WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Ramesh Kumar, guide-michelin-centieme
Case No. D2020-2595
1. The Parties
Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
Respondent is Ramesh Kumar, guide-michelin-centieme, India.
2. The Domain Name and Registrar
The disputed domain name <guide-michelin-centieme.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 2020, 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. On October 9, 2020, the Center sent a request for clarification regarding the Registrant city to the Registrar, to which the Registrar replied on the same day. The Center sent an email communication to Complainant on October 12, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 15, 2020.
The Center verified that the Complaint together with the amended 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 October 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on November 11, 2020.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on November 19, 2020. 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
Complainant is a company headquartered in France and engaged in the business of manufacturing and selling automotive tires worldwide. Complainant also publishes travel guides, hotel and restaurant guides, maps and road atlases, and offers related information services online. Complainant operates numerous websites to promote its goods and services, including <michelin.com>, <michelinguide.com>, and <michelin.in>.
Complainant is the proprietor of numerous registrations for the MICHELIN mark in jurisdictions worldwide, including the following:
- International Trademark No. 771031 for MICHELIN (word mark) registered on June 11, 2001 for goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42;
- Indian trademark No. 547411 for MICHELIN (word mark) registered on March 19, 1991 for goods in class 16.
The disputed domain name was registered on February 27, 2020. According to the Panel’s research and the material in the case file, it resolves to a website featuring content and links related to online gaming and betting.
The record contains a copy of a cease-and-desist letter sent by Complainant to Respondent dated March 20, 2020. There is no record of a reply to these communications.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
Under the first element, Complainant states that it is present in more than 170 countries, has 112,300 employees and operates 68 production plants in 17 different countries. It has created a network of commercial agencies in Europe including Italy (1901), Germany (1902), Switzerland (1902), Spain (1904), New York (1904) and United Kingdom (1905). The MICHELIN Guide was launched in 1920 to assist motorists in planning their trips, and the guide now rates over 30,000 establishments in over 30 territories across three continents. More than 30 million MICHELIN Guides have been sold worldwide. Complainant and its MICHELIN mark enjoy a worldwide reputation. The disputed domain name reproduces Complainant’s mark, which previous UDRP panels have considered well known or famous, in its entirety, with the addition of the terms “guide” and “centieme.”
Under the second element, Complainant states that Respondent is not affiliated with Complainant in any way nor authorized by Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark. Furthermore, Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the MICHELIN trademarks preceded the registration of the disputed domain name by years. The disputed domain name is identical to the famous MICHELIN trademark of Complainant and Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, since the disputed domain name resolves to a page displaying different links related to betting and gambling. Respondent did not respond to Complainant’s cease and desist letter.
Under the third element, Complainant states that it is implausible that Respondent was unaware of Complainant at the time of registration of the disputed domain name. Complainant is well known throughout the world and in India, where Respondent is located. The composition of the disputed domain name, comprising Complainant’s mark and a reference to Complainant’s Michelin Guide, demonstrates that Respondent was aware of Complainant and indeed engaged in opportunistic bad faith in choosing the disputed domain name. Respondent did not verify that registering the disputed domain name would not infringe the rights of any third party, which it could readily have done.
In the absence of any license or permission from Complainant to use such a widely known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by Respondent. Respondent used the disputed domain names to direct Internet users to a webpage displaying links related to betting and gambling, thereby taking undue advantage of Complainant’s trademark to generate profits. Moreover, email servers have been configured on the disputed domain name and thus, there might be a risk that Respondent is engaged in a phishing scheme. Respondent has not responded to Complainant’s cease-and-desist letter.
Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the MICHELIN mark through registrations in numerous jurisdictions including in India, where Respondent is located, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s MICHELIN mark with the disputed domain name, <guide-michelin-centieme.com>, the Panel finds that the disputed domain name is confusingly similar with Complainant’s mark. The disputed domain name contains Complainant’s MICHELIN mark in its entirety. The addition of the dictionary terms “guide” and “centieme” (“hundredth” in French) does not prevent a finding of confusing similarity with Complainant’s mark.
Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, Respondent’s 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is 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.
The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which contains Complainant’s long-established mark together with the dictionary terms “guide” and “centieme”, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. Moreover, one of Complainant’s publications, the “Michelin Guide,” is known in French as “Guide Michelin.” See WIPO Overview 3.0, section 2.5.1.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the MICHELIN mark with the permission of Complainant. The evidence in the record indicates the disputed domain name is used for a website containing content and links related to online gaming and betting. While this does not appear to be a typical “parked” or pay-per-click (PPC) site, the Panel does not find that there are any clear, non-pretextual indicia of respondent rights or legitimate interests under the present circumstances. See WIPO Overview 3.0, section 2.9. Rather, the record supports a finding that it is more likely than not that the disputed domain name is being used for commercial gain.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name;
(ii) that Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith registration and use under the Policy, paragraph 4(b)(iv). The Panel agrees with previous UDRP panels that the MICHELIN mark is well known (see, for example, Compagnie Générale des Etablissements Michelin v. Louis Chan, WIPO Case No. D2020-2579, and cases cited therein). Complainant’s rights in the MICHELIN mark significantly predate the registration of the disputed domain name. It is not credible that Respondent was unaware of Complainant’s well-established mark when it registered the disputed domain name. The record supports a finding that Respondent registered the disputed domain name specifically with the intention of attracting Internet users searching for Complainant’s goods and services.
Considering all these circumstances, the Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.
The Panel finds that Respondent has demonstrated bad faith in using the disputed domain name for a website containing links and content related to online gaming and betting by diverting users seeking Complainant’s goods and services, more likely than not, for the commercial benefit of Respondent. There is no plausible good-faith use to which such a website may be put. Such actions demonstrate bad faith.
The Panel therefore finds that Complainant has established the third element under 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 <guide-michelin-centieme.com> be transferred to Complainant.
Date: December 3, 2020