an apt term for [the] Complainant’s online business”; see also Goyard St-Honore v. WhoisGuard, WhoisGuard Protected, Brucef Lee, WIPO Case No. D2011-1837 (“In this case, the descriptive terms “bags” and “shop” have been appended to the Complainant’s registered GOYARD mark, which may serve to heighten Internet user confusion.”)
The Panel therefore concludes that <michelinrestaurants.london> is confusingly similar to the Complainant’s trademark MICHELIN and thus, the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Respondent has no rights to use the Complainant’s trademark or variations thereof and is not an authorized agent or licensee of the Complainant’s services or trademarks. There is also nothing on the record indicating that the Respondent is commonly known by the disputed domain name. As such, the Panel finds the Complainant has established a prima facie case on the second element.
By not submitting a formal Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, or in any other manner, any rights or legitimate interests in the disputed domain name or to rebut the Complainant’s prima facie case.
Further, the fact that the domain name is not used for any kind of a company web site, and until recently pointed to a web site with the only message that the same was for sale indicates that, before any notice to the Respondent of the dispute, the Respondent has not made any use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As the Complainant has described and proved, the trademark MICHELIN is well known and the trademark registrations covers the European Union, including the United Kingdom – the home country of the Respondent.
The fact that the Complainant’s trademark MICHELIN is well known throughout the world, has also been concluded in several other UDRP cases, such as Compagnie Générale des Etablissements Michelin v. zhouhaotian, WIPO Case No. D2015-1728 (“…it is famous for its Michelin Star Restaurants’ awarding system for restaurants and pubs”), see also Compagnie Générale des Etablissements Michelin v. Travel and entertainment group/Tom Warsop, WIPO Case No. D2015-1657 (“The Complainant’s name, trademark and activities are well known throughout the world).”)
As stated above, the disputed domain name consists of the Complainant’s trademark with the addition of the generic word “restaurants” that is clearly related to the services provided by the Complainant.
The Panel therefore concludes that the Respondent registered the disputed domain name with full prior knowledge of the Complainant’s trademark. See GA Modefine S.A. v. Thomas Casey, WIPO Case No. D2009-0826 (finding that a respondent’s knowledge of a complainant’s trademark rights, and its bad faith registration of the disputed domain name, may be inferred when the domain name merely consists of the complainant’s trademark and a term “clearly relate[d]” to the complainant’s products).
The disputed domain name <michelinrestaurants.london> is currently not in active use. As stated by Panels in previous UDRP disputes, the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“…the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration.”)
All the circumstances of the case must be examined to determine whether a respondent is acting in bad faith.
In this case, the Panel notes that:
(i) the Complainant’s trademark has a strong reputation and is well known, including the United Kingdom, the home country of the Respondent,
(ii) the Respondent has provided a non-active postal address, thereby making it difficult to correspond, and in breach of the Respondent’s Registration Agreement,
(iii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name,
(iv) the Respondent has until recently used the disputed domain name to point to a web site with the only message that the same was for sale.
In light of these particular circumstances, the Panel concludes that the Respondent’s passive holding of <michelinrestaurants.london> satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name “is being used in bad faith” by the Respondent.
Thus, the Panel concludes that the disputed domain name was registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 <michelinrestaurants.london> be transferred to the Complainant.
Date: February 24, 2016