WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Online Admin, DotBadger Domains
Case No. D2016-0426
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Online Admin, DotBadger Domains of Prague, Czech Republic.
2. The Domain Name and Registrar
The disputed domain name <michelins.restaurant> is registered with Super Registry Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2016. On March 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2016, 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 proceedings commenced on March 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2016.
The Center appointed Stefan Abel as the sole panelist in this matter on April 5, 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.
4. Factual Background
The Complainant is a French tire company established in the beginning of the last century. From the start, the Complainant published maps and travel guides in order to promote automotive mobility. Today the Complainant manufactures well over a hundred million tires per year and well over ten million maps and guides. The Complainant owns over fifty production sites in seventeen countries and employs over a hundred thousand people worldwide.
The Complainant’s “Michelin Guide” on restaurants rated by the Complainant’s “inspectors” by one to three “Michelin stars” is famous in many countries and is, since decades, one of the most important references for high class cuisine in many countries. The Complainant’s guide is, in particular, famous in Germany and France and other European countries.
The Complainant offers its products and services in the Internet under the domain name <michelin.com>, registered on December 1, 1993, and, in particular under the Czech country code domain name <michelin.cz>, registered on December 10, 1997. The Complainant has also a branch in Prague, Czech Republic.
The Complainant owns numerous MICHELIN trademark registrations around the world, including the EU trademark 4836359 MICHELIN (word) covering, inter alia, services of tourism, directories and guides. This trademark has been registered on March 13, 2008.
The disputed domain name was created on July 22, 2015. The disputed domain name resolves to a webpage displaying an advertisement “vacation holiday club” and numerous terms containing links, in particular the terms “recreation” and “travel”.
The Respondent owns many hundred domain names and has been found by previous UDRP panels to have registered domain names in bad faith in at least three cases of using the domain names reproducing
third-parties’ trademark for pay-per-click sites. The Respondent never replied to the Complainant’s correspondence sent to the Respondent before the proceeding in order to find an agreement on the disputed domain name.
5. Parties’ Contentions
In summary, the Complainant’s contentions are as follows:
The Complainant’s trademark MICHELIN has been considered to be “well-known” or “famous” in previous Panel decisions. The disputed domain name incorporates the well-known trademark of the Complainant in its entirety. The supplemental letter “s” does not significantly affect the appearance or pronunciation of the disputed domain name. The disputed domain name is therefore confusingly similar to the Complainant’s trademark. When taking into account the Top-Level Domain “restaurant” confusing similarity is increased.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant nor has it been authorized by the Complainant to use and register its trademark or to seek registration of any domain name incorporating said mark. Since the Respondent uses the disputed domain name for a parking page with pay-per-clicks, the Respondent takes undue advantage of the Complainant’s trademark to generate profits. Additionally, since the Respondent never answered the Complainant’s letter despite several reminders, it can be assumed that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The disputed domain name was registered and is being used in bad faith. A quick Internet search would have revealed to the Respondent the existence of the Complainant’s trademark. It has been involved in several UDRP cases before, which resulted in the transfer of the Respondent’s respective domain names, so that the Respondent has apparently engaged in a pattern of conduct. The Respondent uses the disputed domain name to direct Internet users to a web page displaying pay-per-click links. The Respondent’s primary motive in registering and using the disputed domain name was to capitalize or otherwise take advantage of the Complainant’s trademark rights through the creation of initial interest of confusion. Finally, it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides for a transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(i) the Respondent’s 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 has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, shall be evidence of registration and use of the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks MICHELIN. The sublevel part of the disputed domain name “michelins” is phonetically – when pronounced in the same pronunciation as the Complainant’s famous trademark (French) – identical. From the visual perspective, this element is highly similar. In addition, the additional letter “s” in the disputed domain name may be perceived as a plural – or genitive – “s”. The element “michelins” of the disputed domain name is therefore highly similar and nearly identical to the Complainant’s trademark.
The Panel does not need to decide whether new generic Top-Level Domains are to be considered when assessing confusing similarity of the disputed domain name, other than “traditional” Top-Level Domains. Confusing similarity is clearly established without consideration of the element “restaurant” forming the
Top-Level of the disputed domain name. The Panel finds that congruency of the disputed domain name is even increased when taking into consideration the Top-Level Domain name “restaurant” since this additional generic term, when preceded by the Complainant’s trademark, which is famous for a restaurant guide, is perceived by the public as a descriptive element indicating the Complainant’s well-known activity of evaluating restaurants.
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its registered trademark or to register the disputed domain name.
The disputed domain name does not have any apparent generic or descriptive meaning and the term “michelins” is not used as a designation for a person or a company other than the Complainant or for services or products other than those provided by the Complainant.
By producing evidence on these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The evidentiary burden therefore shifts to the Respondent. The Respondent must then come forward with appropriate allegations or evidence to demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing.
The Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy as it is an impossible task for the Complainant to prove a negative that is primarily within the knowledge of the Respondent, such as the lack of rights or legitimate interests in the disputed domain name.
Producing prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name must therefore be regarded as sufficient under these circumstances to establish the requirement of paragraph 4(a)(ii) of the Policy if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus in previous UDRP decisions (see, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Doserno Trading Limited and Red Diamond Holdings Sarl v Bruce Chang, WIPO Case No. D2012-0263).
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established this element in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
The Panel finds, by using the disputed domain name for a set of pay-per-click links, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s MICHELIN trademarks as to the source, sponsorship and affiliation of the website (paragraph 4(b)(iv) of the Policy).
The disputed domain name combines the Complainant’s trademark MICHELIN (along with the plural – or genitive – “s”) with the term “restaurant” which is descriptive with respect to the services and products marketed under the Complainant’s trademarks: the disputed domain name suggests that the website is about restaurants rated by the Complainant. In the Panel’s view, Internet users are therefore likely to get the idea that the Respondent’s site at the disputed domain name is sponsored by the Complainant or affiliated with the Complainant. That likelihood of confusion will likely attract more customers to the site at the disputed domain name which will result in commercial gain as the Respondent’s site provides links to numerous commercial websites, including links to travel websites.
The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant and its trademarks in mind. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its products and services is obvious to the Panel considering that no rights or legitimate interests in using the disputed domain name are apparent, that the Complainant’s trademarks have been registered years before the registration of the disputed domain name, that the Complainant operates websites under the sublevel domain name “michelin”, in particular under the country code Top-Level of the country where the Respondent is located, which has been registered years before the registration of the disputed domain name, too, and that MICHELIN is a famous trademark in several European countries and that the Complainant is active in the country where the Respondent is located, too.
The finding of registration and use in bad faith is further supported by the fact that the disputed domain name owner, who holds many hundreds of domain names, obviously deals with domain names and has been found responsible for bad faith registrations in some similar UDRP cases before. Although these elements on their own may not suffice to establish bad faith registration and use, they support this finding when considered in combination with the circumstances set out above.
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 <michelins.restaurant> be transferred to the Complainant.
Date: April 20, 2016