WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Travel and entertainment group/Tom Warsop

Case No. D2015-1657

1. The Parties

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

The Respondent is Travel and entertainment group/Tom Warsop of Newcastle under Lyme, Staffordshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").

2. The Domain Names and Registrar

The disputed domain names <michelinstarred.restaurant> and <michelinstar.restaurant> are registered with Instra Corporation Pty Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2015. On September 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2015. On September 25, 2015, the Respondent informed the Center that it had decided not to renew the disputed domain names and they could be purchased. The Respondent did not file any formal response by the Response due date. On October 16, 2015, the Center informed the parties that it would proceed with panel appointment.

Further email communications were received from the Respondent on October 16 and 19, 2015.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on October 20, 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 is Michelin, the company headquartered in France, worldwide leader in the field of tires.

It also offers electronic mobility support services on "www.viamichelin.com" and publishes travel guides, hotel and restaurant guides, maps and road atlases.

The Complainant is present in more than 170 countries, has 112,300 employees and operates 68 production plants in 17 different countries.

The Michelin Guide, also known as the "Michelin Red Guide", was created by the Michelin brothers in 1900 and today is available in 14 editions covering 23 countries and sold in nearly 90 countries. In 1926, the first fine dining star was born, while in 1931 the second and third stars came into existence.

The Michelin Guide awards Michelin Stars for the excellence of selected establishments.

The 33rd edition of the 2014 MICHELIN guide Main Cities of Europe covers 44 cities in 20 European countries; these countries include the United Kingdom in which restaurants from London, Birmingham, Edinburgh and Glasgow have been awarded Michelin stars.

The Complainant owns numerous MICHELIN trademark registrations around the world, and in particular, it is the owner of the following trademark registration:

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

In addition, the Complainant actively promotes its MICHELIN trademark through its websites linked, among others, to the domain names <michelin.com> registered on December 1, 1993 and <michelin.co.uk> registered on April 22, 1997.

The disputed domain names were registered on November 21, 2014 and they both resolve to a parking page provided by the Registrar.

The Complainant sent a cease and desist letter to Respondent by email on May 28, 2015.

After a reminder from the Complainant, the Respondent answered on June 5, 2015 showing the intention to create a website promoting the Michelin brand related to Michelin-starred restaurants around the world and proposing a business partnership with the Complainant. On the same date, the Complainant refused the Respondent's proposal, insisting on the immediate transfer of the disputed domain names free of charge. The Respondent answered on June 9, 2015 asking for a compensation for the time and money spent on its project in exchange of the ownership of the disputed domain names. The Complainant refused once again the Respondent's proposal. Notwithstanding several reminders sent by the Complainant, the Respondent did not reply any more to the Complainant and never carried out the transfer of the disputed domain names.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or, at least, confusingly similar to the Complainant's worldwide famous trademark MICHELIN. The fame of the Complainant's trademark MICHELIN was confirmed by numerous previous UDRP panel decisions.

The addition of the generic terms "star" and "starred" is not relevant and is not sufficient to avoid the confusing similarity between the disputed domain names and the Complainant's trademark. On the contrary, the addition of such words that clearly refer to the Complainant's well-known notation system for restaurants, strengthens the association with the Complainant and enhances the level of confusion of Internet users.

The likelihood of confusion between the disputed domain names and the Complainant's trademark is also increased by the association with the new generic Top-Level Domain ("gTLD") ".restaurant", in which the disputed domain names are registered; indeed, the new gTLD ".restaurant" is directly and closely related to the Complainant's trademark and to the well-known Michelin-starred restaurants.

The Complainant contends that Respondent is not affiliated with the Complainant in any way nor it has been authorized by the Complainant to use and register their trademark, or to seek registration of any domain name incorporating the said mark. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain names. The registration of the MICHELIN trademark preceded the registration of the disputed domain names for years.

The Complainant contends that the Respondent cannot claim any actual or contemplated bona fide or legitimate use of the disputed domain names. Moreover, the Respondent did not make any use or demonstrable preparation to use the disputed domain names in connection with a bone fide offering of goods or services, considering that the disputed domain names resolve to inactive pages.

Furthermore, no legitimate noncommercial or fair use of the disputed domain names can be inferred from the Respondent's replies to the Complainant's cease and desist letters: indeed, considering the exchanges with the Respondent, it appears that the only reason why the Respondent has registered the disputed domain names is for the purpose of selling them to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain names. Moreover, from the Respondent's response it is clear that it does not have any authorization or rights in the disputed domain names, considering that the Respondent has proposed a partnership with the Complainant.

The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith.

The Respondent's bad faith registration is established by the fact that the Respondent was aware of the existence of the Complainant's trademark given its status of a well-known trademark throughout the world, including the United Kingdom, where the Respondent resides.

