WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Triara.com, S.A. de C.V.
Case No. D2013-1788
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Triara.com, S.A. de C.V.of Mexico.
2. The Domain Name and Registrar
The disputed domain name <cemamichelin.com> is registered with Tucows Domains Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2013. On October 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2013 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2013.
The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on November 25, 2013. 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 owns the trademark MICHELIN, which is largely protected in the world, in connection with the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides and maps publications. The Complainant also has a definite and undisputable reputation in the automotive industry and in French and foreign gastronomy. The Complainant has marketing operations in more than 170 countries and employed 113,400 employees up to December 31, 2012.
4.2. The Complainant owns and mainly communicates on the Internet via various websites in order to present and to propose to the Internet users its services and products, and among them “www.michelin.com.mx” and “www.michelin.com”.
4.3. The Complainant has one manufacturing plant in Queretaro, Mexico. The Complainant has around 710 employees in Mexico, the country in which the Respondent is located.
4.4. Moreover, Spain plays a capital role in the context of Michelin Group’s production. Among the various implants present in Spain, there is Michelin Experience Center in Almeria commonly known as “CEMA” which initiated operations on January 2, 1973. Its location was carefully chosen, since the lands occupy 4,500 hectares in Cabo de Gata and it has the lowest rainfall in Europe allowing tests all over the year. CEMA, as being currently one of the test centers in the world, it is extremely active for various product lines. It has tested tracks with varying pavements on mountainous and flat areas.
4.5. The Complainant noticed that the disputed domain name <cemamichelin.com> has been registered on June 7, 2012. WhoIs Database search revealed that the disputed domain name was registered by the Respondent. The disputed domain name resolves to the default page of a Mexican telecommunication company, Telmex, which offers Internet security, web hosting and e-business services.
4.6. Before starting the present proceeding, the Complainant made some efforts to resolve this matter amicably. Thus on June 28, 2013, the Complainant sent a cease-and-desist letter to the Respondent via registered letter and by e-mail on July 9, 2013 on the basis of its trademark rights. The cease-and-desist letter requested the Respondent to cease the use of the disputed domain name and to cancel the said domain name. The Respondent never replied to the Complainant’s cease-and-desist letter despite several reminders. As no amicable settlement could be found, the Complainant has no other choice but to initiate an UDRP procedure against the Respondent in order to obtain the cancellation of the disputed domain name.
5. Parties’ Contentions
A. Complainant
5.1. The Complainant asserts that its MICHELIN trademark enjoy a worldwide reputation and that owns numerous MICHELIN trademark registrations around the world.
5.2. The Complainant contends that is in particular the owner of the following trademark registrations:
MICHELIN International Trademark No. 348615, dated July 24, 1968 duly renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17, 20;
Mexican Trademark MICHELIN No. 139699 dated August 15, 1967 duly renewed and covering goods in class 12.
5.3. Furthermore, the Complainant states that operates, among other domain names reflecting its trademark in order to promote its services:
- <michelin.com.mx> registered on June 6, 2002;
- <michelin.es> registered on July 23, 1997;
- <michelin.com> registered on December 1, 1993.
5.4. The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN. Indeed, the disputed domain name reproduces the Complainant’s trademark in its entirety, which previous panels have considered to be “well-known” or “famous” (Compagnie Générale des Etablissements Michelin v. Milan Kovac / Privacy--Protect.org,WIPO Case No. D2012-0634; Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev,WIPO Case No. D2012-0384; Compagnie Générale des Etablissements Michelin v. Transure Entreprise Ltd, Host Master / Above.com Domain Privacy,WIPO Case No. D2012-0045; Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Transure Enterprise Ltd., Host Master,WIPO Case No. D2013-0357; Compagnie Générale des Etablissements Michelin v. PrivacyProtect.org and Kim Bum LLC,WIPO Case No. D2013-0181; Compagnie Générale des Etablissements Michelin v. Above.com DomainPrivacy and Transure Enterprise Ltd,
WIPO Case No. D2013-0226).
5.5. Additionally the Complainant alleges that in many UDRP decisions, panels have considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark (Swarovski Aktiengesellschaft v. mei xudong,
WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin,
WIPO Case No. D2010-1059).
