The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 0156357741, Canada / Milen Radumilo, Romania.
The disputed domain name <itinerairemichelin.com> (“Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2020. On May 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 20, 2020, 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 May 21, 2020 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 May 25, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2020.
The Center appointed Nicholas Weston as the sole panelist in this matter on July 9, 2020. 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.
The Complainant is a corporation organized under the laws of France that operates a business with a presence in 171 countries selling tires, the authoritative Guide Michelin that ranks fine dining establishments by awarding “Michelin Stars”, and digital services including travel experience and route planning applications (“apps”). The Complainant holds registrations for the trademark MICHELIN in numerous countries, including International trademark registration No. 771031, registered on June 11, 2001.
The Complainant is also the owner of, inter alia, the domain name <michelin.com>, registered on November 30, 1993.
The Disputed Domain Name <itinerairemichelin.com> was registered on November 30, 2019. The Complainant has provided the evidence that the Disputed Domain Name dynamically redirects to different web pages including a pay-per-click (“PPC”) parking page that included links to competing goods and services.
The Complainant cites International trademark registration No. 771031, registered on June 11, 2001, and other registrations internationally for the mark MICHELIN, as prima facie evidence of ownership.
The Complainant submits that the mark MICHELIN is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the MICHELIN trademark and that the similarity is not removed by addition of the word “itineraire” as well as the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of any affiliation with the Complainant, or consent to use the Complainant’s trademark, and the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the Disputed Domain Name and has not used the Disputed Domain Name in connection with a bona fide offering of goods or services.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use and fame of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and are being used in bad faith.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark MICHELIN in numerous countries including, inter alia, China, Germany, Egypt, Norway, the Russian Federation, Singapore and Turkey, pursuant to International Trademark No. 771031 registered on June 11, 2001. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the MICHELIN trademark, the Panel observes that the Disputed Domain Name comprises: (a) the word “itineraire”; (b) followed by an exact reproduction of the Complainant’s trademark MICHELIN; (c) followed by the gTLD “.com”.
It is well established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “itinerairemichelin”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of other words such as a descriptive word (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
This Panel finds the Complainant’s trademark is recognizable within the Disputed Domain Name, and that the additional word “itineraire” is insufficient to avoid a finding of confusing similarity to the Complainant’s mark under the first element (see WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. In addition, the Complainant claims that the Respondent is not commonly known by the Disputed Domain Name or the mark MICHELIN, and is not make a legitimate noncommercial or fair use of the Disputed Domain Name.
On any objective view of the evidence, there are no circumstances on the case file showing that the Respondent has rights or legitimate interests in a domain name incorporating the Complainant’s trademark MICHELIN.
Furthermore, the nature of the Disputed Domain Name, consisting of the Complainant’s well-known trademark and an additional term, cannot constitute fair use as it effectively suggests sponsorship or endorsement by the Complainant, which does not exist. See WIPO Overview 3.0, section 2.5.1.
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and, in the absence of a reply by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
The third element of the Policy that the complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark MICHELIN is such a famous mark, that it would be inconceivable that the Respondent might have registered the Disputed Domain Name without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Compagnie Générale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, WIPO Case No. D2000-1414(“MICHELIN is a famous trademark, and its tourist guides are notorious”); Compagnie Générale des Etablissements Michelin-Michelin & Cie v. la bon vie and Gilles Epie, WIPO Case No.D2002-0092(“The Complainant’s trademark has a strong reputation and is widely known”); Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022(“the mark MICHELIN is a “famous” trademark”); and Compagnie Générale des Etablissements Michelin v. Domains By Proxy, LLC, Registration Private / Carolina Rodrigues, Fundacion Comercio Electronico., WIPO Case No. D2020-0226 (“the Panel recognises the Complainant’s MICHELIN trademark to be well known”).
In view of the composition of the Disputed Domain Name, the Panel finds it highly probable that the Respondent knew of the Complainant’s trademark, and had it in mind at the time of registration. Given that the word “itineraire”, means “route” in French, this Panel infers that the respondent was aware of the Complainant’s use of the MICHELIN trademark in relation to digital route planning apps. In that regard, the Panel also observes that the additional chosen word “itineraire” may compound the confusion of Internet users searching for the Complainant, in view of the Complainant’s use of the MICHELIN trade mark in relation to its digital route planning apps.
Further, a gap of several years between registration of a complainant’s trademark and a respondent’s registration of a disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In the present case, the Respondent registered the Disputed Domain Name decades after the Complainant first established trademark rights in the MICHELIN mark.
On the issue of use, the evidence is that the Disputed Domain Name resolves to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s MICHELIN branded route planning apps. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra;Accenture Global Services Limited v. Tulip Trading Company, WIPO Case No. D2015-1520; National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited v. Tulip Trading Company,WIPO Case No. D2016-0036; WIPO Overview 3.0, section 3.5.
As the Respondent has used a privacy or proxy service and there is evidence he provided false or incomplete contact information, the Panel also finds this conduct is a further indication of bad faith (see WIPO Overview 3.0, section 3.6).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark MICHELIN and incorporated it into the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking web page for commercial gain, and has sought to cover his tracks by providing false or incomplete contact information and hiding behind a privacy or proxy service.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <itinerairemichelin.com> be transferred to the Complainant.
Date: July 16, 2020
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