Moreover, the Respondent's awareness of the Complainant's activity and rights may be inferred by the fact that the Respondent registered the disputed domain names incorporating the MICHELIN trademark in its entirety, with the addition of the generic terms "star" and "starred" and in the new gTLD ".restaurant": all these words clearly relate to the Complainant's business activity consisting of "Michelin-starred restaurants" and "Michelin Stars".

Finally, the Respondent's full knowledge of the Complainant's rights can also be inferred by the fact that in its response to the Complainant it did not deny its knowledge of Michelin and Michelin-starred restaurants, even asking for a partnership with the Complainant.

Furthermore, in its second reply to the Complainant the Respondent offered to sell the disputed domain names to the Complainant, showing its clear intention of selling them for out-of-pocket expenses: also this behavior of the Respondent is an evidence of bad faith registration and use.

Concerning the use in bad faith, the Complainant contends that, according to numerous previous UDRP panel decisions, the Respondent's bad faith can be inferred by several elements, and in particular: (1) the absence of any license or permission from the Complainant to use such widely known trademark; (2) no actual or contemplated bona fide or legitimate use of the disputed domain names; (3) the passive holding of the disputed domain names.

Finally, the Complainant contends that it is likely that the Respondent registered the disputed domain names in order to prevent the Complainant from using its trademark in the disputed domain names: also this type of conduct, according to previous UDRP panel decisions, constitutes evidence of the Respondent's bad faith.

B. Respondent

The Respondent did not file any formal response by the Response due date, fixed on October 15, 2015.

On September 25, 2015, the Respondent informed the Center that it had decided not to renew the disputed domain names and they could be purchased.

Further email communications were received from the Respondent on October 16 and 19, 2015. The Respondent confirmed that it would not renew the disputed domain names and the Complainant could have purchased them at their convenience. With the email sent to the Center on October 19, 2015, the Respondent, after having confirmed that the disputed domain names were free to be purchased from ICANN, pointed out that "[s]urely further delay leaves the possibility of someone else purchasing the same domain name and you having to go through this whole process again!?".

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names registered by the Respondent have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names <michelinstarred.restaurant> and <michelinstar.restaurant> are confusingly similar to the Complainant's MICHELIN trademark, a clearly distinctive and well-known mark in which the Complainant has established rights through registrations and extensive use all over the world.

The disputed domain names incorporate the Complainant's MICHELIN trademark in its entirety; the only difference is the mere adjunction of the words "star" in one domain name and "starred" in the other.

The addition of the above terms is not enough to the Panel to prevent confusing similarity between the disputed domain names and the Complainant's worldwide famous trademark (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987).

Furthermore, the Panel finds that the addition of the generic terms "star" and "starred" that clearly relates to one of the Complainant's business activities, is likely to enhance the confusion and to lead customers to believe that the disputed domain names are effectively linked to, affiliated with or connected to the Complainant (see America Online Inc. v. Yetech Communication Inc., supra, GA Modefine SA v. Riccardo Bin Kara-Mat, supra, Volkswagen AG v. Emir Ulu, supra).

The Panel believes that Internet users considering the disputed domain names without awareness of their contents may think that the disputed domain names are in some way connected and associated with the Complainant: this scenario is known as "initial interest confusion" (see Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul, WIPO Case No. D2004-0988).

Moreover, the Panel notes that the TLD suffix is typically disregarded under the confusing similarity text according to other previous UDRP decisions (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2). With regards to the suffix ".restaurant", this Panel is inclined to consider the new gTLD in the assessment of confusing similarity, considering that the new gTLD ".restaurant" is closely related to one of the Complainant's business activities, concerning in particular the famous Michelin-starred restaurants. This Panel believes that the gTLD extension adds further to the confusing similarity of the disputed domain names to the Complainant's mark (see, e.g., OSRAM GmbH. v. Nick Nick, WIPO Case No. D2014-1083).

This Panel points out that, in the present case, it would have come to the same conclusion of the confusing similarity between the disputed domain names and the Complainant's trademark, even if it had not included the new gTLD in its assessment.

In light of all the above circumstances, this Panel finds that the disputed domain names <michelinstarred.restaurant> and <michelinstar.restaurant> are confusingly similar to the Complainant's trademark. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent did not formally reply to the Complainant's contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain names, such as:

(i) use or preparation to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the disputed domain names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain names.

