WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Lisa Katz, Domain Protection LLC / Whois Privacy Services Pty Ltd

Case No. D2015-1156

1. The Parties

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

The Respondent is Lisa Katz, Domain Protection LLC of Dallas, Texas, United States of America / Whois Privacy Services Pty Ltd of Fortitude Valley, Australia.

2. The Domain Name and Registrar

The disputed domain name <michelineguide.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2015. On July 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2015, 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. The Center sent an email communication to the Complainant on July 10, 2015 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 the same day.

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 July 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2015.

The Center appointed Daniel Peña as the sole panelist in this matter on August 14, 2015. 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 owns the trademark MICHELIN, which is protected in connection with the automobile and tire manufacturing industries, as well as in connection with hotel and restaurant guides and maps publications.

The Complainant is established in Australia through Michelin Pty Ltd. Michelin Pty Ltd was established in October 1997 to manage and develop the markets of Australia, New Zealand and some of the Pacific Islands like New Caledonia, Fiji, Samoa and Tahiti.

The Complainant’s trademark had been in use in Australia for the last fifty years through its importation by sales distributors. Michelin’s head office in Australia expanded and was relocated to Melbourne in 2001. This office houses all its national management and operational staff, including departments like customer service, product management, marketing, logistics, finance, personal, communication and information technology.

The Complainant owns numerous MICHELIN trademark registrations around the world. In particular it is the owner of the following trademark registrations:

- MICHELIN, International Trademark No. 348615, dated of July 24, 1968, duly renewed that covers goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;

- MICHELIN, International Trademark No. 816915, dated of August 27, 2003 that covers services in classes 35, 37, 39 and 42;

- MICHELIN Community Trademark No. 004836359, dated of January 4, 2006 that covers covering goods and services in classes 1, 3, 5, 6, 7, 8, 9, 11,12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34 and 39;

- MICHELIN, Australian trademark No. 879562, dated of June 18, 2001 duly renewed that covers goods and services in classes 5, 6, 7, 8, 9, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42;

- MICHELIN Australian Trademark No. 258104 registered on May 1st, 1972, duly renewed that covers goods in class 12.

The Complainant owns and mainly communicates on the Internet via various websites, among them “www.michelin.com.au”, in order to present and to propose to Internet users its services and products.

The Complainant and its affiliates operate, among others, domain names reflecting its trademarks in order to promote its services:

- <michelin.com> registered on December 1, 1993;

- <michelin.com.au> registered on November 25, 2002.

Before starting the present proceeding, the Complainant made some efforts to resolve this matter amicably. On April 21, 2015, the Complainant sent a cease-and-desist letter to the Respondent via registered letter and email on the basis of its trademark rights. The cease-and-desist letter requested the Respondent to reveal the identity and contact details of the registrant and to transfer the disputed domain name. However, no reply was obtained from the Respondent despite the Complainant’s reminders.

5. Parties’ Contentions

A. Complainant

The Complainant and its MICHELIN trademarks enjoy a worldwide reputation.

The Complainant is the pioneer in tire technology and manufacturing. However, the Complainant’s mission goes far beyond that of a tire manufacturer. Hence, Michelin Australia Ltd. is inspired to serve the Complainant’s mission and core values when anticipating and satisfying the customers' needs and expectations with its products and services.

The Complainant 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.

As the trusted brand for tires for all types of vehicles, the Complainant has been the top choice in Australia for many decades for consumers, dealers and corporate clients in car manufacturing and distribution, fleets, government institutions, public transportation and racing teams. The Complainant’s tires are used for rallies in Australia, for instance for the Australasian Safari of 2012, where Michelin won the race with one of their types of tires.

The disputed domain name <michelineguide.com> is confusingly similar to the Complainant’s trademark MICHELIN. The disputed domain name imitates the Complainant’s trademark which previous UDRP panels have considered to be “well-known” or “famous”.

The disputed domain name <michelineguide.com> imitates the trademark MICHELIN by the addition of the letter “e”. However, the addition of a mere letter does not significantly affect the appearance or pronunciation of the domain name. This practice is commonly referred to as “typosquatting” and creates virtually identical and/or confusingly similar domain names to the Complainant’s trademark.

