Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & Associés, France.
Respondent is Giovanni Laporta, Yoyo.Email of Traverse City, Michigan, United States of America (“United States”), represented by Traverse Legal, PLC, United States of America.
The disputed domain name <michelin.email> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2014. On December 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceeding commenced on December 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2015. The Response was filed with the Center on January 12, 2015.
The Center appointed Clive L. Elliott as the sole panelist in this matter on January 22, 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.
According to the Registrar, the Domain Name was registered on March 28, 2014.
Complainant states that it owns the trademark MICHELIN (“MICHELIN Trademark”), enjoying a worldwide reputation in connection with the automobile and tire manufacturing industries, as well as in connection with hotel/restaurant guides, maps and publications. Complainant asserts that it has its headquarters in Clermont-Ferrand, France, and is also present in more than 170 countries, with 111,200 employees and operating 67 production plants in 17 different countries. Its Group has a Technology Center in charge of research, development and process engineering, with operations in Europe, North America and Asia
Complainant asserts that it has continually been engaged in a range of disciplines to prove their technical expertise and capacity for innovation, with commitments that involve national and international races, for both amateurs and professionals.
Complainant contends that it owns many domain names incorporating its mark, and mainly communicates on the Internet via various websites in order to present and to propose to Internet users its services and products, and among them “www.michelin.com” and “www.michelin.co.uk”
Complainant advises that upon becoming aware that the Domain Name had been registered, it sent a cease and desist letter on September 8, 2014 to Respondent requesting it to stop using the Domain Name and to transfer it to Complainant. On September 15, 2014, Complainant received a response by email from Respondent claiming that it has a legitimate business through an email recorded delivery service and that it has not infringed on Complainant’s trademark rights as it has not copied Complainant’s trademark.
Complainant contends that it has discovered that Respondent has been involved in several prior UDRP cases and that Respondent has registered various domain names reproducing famous trademarks with the extension “.email”.
Complainant states that it is the owner of the MICHELIN Trademark, with registration of the international mark on August 27, 2003 and the community mark on January 4, 2006. Complainant further states that it operates several domain names reflecting its trademarks in order to promote its services, being:
- <michelin.com> registered on December 1, 1993;
- <michelinman.com> registered on November 6, 2001;
- <michelin.co.uk> registered on April 22, 1997.
Complainant asserts that the Domain Name is confusingly similar to its trademark MICHELIN as it reproduces the trademark MICHELIN in its entirety, and submits that it is likely to create confusion wherein Internet users could be misled into thinking that it is associated with Complainant.
Complainant contends that due to its high profile around the world the public has learned to perceive the goods and services offered under this mark as being those of Complainant and therefore, the public would reasonably assume that the Domain Name is owned by Complainant or at least assume that it is related to Complainant.
The Domain Name has been registered in the “.email” Top-Level Domain (TLD). Complainant contends that the use of the “.email” TLD increases the likelihood of confusion due to the meaning of the term “email” and that Internet users are likely to incorrectly identify the Domain Name as Complainant’s domain name registered for the email correspondence between Complainant and its customers or for any type of written communication to the public made by Complainant and sent by email.
Complainant states that Respondent is not affiliated with it in any way, nor has it been authorized to use and register Complainant’s trademark, or to seek registration of any domain name incorporating said mark. Further, it has no prior rights or legitimate interests in the Domain Name and registration of the MICHELIN Trademark has preceded the registration of the Domain Name
Complainant contends that as Respondent is not commonly known by the name “Michelin”, nor is it affiliated with Complainant, nor authorized or licensed to use the MICHELIN trademark, nor seek registration of any domain name incorporating said mark, there is no legitimate use of the Domain Name.
Complainant submits that as Respondent has not demonstrated use of the Domain Name in connection with a bona fide offering of goods or services, with the Domain Name resolving to an inactive page, Respondent has therefore failed to show any intention of noncommercial or fair use of the Domain Name.
Complainant concludes that Respondent has registered a large number of domain names in the “.email” TLD reproducing well-known trademarks and highly used trademarks, which it submits amounts to cybersquatting and by engaging in such conduct, Respondent has registered the Domain Name in bad faith.
