WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Neale Savery
Case No. D2016-0970
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Neale Savery of Windsor, Berkshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
2. The Domain Names and Registrars
The disputed domain names <basquemichelinfoodexperience.com> and <basquemichelinrestaurants.com> (the "Domain Names") are registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2016. On May 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same date, 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 May 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 14, 2016.
The Center appointed Linda Chang as the sole panelist in this matter on June 22, 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, headquartered in France, manufactures and markets tires for vehicles. The Complainant also offers electronic mobility support services and publishes travel guides, hotel and restaurant guides, maps and road atlases, including the "Michelin Guide" created in 1900 to award "Michelin Stars" for the excellence of selected establishments. The thirty third edition of the 2014 Michelin Guide covers 44 cities in 20 European countries including the United Kingdom where the Respondent is established.
The Complainant is the owner of the European Union trademark MICHELIN No. 4,836,359, registered on March 13, 2008, and the International trademark MICHELIN No. 348,615, registered on July 24, 1968.
The Domain Names were registered on October 6, 2015 under a privacy shield, and resolve to the default page of the webhost. On December 14, 2015, the Complainant's representative sent a cease-and-desist letter to Contact Privacy Inc. and the Registrar to request cancellation of the Domain Names and to reveal the identity and contact details of the underlying registrant. On December 21, 2015, the true identity of the registrant and actual Respondent was revealed by the Registrar. On the same date, a reply to the cease-and-desist letter was received from a third party different from the current Respondent claiming that he had registered the Domain Names on behalf of its client who was unaware of the MICHELIN trademark. The reply also mentioned that this third party accepted to cease the use of the Domain Names and not to renew them, but he did not respond further to the Complainant's cancellation request despite several reminders.
5. Parties' Contentions
The Complainant contends as follows:
(1) The Domain Names are identical or at least confusingly similar to the Complainant's MICHELIN trademark. The Domain Names substantially reproduce the MICHELIN trademark in its entirety, with the adjunction of the generic terms "restaurants", "food" and "experience" corresponding to one of the Complainant's field of activities related to Michelin-starred restaurants and gastronomy as well as the geographical term "basque". The Respondent created a likelihood of confusion with the Complainant's MICHELIN trademark by registering the Domain Names.
(2) The Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent is not affiliated with the Complainant in any way nor has it been authorized to use and register its trademarks, or to seek registration of any domain name incorporating the MICHELIN trademark. The Respondent has not made any reasonable and demonstrable preparations to use the Domain Names and fails to show any intention of noncommercial or fair use of the Domain Names.
(3) The Domain Names were registered and are being used in bad faith. Given that the composition of the Domain Names makes references to the MICHELIN trademark and activities related to Michelin-starred restaurants and gastronomy, the Respondent must know the MICHELIN trademark when registering the Domain Names. Furthermore, the Domain Names resolve to inactive pages and such state of inactivity constitutes bad faith use.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has presented sufficient evidence to prove its registered trademark rights in the MICHELIN mark.
The presence of the generic Top-Level Domain ("gLTD") ".com" in the Domain Names is not a distinguishing factor. Thus the Domain Names wholly incorporate the Complainant's MICHELIN trademark, the generic words "restaurants", "food" and "experience", and the geographical term "basque". The Panel agrees that the addition these words and term does not avoid the finding of confusing similarity, but instead reinforces the risk of confusion since the generic words refer to the Complainant's business. See Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800.
Accordingly, the Panel holds the Domain Names are confusingly similar to the Complainant's trademark, and the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent is not affiliated with the Complainant, nor has it been authorized to use and register the Complainant's trademark, or to seek the registration of any domain name that incorporates the MICHELIN trademark.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(c) of the Policy, and the burden of production shifts to the Respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683. However, the Panel notes that Respondent has chosen not to respond and did not file any submissions to prove its rights or legitimate interests in the Domain Names.
The Domain Names resolve to inactive pages. The Panel agrees that the Respondent has not made any reasonable and demonstrable preparations to use the Domain Names and fails to show any intention of noncommercial or fair use of the Domain Names. Accordingly, the Panel determines that there is no indication that the Respondent may have rights or legitimate interests in respect of the Domain Names.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
The Complainant's trademark registrations of the MICHELIN mark cover the European Union, including the United Kingdom. The Complainant has developed tremendous goodwill in its MICHELIN mark by marketing the Michelin Guides and Michelin-starred restaurants. The MICHELIN trademark of the Complainant is well known worldwide.
Given the reputation of the MICHELIN trademark, the Panel finds it implausible that the Respondent was unaware of the MICHELIN trademark at the time of registering the Domain Names. The Panel concludes that the Respondent's awareness of the MICHELIN mark at the time of registration suggests opportunistic bad faith registration. See Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277.
The Domain Names resolve to inactive pages. The Panel accepts that the Respondent engages in passive holding of the Domain Names, which satisfies the situations clarified in the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and constitutes bad faith.
The Respondent has chosen not to respond to the cancellation request of the Complainant, or to this Complaint. This behavior of the Respondent is indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, "t[T]he failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787)".
Moreover, the Respondent used a privacy service to hide its true identity. The use of privacy shield is not in itself constitutive of bad faith, but if combined with all the above-mentioned elements, the Panel determines that it conveys a finding of bad faith.
In light of the above facts and reasons, the Panel therefore determines that the Domain Names were registered and are being used in bad faith pursuant to 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 Names, <basquemichelinfoodexperience.com> and <basquemichelinrestaurants.com>, be transferred to the Complainant.
Date: July 6, 2016