5.6. The Complainant contends that the disputed domain name <cemamichelin.com> reproduces the trademark MICHELIN with the addition of the term “cema”. This term refers to the Complainant’s test center, “Michelin Experience Center in Almeria (CEMA)” located in Spain. There is a confusing similarity arising from the exact reproduction of the Complainant’s trademark and with the addition of the term “cema” referring to one of its most popular test centers.
5.7. In this context the Complainant states that the trademark MICHELIN is associated with a term which is insufficient to avoid any likelihood of confusion. Indeed, numerous UDRP decisions have established that adding a generic and descriptive term to the complainant’s mark doesn’t influence the similarity between a trademark and a domain name (Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and Above.com Domain Privacy,WIPO Case No. D2012-1453; Swarovski Aktiengesellschaft v. Luo Li,WIPO Case No. D2012-1604; Compagnie Générale des Etablissements Michelin v. isman to,WIPO Case No. D2012-0739).
5.8. Thus the Complainant asserts that the mere adjunction of a generic Top-Level Domain (“gTLD”) such as “.com” is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (F. Hoffmann-La Roche AG v. GoodRx, Inc., WIPO Case No. D2013-0227; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451).
5.9. The Complainant insists that it has used the trademark MICHELIN in connection with a wide variety of products and services in Mexico and around the world. Consequently, the public has learnt to perceive the goods and services offered under this mark as being those of the Complainant. Therefore, the public would reasonably assume that the disputed domain name would be owned by the Complainant or at least assume that it is related to the Complainant. As a result, it clearly appears that the disputed domain name is confusingly similar to the Complainant’s trademark.
5.10. The Complainant also argues that the Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating this mark. Furthermore, the 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 for years. Additionally, the disputed domain name is so confusingly similar to the famous MICHELIN trademark of the Complainant that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
5.11. The Complainant alleges that the Respondent did not demonstrate use for, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name resolves to the default page of a Mexican telecommunication company, Telmex, which offers Internet security, web hosting and e-business services. Therefore, it is obvious that the Respondent does not intend to develop a legitimate activity and has a purely financial interest.
5.12. Moreover, the Complainant states that the Respondent is neither commonly known by the name “Michelin”, nor in any way affiliated with the Complainant, nor authorized or licensed to use the MICHELIN trademark, or to seek registration of any domain name incorporating said mark. In previous decisions, UDRP panels found that in the absence of any license or permission from the complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Groupe Auchan v. Gan Yu,WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138).
5.13. The Complainant contends that it attempted to contact the Respondent by sending a cease-and-desist letters by registered letters and emails. The Respondent has never replied despite of several reminders. UDRP panels have repeatedly stated that when the Respondent does not avail itself of its right to respond to the Complainant, it can be assumed that under specific circumstances the Respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269; AREVA v. St. James Robyn Limoges,WIPO Case No. D2010-1017). If the Respondent had a right or legitimate interest in connection with the disputed domain name, it would have vigorously defended its rights by quickly replying to the Complainant’s cease-and desist letter. In light of these circumstances, it clearly appears that the Respondent does not have any rights or legitimate interests with respect to the disputed domain name (Compagnie Générale des Etablissements Michelin v. Gioacchino Zerbo,WIPO Case No. D2010-0865).
5.14. The Complainant asserts that in light of the reputation of Complainant’s MICHELIN trademark, the Respondent’s reproduction of the trademark in its entirety in the disputed domain name clearly proves that the Respondent was aware of the existence of the Complainant’s trademark. 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 (LEGO Juris A/S v. store24hour,WIPO Case No. D2013-0091; Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226; Caixa D´Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464). Given the reputation of the MICHELIN trademark, registration in bad faith can be inferred. Moreover, the Respondent has not replied to any cease-and-desist letters and reminders Complainants sent. Such behavior has already been considered as an inference of bad faith by previous panels (Bayerische Motoren Werke AG v. (This Domain Is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
5.15. Finally the Complainant states that there is little doubt in this case that the Respondent was not aware that MICHELIN enjoyed a substantial reputation worldwide. In light of this, the Respondent’s use of the disputed domain name which reproduces the Complainant’s trademark MICHELIN combined with its test center “CEMA”, redirects Internet users to a webpage belonging to a Mexican telecommunication company, Telmex, connected with the Respondent, offering Internet security, web hosting and e-business services. The requirement of paragraph 4(b)(iii) of the Policy is met. Indeed, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark: this is an evidence of use in bad faith (Puerto 80 Projects SLU v. Domains By Proxy, LLC, DomainsByProxy.com and Jupiter Miguel Tarrero Gallo,WIPO Case No. D2012-1563).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Paragraph 4(a) of the Policy provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) proves each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of disputed the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.
