WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Girish Kadel
Case No. D2016-1952
1. The Parties
Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is Girish Kadel of Antwerpen, Belgium, represented by Ajay Verma, India.
2. The Domain Name and Registrar
The disputed domain name <vegmichelin.com> is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 26, 2016. On September 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2016. The Response due date was extended to October 24, 2016 at the request of Respondent pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on October 24, 2016.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 1, 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.
On November 4, 2016, the Complainant filed Supplemental materials with the Center.
4. Factual Background
Complainant is a well-known French manufacturer of tires and related products for a whole range of vehicles, including airplanes, automobiles, bicycles, motorcycles, farm equipment, earth movers and trucks. It also offers electronic mobility support services through its website at "www.michelin.com" and for many years it has published travel guides, hotel and restaurant guides, maps and road atlases.
Complainant offers its products and services in more than 170 countries around the world and has over 112,300 employees. It also operates 68 production plants in 17 different countries.
In terms of its publishing business, Complainant distributed its first Michelin Guide in 1900, and since that time, the Michelin Guide business has expanded to cover many countries, with sales around the world. The Michelin Guide is well known for its system of awarding Michelin Stars for excellence of selected restaurant establishments.
The Complainant owns numerous trademark registrations for the mark MICHELIN around the world, including:
European Trademark No. 004836359 for MICHELIN dated January 4, 2006 covering International Classes 1,3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34, and 39.
European Trademark No. 013558366 for MICHELIN dated December 12, 2014 covering International Classes 9, 35, 38, 39, 41 and 42.
Complainant also owns long-standing domain name registrations, including:
<michelin.com> registered December 1, 1993
<michelin.be> registered December 12, 2000
Respondent registered the disputed domain name <vegmichelin.com> on November 4, 2015. Prior to the Complaint the disputed domain name resolved to a parking page with pay-per-clicks, some of the links were related to automotive products and services, including tires of Complainant and its competitors. The website at the disputed domain name is no longer active.
5. Parties' Contentions
Identical or Confusingly Similar
Complainant contends that the disputed domain name is confusingly similar to Complainant's trademarks. Complainant owns many trademark registrations for MICHELIN around the world including those listed in paragraph 4 of this Decision. Complainant submits that the disputed domain name reproduces Complainant's trademark MICHELIN in its entirety, and differs only in the addition of the prefix "veg" which only serves to increase the risk of confusion because the term relates to the word vegetarian. Complainant contends that the addition of a generic or descriptive term does not serve to distinguish the disputed domain name from Complainant's trademark.
Rights and Legitimate Interests
Complainant submits that Respondent does not have any rights or legitimate interests in the <vegmichelin.com> domain name. Respondent has never been authorized or licensed by Complainant, has not used the disputed domain name in connection with a bona fide offering of goods and services. Complainant contends that it is unrealistic to believe that Respondent was unaware of Complainant's reputation in the MICHELIN trademark. Before receiving Complainant's cease and desist letter, the disputed domain name reverted to a website that displayed commercial links, including those related to automotive products and services, including tires. Furthermore, Respondent's response to the cease and desist letter says that he intended to create a blog related to Michelin Starred Restaurants. No steps to create the "blog" site have been taken. Accordingly, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant submits that Respondent has registered and is using the disputed domain name <vegmichelin.com> in bad faith, because; (i) Respondent was clearly aware of Complainant's registered trademark rights in MICHELIN, when Respondent registered the confusingly similar domain name; (ii) Respondent is using the disputed domain name in association with a website which provides links to other third parties, some of which are competitors of Complainant for purposes of monetary gain; (iii) Respondent intends to create a blog site which will feature Michelin Starred Restaurants that specialize in vegetarian food, which is in direct competition with Complainant's services, but Respondent has in fact taken no steps to create the blog site and is in fact passively holding the disputed domain name; and (iv) Respondent is using the disputed domain name to interfere with Complainant's customers by diverting them to Respondent's website. Accordingly, Complainant submits that Respondent has registered and is using the disputed domain name in bad faith.
