WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios
Case No. D2017-0234
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard, Inc., WhoisGuard Protected of Panama City, Panama / Saad Zaeem, Caramel Tech Studios of San Francisco, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <michelin.design> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2017. On February 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2017 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 February 13, 2017. The Center received a pre-commencement communication from the Respondent on February 14, 2017
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 February 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2017. Accordingly, the Center notified the Parties on March 14, 2017 that it will proceed to appointment of the Panel.
The Center appointed Nick Gardner as the sole panelist in this matter on March 20, 2017. 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 large tyre manufacturing company with headquarters in Clermont-Ferrand, France. It manufactures and marketing tyres for various types of vehicle, including airplanes, automobiles, bicycles/motorcycles, earthmovers, farm equipment and trucks. It also offers electronic mobility support services through a website at “www.viamichelin.com” and publishes travel guides, hotel and restaurant guides, maps and road atlases.
Currently, the Complainant is present in more than 170 countries, has 112,300 employees and operates 68 production plants in 17 different countries. It has established local subsidiaries in Europe including Italy (in 1901), Germany and Switzerland (both in 1902), Spain (in 1904) and United Kingdom of Great Britain and Northern Ireland (in 1905); and also in the United States (in 1904). The Complainant also has a technology center which undertakes and coordinates its research, development and process engineering activities with the Complainant’s operations in Europe, North America and Asia.
The Complainant is the owner of numerous trademark rights in many countries for the word “Michelin”, related to the production of tyres and the sale of road maps, and various guide publications relating to hotels and restaurants. In addition, the Complainant operates, among others, several domain names reflecting its trademarks. The Complainant has been using the MICHELIN trademark throughout the world for more than a century.
The Complainant owns numerous trademark registrations for MICHELIN including for example:
- European Union trademark MICHELIN no. 1791243, registered on October 24, 2001, covering goods in classes 6, 7, 12, 17, 28;
- European Union trademark MICHELIN no. 4836359, registered on March 13, 2008, covering 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, 39;
- European Union trademark MICHELIN no. 9914731, registered on September 27, 2011, covering goods and services in classes 9, 35, 37, 38, 39, 41, 42, 43.
The disputed domain name was registered on May 31, 2016. At the time of this decision, the Disputed Domain Name resolved to a webpage with pay-per-click links (“PPC links”).
5. Parties’ Contentions
The Complainant’s assertions may be summarized as follows:
(i) Identical or confusingly similar
The Complainant owns and uses the MICHELIN trademark in connection with a wide variety of products and services around the world. Further, several prior UDRP decisions have regarded the MICHELIN trademark to be “well-known” or “famous”. The disputed domain name is identical to the Complainant’s MICHELIN trademark.
(ii) Rights or legitimate interests
The Complainant states that the Respondent is not affiliated with the Complainant nor has it been authorized to use and register its trademarks, or to seek registration of any domain name incorporating the MICHELIN trademark.
The Complainant states that the disputed domain name is identical to the Complainant’s famous MICHELIN trademark and the Respondent cannot reasonably pretend that it was intending to develop a legitimate activity through the Disputed Domain Name.
The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. The disputed domain name is parked with PPC links related to tyres. It is likely that the Respondent uses the disputed domain name to generate revenue. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. The Respondent has no rights or legitimate interests in the disputed domain name.
(iii) Registration and use in bad faith
According to the Complainant, the Disputed Domain Name was registered and is being used in bad faith. The Respondent, who knew or should have known about the Complainant’s rights in the MICHELIN trademark, nevertheless registered a domain name in which it had no right or legitimate interest. Accordingly, bad faith can be found. The Complainant is well-known throughout the world. Several UDRP panels have previously mentioned its worldwide reputation, making it unlikely that the Respondent was unaware of the Complainant’s proprietary rights in the trademark. As the composition of the Disputed Domain Name entirely reproduces the Complainant’s trademark MICHELIN it is impossible that the Respondent did not have this trademark and company name in mind while registering the Disputed Domain Name.
The Complainant claims that bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith.
The Complainant further argues that the use of the Disputed Domain Name in connection with a parking page displaying PPC links falls within paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Panel will in its discretion treat the pre-commencement email communication received from the Respondent as its Response. It is convenient to set it out in its entirety. It reads as follows:
“Please note there has been no ‘abuse’ of this domain name. We greatly value and respect trademarks, and have no intention of using the name of the brand the Complainant represents in any way that might negatively impact it.
