WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Shabbir Hussain
Case No. D2021-0726
1. The Parties
1.1 The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Tmark Conseils, France.
1.2 The Respondent is Shabbir Hussain, Pakistan.
2. The Domain Name and Registrar
2.1 The disputed domain name <demichelin.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2021. At that time the publicly available WHOIs details for the Domain Name did not disclose the underlying registrant of the Domain Name, identifying only that the registrant had provided an address in Pakistan. On March 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant for the Domain Name. The Center sent an email communication to the Complainant on March 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
3.2 The Center received an email communication from the registrant on March 12, 2021. In that email the registrant stated as follows:
“I have not made any complain against this domain and this domain is my property from last 2 years.
I want to continue using it as our project is under process which is based on this name and the email you sent me I cannot understand what is the dispute and why my domain is locked.
Please brief what is the issue regarding this i have just updated some security settings as i dont have 2 way authentication ON on [sic] my cell phone and email.”
3.3 The Center responded to that email the same day, explaining that it was in the process of verifying the Complaint under the UDRP and, if formally compliant, the registrant would be notified that proceedings had been commenced.
3.4 The Complainant filed an amended Complaint on March 18, 2021, which was also forwarded to the registrant. The Center received an additional email communication from the registrant on March 19, 2021 in which he thanked the Center for its correspondence and stated he would respond “shortly”.
3.5 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”).
3.6 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2021. No formal Response was submitted. On April 12, 2021, pursuant to paragraph 6 of the Rules, the Center informed the Parties that it would proceed with the panel appointment process.
3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 19, 2021. 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
4.1 The Complainant is a company based in France, which conducts activities under the “Michelin” name in relation to the production and sale of tires, road maps and travel and restaurant guides. The name “Michelin” is derived from the surname of two brothers who founded the Complainant’s business in 1889.
4.2 The Complainant is particularly well known for its publication of a guide that ranks fine dining establishments by awarding “Michelin Stars”. That guide dates back to the early twentieth century with the first “Michelin Stars” being awarded in the 1926 guide. The Michelin guide now rates over 30,000 establishments in over 30 territories, and many million copies of this publication have been sold worldwide.
4.3 The Complainant is the owner of various trade marks around the world that incorporate or comprise the term “Michelin”. They include:
(i) United States trade mark registration No. 1399361 for MICHELIN as a typed drawing filed on May 28, 1985, and proceeding to registration on July 1, 1986, in classes 16 and 25;
(ii) European trade mark registration No. 013558366 for MICHELIN as a word mark filed on December 12, 2014 and proceeding to registration on April 17, 1986, in classes 9, 35, 38, 39, 41, and 42; and
(iii) International trade mark registration No. 1245891 for MICHELIN as a word mark dated December 10, 2014, and which has proceeded to registration in a number of territories in classes 35, 36, 39, 40, 41, 42, 44, and 45.
4.4 The Complainant also owns the domain name <michelin.com> and operates websites in respect of its activities from that domain name and the sub-domain <guide.michelin.com>.
4.5 The Domain Name was registered on October 16, 2019. Since registration, the Domain Name has been used for an English language website that offers for sale meals and food. This includes the promotion of “Steak de’ Michelin Steak Cuts”. The website prominently displays a logo that incorporated the text “de’Michelin”. Some, but not all, of the dishes promoted also incorporate the de’ Michelin name such as “de’Michelin Chicken Burger” and “de’Michelin Beef Burger”. Prices are in Rupees.
5. Parties’ Contentions
5.1 The Complainant refers to its business and trade marks and refers to a number of previous UDRP cases in which it has been involved in which it is said the fame and reputation of its MICHELIN mark was recognised. It contends that the Domain Name is confusingly similar to its trade mark.
5.2 The Complainant refers to the way in which the Domain Name has been used since registration for a website that offers for sale meals and food. It also claims that this website has an “artificial structure”. In this respect it observes that the website appears to allow orders for food to be made from any country in the world and maintains that it would be impossible for the Respondent to supply these orders. It therefore contends that what is happening is that the Respondent is seeking to attract consumers to the website by reason of the similarity with the Complainant’s MICHELIN mark Michelin in order to illegitimately collect consumer data or money.
5.3 In the circumstances, it claims that the Respondent has no right or legitimate interest in the Domain Name and that the Domain Name was registered and is being used in bad faith.
5.4 Although the Respondent sent a couple of short emails to the Center at an early stage in the proceedings (as to which see the Procedural History section of this decision), no formal Response has been filed by the Respondent in these proceedings.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the lack of a formal Response, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Complainant has satisfied the Panel that it has registered trade rights in the term “Michelin”. In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable with the disputed domain name”; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
6.5 The Domain Name can most sensibly be understood as the letters “de” (and in particular the French word “de”) combined with the term “Michelin” and the “.com” generic Top-Level Domain. The Complainant’s mark is therefore clearly recognisable in the Domain Name.
6.6 The Complainant has, therefore, satisfied the Panel that the Domain Name is confusing similar to its trade mark and has thereby made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.7 As is addressed in greater detail later on in this decision, in the context of the issues of registration and use in bad faith, the Panel is persuaded that the Domain Name was registered and is being held in order to take advantage of the reputation of the Complainant’s mark either to sell or promote food, meals unrelated to the Complainant, or to otherwise take some other unfair advantage of the Complainant’s business and marks. Such activity does not provide a legitimate interest in a domain name for the purposes of the Policy (see sections 2.5 and 2.13 of the WIPO Overview 3.0). This also provides prima facie evidence that the Respondent has no right or legitimate interest recognised by the Policy.
6.8 The Complainant has, therefore, made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.9 The Panel accepts that the Domain Name was registered with knowledge of the Complainant and its business activities, at least in the field of gastronomy. “Michelin” has no obvious meaning of which the Panel is aware other than as a French surname and there is no evidence before the Panel that it has any other meaning in Pakistan where the Respondent is based. Further, the most sensible reading of the Domain Name is as that name with the letter “de” in front. That this is what the Respondent intended is clear from the website that has operated from the Domain Name which uses a logo with the text “de’ Michelin”. The use of the apostrophe albeit grammatically incorrect clearly is intended to involve an allusion to the French language.
6.10 Further, the Panel accepts that the reputation of the term “Michelin” in the field of gastronomy is extensive and worldwide. It is simply not credible that an entity or person using that term both in a website and a domain name that promotes the sale of restaurant meals and food would not be aware of the association of that term with the Complainant and the Complainant’s marks.
6.11 The Panel also accepts that the way that the Domain Name has been used strongly suggests that the Respondent registered and has held the Domain Name with the intention of taking advantage of the reputation of the Complainant’s mark in order to promote a food related business unrelated to the Complainant. Such activity constitutes use in bad faith falling within the scope of the example of circumstances indicating bad faith set out in paragraph 4(b)(iv) of the Policy.
6.12 Finally, the Panel also accepts that the format of the Respondent’s website is highly suspicious and raises a serious question as to whether a genuine underlying business exists and whether the Respondent is engaged in some other illegitimate activity. It is noticeable that notwithstanding that this allegation is clearly advanced in the Complaint and the Respondent at one point indicated that he might take part in these proceedings, the Respondent did not take part and has not sought to dispute these serious allegations. However, there is no need to for the Panel to reach any finding on this issue since a finding either way will not assist the Respondent.
6.13 The Complainant has, therefore, made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <demichelin.com> be transferred to the Complainant.
Matthew S. Harris
Date: April 22, 2021