6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”.
A. Identical or Confusingly Similar
6.4. The Complainant has exclusive rights in the mark MICHELIN and has provided sufficient evidence.
6.5. The Complainant’s mark has received worldwide recognition. The disputed domain name incorporates the entirety of the mark MICHELIN with the addition of the term “cema”. This term refers to the Complainant’s test center, “Michelin Experience Center in Almeria (CEMA)” located in Spain. This addition does not distinguish the disputed domain name from the Complainant’s well-known trademark. See Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and Above.com Domain Privacy,
WIPO Case No. D2012-1453; Swarovski Aktiengesellschaft v. Luo Li,
WIPO Case No. D2012-1604 and Compagnie Générale des Etablissements Michelin v. isman to,
WIPO Case No. D2012-0739, which establish that the domain names were confusingly similar to the Complainant’s well-known and widely-registered trademark MICHELIN, in which the Complainant has demonstrated, to the satisfaction of the panels, that it has rights and commercial use of the same for several years. The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
6.6. According to paragraph 4(c) of the Policy, the burden of demonstrating the Respondent lacks rights or legitimate interests rests with the Complainant.
6.7. In this case, the Panel finds based on the record that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name which incorporates the Complainant’s MICHELIN mark. Therefore, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests, if such evidence exists.
6.8. The Respondent has failed to rebut the Complainant’s arguments and to provide evidence of its rights or legitimate interests in the disputed domain name, as demonstrated by the Respondent’s default.
6.9. Such failure by the Respondent contributes to admit the Complainant’s evidence and arguments.
6.10. The Complainant states that the Respondent has no license, authorization or granted permission to use the MICHELIN mark, and there is no evidence to the contrary. Considering that the Complainant’s mark has achieved worldwide fame, it is highly unlikely that the Respondent chose the disputed domain name just by chance.
6.11. Therefore, for all the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
6.12. Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:”
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or
(ii) that the respondent has registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 the respondent’s website or location or of a product or service on the respondent’s web site or location.
6.13. In regard to registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark MICHELIN is clearly established, and the Panel finds that the Respondent knew or should have known of the Complainant’s trademark because the disputed domain name incorporates the MICHELIN mark in its entirety, adding the term “cema”.
6.14. Upon receiving several notices and demands from the Complainant to cease use of the disputed domain name, the Panel notes that the Respondent refused or failed or neglected to respond to such notices. Although mere neglect, refusal or failure may not amount to bad faith per se, it does indicate that the Respondent had knowledge of the Complainant’s claim to the disputed domain name and the MICHELIN trademark. The continued use by the Respondent of the disputed domain name in such circumstances does suggest an element of bad faith on its part.
6.15. The Panel also agrees with the Complainant’s contention that the Respondent registered the disputed domain name to exploit the Complainant’s reputation and goodwill in the MICHELIN trademark and to gain an unfair economic advantage by misleading Internet users by using the Complainant’s trademark in its economic activity. In this Panel’s view, there does not seem to be any other plausible reason as to why the Respondent selected the distinctive MICHELIN trademark to undertake its commercial Internet activities.
6.16. Under these circumstances, the Panel finds that the Complainant has presented evidence to satisfy its burden of proof as to whether the Respondent has registered and is using the disputed domain name in bad faith.
6.17. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <cemamichelin.com> be cancelled.
José Pio Tamassia Santos
Sole Panelist
Date: December 9, 2013