There is presently no website on it, only a landing page by the domain provider www.namecheap.com which they automatically keep for all registered domains, hence if the domain provider is earning anything from it or misrepresenting in any way, we advise the complainant to contact them directly. We have absolutely no intention of putting up website with links which do no reflect what we are producing and selling. Our furniture website is coming up as we had mentioned before, however we are not under any obligation to launch an unfinished website to please the Complainant. If the Complainant wanted us to park a blank page on it, they should have let us know that, instead their only intention was to take the domain and not specifically ask us to change the landing page, which as mentioned is not our page but of the domain provider.
We are a completely different entity and operating in a completely different space. If there has been anything inadvertently done, we will look into it and ensure on immediate basis that nothing violates any trademarks once the domain name is unlocked.
Again, we respect and honor trademarks and have no intention in anyway of misusing it once we launch the website. In the meantime, we will upload a blank / coming soon page.
Hoping this clarifies our position and the domain is unlocked on immediate basis.
Please note, our official company postal address is:
6. Discussion and Findings
As a preliminary issue the Panel notes this is a case where one of the Respondents (Whois Guard Inc.) appears to be a privacy or proxy registration service while the other Respondent (Saad Zaeem) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9, as follows “Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant”. Accordingly this decision refers to both Respondents. It is not in practical terms necessary to distinguish which Respondent was responsible for specific acts.
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of numerous trademarks consisting of the word “Michelin” (the “MICHELIN trademarks”).
The Panel holds that the Disputed Domain Name is identical to the MICHELIN trademarks. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.design”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:
i. before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Given the email communication from the Respondents (above) it would appear the Respondents are in substance suggesting that (i) and possibly (ii) apply in this case.
However no credible evidence has been offered by the Respondents to support such an argument. The word “Michelin” has no independent meaning save in relation to the Complainant and its products. It is also, as the factual background above shows, a well-known trademark. The Respondents have advanced no credible reason as to how or why they were entitled to adopt as a trading name the words “Michelin Design”, nor has any evidence been produced to show the existence of any genuine business, nor as to the Respondents being commonly known as “Michelin Design”.
In any event, even if the Respondents have adopted the name “Michelin Design” for their business, the Panel does not consider that a respondent who deliberately adopts a name which corresponds to, or is similar to, that of a complainant, with a view to taking advantage of that complainant’s fame and reputation, can then take advantage of an “own name” provision to justify its actions. The right to use one’s own name is not unlimited and cannot be used to circumvent well-known prior rights in a similar name – see for example Peter Frampton vs. Frampton Enterprises, Inc., WIPO Case No. D2002-0141.
It is for the Complainant to establish its case on the balance of probabilities. In the present case the Panel is satisfied that it has done so. The fact that the word “Michelin” has no independent meaning, and the evident fame of that name, mean that the Complainant establishes an inference that the Respondents lack any rights or legitimate interests in the Disputed Domain Name. In those circumstances the Respondents would need to present clear and credible evidence that they have separate rights or legitimate interests in the Disputed Domain Name. They have not produced any evidence at all – at best their case is mere assertion. Furthermore no explanation has been provided as to how or why the Respondents’ business is described as “Caramel Tech Studios” according to the information disclosed by the Registrar – this reinforces the lack of credibility in the Respondents’ case.
Accordingly the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature and fame of the MICHELIN trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the MICHELIN trademark, and the identity of the Disputed Domain Name to the MICHELIN trademark, and the lack of any credible explanation from the Respondents as to why they chose the Disputed Domain Name leads the Panel to conclude that its registration and use was in bad faith. In the present case, the Panel concludes that it is manifestly unlikely that the Respondents selected the Disputed Domain Name independently and without knowledge of the Complainant or its products.
The website linked the Disputed Domain Name comprises a series of “click through” links to other third-party websites. The Panel infers that some consumers, once at the website will follow the provided links and “click through” to other sites which offer products some of which may compete with those of the Complainant. The Panel infers the website is automatically generated and notes that the Respondents say this was done by the service provider and that they did not earn any revenue as result. Even if this is the case this does not however matter for purposes of the Policy. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all 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 <michelin.design> be transferred to the Complainant.
Nick J. Gardner
Date: April 3, 2017