The disputed domain name <michelineguide.com> comprises the generic term “guide”. However, it has been held by a previous UDRP panel that the addition of generic terms to the well-known trademark MICHELIN does not prevent the risk of confusion between the Complainant’s trademark and a disputed domain name. On the contrary, the term “guide” corresponds to the Complainant’s field of activity.

The Complainant has used the trademark MICHELIN in connection with a wide variety of products and services in Australia 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.

The Respondent has no rights or legitimate interests in the disputed domain name <michelineguide.com>. The registration of the MICHELIN trademark preceded the registration of the disputed domain name by years.

The Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.

The Respondent is not commonly known by the expression “michelin”, 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.

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. Indeed, the disputed domain name resolves to a parking page displaying commercial links, and some of them are related to road maps. Thus, it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of disputed domain name.

The Respondent registered the disputed domain name with a privacy shield service presumably to hide his identity and prevent the Complainant from contacting him.

The Respondent never answered the Complainant’s letter despite the Complainant’s reminders.

A quick MICHELIN trademark search would have revealed to the Respondent the existence of the Complainant and its trademark. The Respondent’s failure to do so is a contributory factor to its bad faith.

Assuming that the Respondent was not aware of the possibility of searching trademarks online before registering a domain name, a simple Internet search via Google or any other search engine using the keyword “MICHELIN” would have demonstrated that all first results relate to the Complainant’s products or news. Bad faith can be found where a respondent “knew or should have known” of a complainant’s trademark rights and, nevertheless, registered a domain name in which he had no rights or legitimate interests.

The Respondent uses the disputed domain name to direct Internet users to a webpage displaying pay-per-clicks links which are likely to generate revenues.

It is more likely than not that the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of initial interest of confusion.

It is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(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 the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has clearly shown that it has rights in the MICHELIN trademarks registered in several countries, including Australia, where the Respondent, or at least the privacy shield she employed, is located. The disputed domain name incorporates the whole of the trademark MICHELIN to which there was added the expression “eguide” which suggest an electronic guide or, more specifically, the Michelin Guide published or distributed by electronic means.

In the Panel’s view, the inclusion of the expression “eguide” corresponds to the Complainant’s field of activity as it publishes its Michelin Guides, which refer to hotels and restaurants recommended by the Complainant. Therefore, the risk of confusion is reinforced and Internet users may wrongly believe that the disputed domain name is related to a new electronic way to publish the traditional restaurant guide or a website developed by the Complainant for its consumers.

The Panel agrees with the previous UDRP decisions cited by the Complainant that the addition of these descriptive terms and the generic Top-Level Domain suffix “.com” does not alter or diminish in any way the confusing similarity between the Complainant’s MICHELIN trademarks and the disputed domain name.

The Panel finds that the Complainant has rights in the MICHELIN trademarks and that the disputed domain name is confusingly similar to this trademark.

Therefore, the Panel considers that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several manners in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that (1) the Respondent has no prior rights or legitimate interest in the disputed domain name. The registration of the MICHELIN trademark preceded the registration of the disputed domain name for years; (2) it has not licensed or otherwise authorized the Respondent to use its MICHELIN trademarks or to incorporate them into a domain name; (3) that, given the extensive use of the Complainant’s marks and the fact that it is uniquely linked to the Complainant, the Respondent must have been aware of this when it registered the disputed domain name; and (4) that the current use of the disputed domain name does not relate to a bona fide offering of goods or services or any legitimate noncommercial or fair purpose; (5) the Respondent registered the disputed domain name <michelineguide.com> with a privacy shield service presumably to hide her identity and prevent the Complainant from contacting her and, (6) the Respondent never answered the Complainant’s letter despite several reminders.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a disputed domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) 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;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s web site or location or of a product or service on its website or location.

The Complainant has demonstrated that its trademarks are well-known and that the disputed domain name incorporates in full its trademarks and that the Respondent has no relationship to the MICHELIN trademarks.

It is clear to this Panel that the Respondent is using the trademark MICHELIN to attract Internet users to its website “www.michelineguides.com” so that the Respondent can generate “pay-per-click” revenue. Thus, the Respondent is trying to benefit from the confusion created by the presence of the expressions “Michelin” and “eguides” within the disputed domain name to intentionally attempt to attract for commercial gain Internet users to the websites, by creating a likelihood of confusion with the Complainant’s MICHELIN Trademarks as to the source, sponsorship, affiliation or endorsement of its website.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b) 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 <michelineguide.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Date: August 25, 2015