Respondent contends that there is no legitimate basis, based on actual evidence, for transferring the Domain Name to Complainant. Instead, it submits that the evidence establishes that Respondent registered the Domain Name for a legitimate business purpose, with the good faith intent to comply with all laws, including trademark laws. It goes on to point out that there has been no use of the Domain Name to date and certainly no trafficking of the Domain Name.
Respondent asserts that it purchased all its “.email” domain names lawfully in good faith and is a legitimate technology business responding to ICANN’s express goal for the new generic TLD (“gTLD”) program and expanding consumer choice on the Internet. Respondent asserts that it has invested time and money in developing a lawful business under the “.email” gTLD and that the business should be launched soon.
Respondent argues that the purchase of domain names cannot by itself evidence bad faith intent or bad faith use and that the purchase by a non-trademark holder of a domain name that includes a matching trademark is not prohibited under the UDRP. Nor is permission required from the trademark holder.
Respondent further contends that the Sunrise Period provided by ICANN gives trademark holders an advance opportunity to register domain names corresponding to their marks before domain names are generally available to the public and thereafter they should be available for purchase by the general public. Respondent proceeds to submit that UDRP examiners (sic - “panelists”) have engaged in little more than speculation and conjecture about Respondent’s business model, and its intentions and relied on unsupported statements in prior decisions, which in all cases were unproven, never argued and certainly not supported by any independent evidence.
Respondent argues that it is wrong to assume that Respondent’s service could never be a legitimate service without the “support” of the organizations to which it is directed. It asserts that Yoyo is primarily a consumer focused service working on behalf of the sender (consumer) and not the receiver and it operates similar to regular mail courier services. Accordingly, it concludes by arguing that it is not bad faith to purchase variations of a domain name required for the same service.
Respondent then goes on to elaborate on how its service will work, stating:
“The initial idea is to launch the service as a closed software service which means that users can only send emails via the Respondents software, so initially the service works as a back end service where all emails are directed and documented internally by name. At this point domain names are not seen by the general public, however domain names will be used to forward emails to the respective company (recipient). At this point there can be no confusion as to source and origin as the company (recipient) cannot be confused to who they are.”
Respondent filed lengthy, repetitive and argumentative submissions, relying on a range of decisions and judgments which purport to find that the use of a domain name, presumably the domain name in issue in that proceeding, as a backend, non-public email server in order to route emails for the storing of Metadata was lawful and that there was evidently no evidence to contradict the business model or domain name use described therein.
Respondent submits that Complainant has not proven each of the three elements required in a UDRP proceeding by a preponderance of the evidence. Instead, it contends that Respondent does not possess the bad faith intent to mislead Internet users or illegally profit from any trademark holder and on that basis requests that the Complaint be denied.
Respondent concludes with the observation that previous decisions have “steamrolled” Respondent and previous UDRP panels have adjudicated “negligently” and “abused their power.”
Complainant has for many years used and sought protection for the MICHELIN Trademark in connection with the automobile and tire manufacturing industries and hotel/restaurant guides, maps and publications. Complainant asserts that the MICHELIN Trademark is present in more than 170 countries. It asserts that it 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> and <www. michelin.co.uk>.
On this basis Complainant contends that the MICHELIN Trademark enjoys a worldwide reputation. In addition, Complainant owns numerous MICHELIN trademark registrations around the world.
The Panel accepts that the MICHELIN Trademark is exclusively associated with Complainant. It is apparent that by virtue of its widespread and long-standing use and the repute of the MICHELIN Trademark that an unrelated entity or person using a similar domain name is likely to lead to members of the public being confused and deceived.
Complainant argues that the Domain Name is identical to and therefore confusingly similar to the MICHELIN Trademark and incorporates Complainant’s MICHELIN Trademark in its entirety. Complainant contends that the addition of the “.email” TLD should have no influence on the assessment of the similarity between the Domain Name and Complainant’s MICHELIN Trademark.
In this particular case, Complainant asserts that Respondent is passively holding and not actually using the Domain Name. At present, the Domain Name resolves to a blank/inactive page. Notwithstanding the above and the allegation that Respondent is misrepresenting the position through active use of the Domain Name, under this head the primary question is whether the Domain Name is identical or confusingly similar to a mark or name in which Complainant has rights.