Respondent submits that the word "Michelin" can be translated from French to English as "recommended". Respondent further contends that the disputed domain name <vegmichelin.com> is not confusingly similar because it is the combination of the terms "veg" and "michelin", which is the subject of his intended blog site, namely vegetarian recommended Michelin Starred Restaurants. Respondent submits that Complainant is well-known for tires, but not for vegetarian Michelin Starred Restaurants. Respondent further contends that it is his love of vegetarian food that is the primary reason for registering the disputed domain name and for intending to create the associated blog site. Respondent submits that the delay in launching the blog site is a result of Complainant's interference, namely the initiation of these proceedings.
6. Discussion and Findings
As a preliminary matter, the Panel finds that the Supplemental materials filed by Complainant will not be accepted as part of the record for this dispute, and the Panel will not consider them in this Decision. The Policy does not provide for the ability of parties to file additional materials, after the Complaint and Response have been submitted, and the Panel does not find that any exceptional circumstances exist in this dispute which would warrant the acceptance of this Supplemental filing.
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) 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.
A. Identical or Confusingly Similar
The Panel finds that Complainant does have registered trademark rights in the mark MICHELIN by virtue of its trademark registrations, including those listed in paragraph 4 of this Decision, and significant reputation by virtue of extensive use of the mark around the world.
The Panel further finds that the disputed domain name <vegmichelin.com> is confusingly similar to Complainant's registered trademark MICHELIN. The Panel finds that the disputed domain name contains Complainant's registered trademark, along with the prefix "veg". The addition this prefix does not serve to distinguish the disputed domain name from Complainant's registered trademark. Further, Michelin is not a generic word in French and has no meaning.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Respondent is not commonly known by the name Michelin, and was clearly never authorized or licensed by Complainant to use the registered trademark MICHELIN. Furthermore, the Panel is prepared to find in the circumstances of this case that the registration and use of a confusingly similar trademark in association with a parking site which constitutes passive ownership, is not evidence of a bona fide offering of goods and services. Upon review of the evidence as filed, the Panel finds that Respondent's assertion that he intends to use the disputed domain name in association with a blog site about vegetarian food and Michelin Starred Restaurants does not serve to support his claim for rights or legitimate interests in the disputed domain name. Complainant's MICHELIN guides and restaurant ratings are well-known throughout the world and Respondent's proposed use of <vegmichelin.com> in association with a blog site commenting on vegetarian Michelin "Starred" restaurants constitutes evidence of trading on Complainant's reputation and goodwill. Respondent has therefore not provided any legitimate reason for passively holding the disputed domain name, and in fact admits to an improper intended use. Furthermore, Respondent has not provided credible evidence of his intended blog, mere assertions are not sufficient to be demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. Accordingly, based on the evidence filed in this proceeding, the Panel is prepared to find that Respondent does not have any rights or legitimate interests in the disputed domain name <vegmichelin.com>.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
On the evidence filed, it is clear that Respondent was aware of Complainant's ownership rights in the mark MICHELIN when he registered the domain name on November 4, 2015. The Panel finds that Respondent registered a confusingly similar domain name to interfere with Complainant's business by diverting Internet users away from Complainant's websites to Respondent's website. Further, the admission by Respondent that he intends to use the disputed domain name in association with a blog site about vegetarian Michelin "Starred" restaurants constitutes evidence of bad faith under the Policy. This fact supports a finding that Respondent knew about Complainant's trademark and reputation in the mark MICHELIN and intended to trade on that goodwill. Accordingly, the Panel finds that this passive holding of the disputed domain name for the admitted purpose support a finding of registration and use in bad faith under the Policy.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a)(iii) 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, <vegmichelin.com> be transferred to Complainant.
Christopher J. Pibus
Date: November 14, 2016