WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Transure Enterprise Ltd

Case No. D2012-1825

1. The Parties

The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.

The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Transure Enterprise Ltd of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <michelinbibnet.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2012. On September 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2012, 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. In particular, the Center was advised by the Registrar that the registrant of the disputed domain name is Transure Enterprise Ltd. The Center sent an email communication to the Complainant on September 21, 2012 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 September 26, 2012 in which Transure Enterprise Ltd was added as a Respondent to the originally named Respondent Above.com Domain Privacy.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2012.

The Center appointed Marcin Krajewski as the sole panelist in this matter on November 6, 2012. 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 company based in France that enjoys a worldwide reputation in the automobile and tire industries. It is also renowned for its hotel and restaurant guides. The Complainant has marketing operations in more than 170 countries and employs over 100,000 employees.

Since 1997 the Complainant has developed its activities in Australia where the Respondent, Above.com Domain Privacy, is based. Currently, the Complainant has there a large tire sales and service network with over 800 retailers for passenger car and light truck tires and over 300 retailers for truck and bus tires.

The Complainant’s symbol is the Michelin Man named Bibendum, Bib or Bibelobis. It was created in 1898 and continuously plays a major marketing role for the Complainant. The Michelin Man was elected as the “Best logo of the century” by an international jury in 2000.

The Complainant owns a large number of trademarks, including:

- MICHELIN, International Trademark No. 348615, registered on July 24, 1968,

- MICHELIN, International Trademark No. 816915, registered on August 27, 2003,

- MICHELIN, Australian Trademark No. 258104, registered on May 1, 1972,

- MICHELIN, Community Trademark No. 004836359, registered on March 13, 2008,

- BIBENDUM, International Trademark No. 326563, registered on November 18, 1966.

The Complainant owns inter alia the following domain names:

- <michelin.com>,

- <michelin.com.au>,

- <bibendum.fr>.

The disputed domain name was registered on April 11, 2012 and resolves to a parking page displaying sponsored links, including links related to the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are present in this case. In particular the Complainant claims that:

(i) The disputed domain name is confusingly similar to the trademarks in which the Complainant has rights

The disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark seeing that it incorporates this mark in its entirety. In addition, the disputed domain name reproduces the first three letters of the Complainant’s BIBENDUM trademark. The Complainant claims that the deletion of the end of the latter trademark does not change the meaning of the word since the trademark refers to the Michelin Man, which is also known as Bib. According to the Complainant, the association of the Complainant’s two trademarks is strongly misleading for Internet users.

Furthermore, the Complainant contends that the term “bibnet” refers to the Complainant’s electronic ordering system used by professional tire sellers.

The Complainant claims that the extension “.com” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant contends that the Respondent is not commonly known by the name “Michelin”, neither affiliated with the Complainant in any way, nor has been authorized to use or register any domain name incorporating any of the Complainant’s trademarks. The Respondent has no prior rights or legitimate interests in the disputed domain name and the registration of the MICHELIN trademark preceded the registration of the disputed domain name for many years. The 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. The Complainant claims that the disputed domain name was registered with a privacy shield service in order to hide the identity of the Respondent and prevent the Complainant from contacting it. According to the Complainant, this fact highlights that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

(iii) The disputed domain name was registered and used in bad faith

The Complainant contends that the Respondent certainly had knowledge of the Complainant and its trademarks when registering the disputed domain name. According to the Complainant, it means that the disputed domain name was registered in bad faith.

Moreover, the Complainant contends that the Respondent also used the disputed domain name in bad faith, as it directs Internet users to a webpage displaying pay-per-click links which generate profit. In this way the Respondent takes undue advantage of the Complainant’s trademarks. According to the Complainant, the presence of the term “bibnet” in the disputed domain name illustrates the Respondent’s bad faith as it refers to the Complainant’s network for professional tire sellers.

The Complainant contends that the Respondent registered numerous domain names incorporating famous and distinctive trademarks which have been subject of many UDRP proceedings. According to the Complainant, this pattern of abusive registration, infringement and cybersquatting is another evidence of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identification of Respondent

The Complainant initially named Above.com Domain Privacy as the Respondent because it was unable to obtain the name of the underlying registrant. The Registrar of the disputed domain name, in reply to the Center’s request, divulged the name and contact details of the underlying registrant (i.e. of Transure Enterprise Ltd). The Center provided the information to the Complainant, and the Complainant subsequently submitted an amended Complaint. This Panel finds it appropriate to follow the practice of most of the UDRP panels and record in this decision both the name of the privacy registration service and that of the disclosed underlying registrant. In this connection the Panel proceeds to name both Above.com Domain Privacy and Transure Enterprise Ltd as Respondent, but proposes to treat Transure Enterprise Ltd as the substantive Respondent and references herein to “the Respondent” are to be construed accordingly.

B. The Merits

Paragraph 4(a) of the Policy provides that the following facts must be established in order to grant the Complainant the remedy requested:

(1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(3) that the disputed domain name has been registered and is being used in bad faith.

(i) Identical or Confusingly Similar

The first and most distinctive part of the disputed domain name is “michelin”, which is identical to the Complainant’s MICHELIN trademarks. In opinion of this Panel the second part “bibnet” refers to the Complainant’s BIBENDUM trademark. Maybe, it would not be evident if this part of the domain name was not accompanied by the previous one, but facts of the present case are different. The Panel agrees that the association of two of the Complainant’s trademarks reproduced in their entirety or part could be misleading for Internet users.

For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “.com” may be disregarded as it is simply a necessary component of a generic top level domain.

Accordingly, the Panel finds that the Complaint has satisfied paragraph 4(a)(i) of the Policy.

(ii) Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances establishing a respondent’s rights or legitimate interests in a domain name. However, it seems that none of the mentioned circumstances is present in this case. In particular, there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complaint has satisfied paragraph 4(a)(ii) of the Policy.

(iii) Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove registration as well as use in bad faith of the disputed domain name.

The Panel agrees with the Complainant's submission that its trademarks should be considered as “famous” or “well-known”. In this connection it is obvious that the Respondent knew of the existence of the MICHELIN and BIBENDUM trademarks and had these trademarks in mind at the time of registration of the disputed domain name. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.

It is equally clear that the disputed domain name was also used in bad faith. In particular, paragraph 4(b) of the Policy gives non-exhaustive illustrations of bad faith registration and use, including the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel finds the Respondent is using the disputed domain name to intentionally attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s well-known trademarks.

The Panel also accepts the submission of the Complainant that the Respondent has engaged in a long pattern of abusive registration and cybersquatting. The Complainant referred to numerous UDRP decisions where the Respondent has registered domain names and in each case the panel concerned has found bad faith of the Respondent. The Panel finds such conduct as further evidence of the Respondent’s use of the disputed domain name in bad faith.

Accordingly, the Panel finds that the Complaint has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

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, <michelinbibnet.com> be cancelled.

Marcin Krajewski
Sole Panelist
Dated: November 16, 2012