WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-0733

1. The Parties

1.1 The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.

1.2 The Respondent is Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

2.1 The disputed domain name <michelinmanjobs.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. On March 11, 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 underlying registrant and contact information for the Domain Name. The Center sent an email communication to the Complainant on March 15, 2021 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 March 16, 2021.

3.2 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2021.

3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 21, 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 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 “Bibendum” is the official mascot of the Complainant’s business. It comprises a humanoid figure consisting of stacked white tyres and was introduced at the Lyon Exhibition of 1894 where the Michelin brothers had a stand. “Bibendum” is commonly referred to in English as the “Michelin Man”.

4.4 The Complainant is the owner of various trade marks around the world that incorporate or comprise the term “Michelin”. They include:

(i) United States registered trade mark no. 4126565, for MICHELIN as a standard character mark filed on January 19, 2011 and registered on April 10, 2012, in respect of goods and services in classes 36, 37 and 39; and

(ii) Panama registered trade mark no. 39678, registered on September 30, 1985, in respect of goods in class 1.

4.5 The Complainant also owns the domain names <michelin.com> and <michelinman.com>, from which it operates websites in respect of its activities.

4.6 The Domain Name was registered on January 18, 2021. It has been used since registration to display a parking page with commercial links with content mostly related to “jobs”. An email server has also been configured on the Domain Name. In late January 2021 the Complainant sent a cease and desist letter and a deactivation request to the hosting provider for the Domain Name. No substantive response was forthcoming to either of these communications.

4.7 The Respondent has been the unsuccessful respondent in a very large number of UDRP proceedings. The Complainant identifies the following examples:

(i) The British United Provident Association Limited (“Bupa”) v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico WIPO Case No. D2018-1117 (<myviewbupa.com>);

(ii) Discover Financial Services v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico / Carolina Rodrigues, Privacy Limited WIPO Case No. D2019-0666 (<discoverbnak.com> and <discovercardpersonalloan.com>);

(iii) Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico WIPO Case No. D2019-1991 (<starbucksmatch.com>);

(iv) Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico WIPO Case No. D2020-0018 (<lskyscanner.com>).

There are many other such cases (see for example, the additional cases identified in the fourth case listed above).

4.8 As at the date of this decision the Domain Name is being used to display a webpage generated by the Registrar that states that the Domain Name “may be for sale”.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant refers to its business and trade marks and refers to previous UDRP cases in which it has been involved where 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 and that the Respondent in choosing the Domain Name intended an association with the Complainant.

5.2 The Complainant refers to the way in which the Domain Name has been used since registration. It claims that such use is not a bona fide offering of goods and services. It also contends that the content of the Domain Name alone is clear evidence that the Respondent wishes to give an overall impression that the Domain Name is endorsed by the Complainant.

5.3 The Complainant further contends that the fact that the email server has been configured on the Domain Name means that “there might be a risk that [the] Respondent is engaged in a phishing scheme”.

5.4 For these reasons the Complainant contends 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. So far as bad faith is concerned, the Complainant also relies upon the previous cases involving the Respondent that are said to demonstrate that the Respondent is a “well-known cybersquatter”

B. Respondent

5.5 The Respondent did not reply to the Complainant’s contentions.

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 default of the Respondent, 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 mark 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 only sensibly be understood as the words “Michelin”, “man” and “jobs” in combination with 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 explained in greater detail later in this decision in the context of the issue of registration and use in bad faith, the Panel is persuaded that the Domain Name inherently and impermissible impersonates the Complainant. There is no right or legitimate interest in a domain name that so impersonates a trade mark owner (see section 2.5.1 of the WIPO Overview 3.0).

6.8 Further, the Panel accepts that the Domain Name was registered and has been held in order to display pay-per-click links that take unfair advantage of the reputation of the Complainant’s business and marks. Again, there is no right or legitimate interest in holding a domain name for such a purpose (see section 2.9 of the WIPO Overview 3.0). On the contrary this provides prima facie evidence that the Respondent has no right or legitimate interest recognised by the Policy.

6.9 Finally, there is the Respondent’s conduct which constitutes a pattern of registering domain names corresponding to marks held by the Complainant or third parties, and which also evidences a lack of relevant rights or legitimate interests (see section 2.5.2 of the WIPO Overview 3.0).

6.10 The Complainant has, therefore, made out the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.11 The Panel accepts that the Domain Name was registered with knowledge of the Complainant and its business activities. Michelin has no obvious meaning of which the Panel is aware other than as a French surname. Further, the only sensible reading of the Domain Name is “Michelin”, “man” and “jobs”. It is simply not credible to suggest that the combination of the words “Michelin” and “man” are anything other than a reference to the Complainant’s “Michelin man” logo, and thereby the Complainant’s marks and business.

6.12 This is also a case where in the Panel’s view, the Domain Name inherently impermissibly impersonates the Complainant’s business and its marks. The Panel agrees with the Complainant that the Domain Name falsely signals to an Internet user that the Domain Name is likely to be used in relation to jobs offered by the Complainant. The circumstances in which the addition of a word or words to a trade mark in a domain name is insufficient to prevent a finding of impersonable impersonation was addressed in Johnson & Johnson v. Ebubekir Ozdogan WIPO Case No. D2015-1031. The use of the word “job” is in the opinion of the Panel insufficient to prevent such a finding.

6.13 Further, the fact that the Complainant also uses the domain name <michelinman.com> increases the likelihood that the Domain Name would be perceived in this manner.

6.14 This is sufficient to justify a finding of bad faith registration and use, but there is also the actual use of the Domain Name for pay-per-click advertising. The Panel accepts that this falls within the scope of the example of circumstances indicating bad faith to be found at paragraph 4(b)(iv) of the Policy.

6.15 Last but not least, there is the overwhelming evidence in the form of a very large number of UDRP decisions involving the Respondent, where the Respondent has registered domain names that incorporate the trade marks of others. The Panel accepts that the Domain Name is yet another example of such conduct on the part of the Respondent in flagrant disregard of the trade mark rights of others. This is additional evidence of bad faith registration and use.

6.16 It follows that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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, <michelinmanjobs.com> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist
Date: May 1, 2021