In this particular case the Panel finds:
a) Complainant has rights in respect of the MICHELIN Trademark.
b) The Domain Name is identical to the MICHELIN Trademark or alternatively is at least confusingly similar thereto.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
As noted above, Respondent’s central argument is that the Domain Name is likely to be used in the future as a backend, non-public email server in order to route emails for the storing of Metadata and this will be done as part of a perfectly legitimate business model.
Respondent is highly critical of previous UDRP decisions in which it is alleged that the panelists have engaged in speculation and conjecture about Respondent’s business model, and its intentions and relied on unsupported statements in prior decisions. Further, Respondent criticises decisions made without adequate evidential basis.
While long on legal argument and submission, Respondent’s Response is light on evidence. This Panel carefully read the Response, in order to glean exactly what Respondent’s business model is and why it depended on holding or use of Complainant’s well-known MICHELIN Trademark for its operation. At no stage did Respondent address this directly relevant issue, particularly in so far as the Panel is required to assess whether Respondent h as rights or legitimate interests in the Domain Name.
Complainant addresses this issue in its Complaint. It notes that previous UDRP panels (set out in Annex 16 of the Complaint) have observed that the “main weakness in the Respondent’s argument is that nothing the Respondent has put before the Panel either explains or justifies why the Respondent actually has to register and own the disputed domain names for this purpose”
Complainant also draws the Panel’s attention to a recent UDRP decision rendered about the domain name <sanofi.email>, wherein the Panel concluded “as several other panels have recently held, this Respondent has not ‘explain[ed] or justif[ied] why the Respondent actually has to register and own the disputed domain names for this purpose.’” Sanofi v. Giovanni Laporta, WIPO Case No. D2014-1145.
It is apparent from the above that at least two other panels have raised similar questions, which questions still today remain unanswered. The present Panel infers that Respondent is well aware that this issue has troubled previous panels but has decided to remain silent.
Complainant argues, with some force that since Respondent is not commonly known by the name “Michelin”, is not in any way affiliated with Complainant, nor authorized or licensed to use the MICHELIN Trademark, nor to seek registration of any domain name incorporating said mark, there is no legitimate use of the Domain Name.
It is found that in the absence of any license or permission from Complainant to use such a well-known trademark, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed under the present circumstances.
Equally, Respondent has failed to demonstrate use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. As a result, apart from unsupported claims, there is no evidence to show that Respondent has any intention of noncommercial or fair use of the Domain Name.
In the circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate and thus permissible. That is not to say that the purchase of domain names is by itself evidence of bad faith intent or bad faith use and that the purchase by a non-trademark holder of a domain name that includes a matching trademark is prohibited under the UDRP. Each case turns on its facts. However, in the case of a well-known internationally recognised trademark (the MICHELIN Trademark being one) it may well be incumbent on a respondent to explain its actions. If, for whatever reason, it chooses to remain silent it must live with the consequences.
On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
Having reached the view that Respondent lacks any license or permission to use such a well-known trademark and that Respondent has not demonstrated use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, it is reasonable to infer that Respondent wishes to take advantage of Internet users who may know of or otherwise wish to purchase or partake in Complainant’s well-known branded goods or services.
In the absence of any explanation from Respondent as to how and why the MICHELIN Trademark is necessary for the alleged legitimate operation of its business the Panel finds that it registered and used the Domain Name in bad faith. That is, so as to take advantage of Internet users who know and trust Complainant’s MICHELIN Trademark. That is, regardless of whether this is at the backend or front-end of an email service. In this regard it is relevant that Complainant communicates on the Internet via various websites in order to present and to propose to the Internet users its services and products, and promotes its goods and services via its own websites.
Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant’s MICHELIN Trademark significantly pre-dated Respondent’s registration of the Domain Name and in light of the long-established and widespread use and the protection of the MICHELIN Trademark that Respondent knew or ought to have known of Complainant’s prior rights.
The Panel thus concludes that the third element of the Policy has been met.
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, <michelin.email>, be transferred to Complainant.
Clive L. Elliott QC
Sole Panelist
Date: February 9, 2014