The Complainant states, and proves by submitting documents (Annexes 3 and 5 to the Complaint) that the MICHELIN trademark has been extensively used worldwide for numerous years and has become a well-known trademark throughout the world. The status of well-known or famous mark of the Complainant's trademark MICHELIN was confirmed by numerous previous UDRP panel decisions (Annex 7 to the Complaint). Therefore, in this Panel's view, the Respondent must have been aware of the Complainant's existence when it registered the disputed domain names. And indeed, the Respondent's awareness of the Complainant's activity and rights may be inferred:

(i) by the fact that the Respondent registered the disputed domain names incorporating the MICHELIN trademark in its entirety, with the mere addition of the generic terms "star" and "starred" that clearly relate to one of the Complainant's field of activities, concerning in particular Michelin-starred restaurants;

(ii) by the Respondent's reply to the Complainant's cease and desist letter; in the email dated June 5, 2015, the Respondent stated that the presumed purpose of the registration of the disputed domain names was the developing of websites allowing users "to easily find restaurants that have been awarded with one or more Michelin Stars around the world" (Annex 4 to the Complaint).

Moreover, the Complainant states that the Respondent has no connection or affiliation with the Complainant and no license or authorization of any kind has been given by the Complainant to the Respondent to use and register its trademarks or to seek registration of any domain name incorporating said mark. The Complainant confirmed the absence of any authorization granted to the Respondent to use the MICHELIN trademark in any way, in its email communications to the Respondent (Annex 4 to the Complaint).

Since the Respondent has no permission from the Complainant, the Panel finds that based on the available evidence, the Respondent's use of the disputed domain names is without rights or legitimate interests.

Furthermore, the disputed domain names do not currently resolve to any active website; such "passive holding" of the disputed domain names in itself is not capable of creating any rights or legitimate interests of the Respondent therein (see, e.g., Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003; Archipelago Holdings LLC v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729).

Finally, the use of the disputed domain names cannot be considered a bona fide offering of goods or services. Indeed, the Respondent has registered and is using the disputed domain names with the clear intention to use the Complainant's mark and name for its own profit. From the Respondent's email communications to the Complainant, it can be inferred that the real reason why the Respondent has registered the disputed domain names is for the purpose of selling them to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain names.

Such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names as per paragraph 4(c)(iii) of the Policy.

Finally, given the circumstance of this case, the Panel finds that the Respondent's lack of rights or legitimate interests in the disputed domain names may also be inferred by the fact that no formal response was filed by the Respondent. According to earlier UDRP decisions "non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights" (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain names were registered and are being used in bad faith.

The Complainant's name, trademark and activities are well known throughout the world (as analyzed by the Panel under Section 6.B. above) and considering the widespread use and fame of the Complainant's trademark, in this Panel's view the Respondent must have been aware of them when it registered the disputed domain names. And indeed, the Respondent's awareness of the Complainant's activity and rights may be inferred by the fact that the Respondent registered the disputed domain names incorporating the MICHELIN trademark in its entirety, with the mere addition of the terms "star" and "starred" that clearly relate to one of the Complainant's business activities. However, the Respondent itself in the email to the Complainant dated June 5, 2014, recognized its knowledge of the Complainant's MICHELIN trademark.

As the Panel has found that the Respondent has no rights or legitimate interests in the disputed domain names, in line with other prior UDRP decisions (Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794 and Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395) the Panel believes that, given the circumstance of this case and in the absence of any rights or legitimate interests, and lacking any contrary evidence by the Respondent, the Respondent's registration of disputed domain names confusingly similar to the Complainant's worldwide well-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411).

Moreover, as referred by the Complainant, in one of the Respondent's replies to the Complainant's cease and desist letter, the Respondent offered to sell to the Complainant the disputed domain names. According to previous UDPR decisions, this Panel also finds that "the offer to sell a domain name in excess of the out of pocket expenses of the respondent in registering the domain names can be compelling evidence of bad faith registration and use" (Imara Trade Marks BVI Limited v. Direct Privacy ID 1078D, Domain Name Proxy Service, Inc., WIPO Case No. D2012-2183, DHL Operations B.V. v. Karel Salovsky, WIPO Case No. D2006-0520 and AstraZeneca AB v. Alvaro Collazo, WIPO Case No. D2005-0367).

Concerning the use of the disputed domain name, the Complainant has proven that the disputed domain names currently hold no Internet content of the Respondent.

With regard to this issue, the Panel shares the Complainant's view and, according to several UDRP precedents originated from the decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel believes that, in certain circumstances, the inaction in respect of a domain name registration can constitute a domain name being used in bad faith.

In the Panel's opinion, in the circumstances of this Complaint, the passive holding of the disputed domain names by the Respondent amounts to the Respondent acting in bad faith.

Indeed, considering:

(i) the well-known character of the Complainant's trademark and its widespread and international use;

(ii) the Respondent's failure to provide evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names;

(iii) the default of the Respondent's reply to the Complainant's contentions;

the Panel concludes that the Respondent's passive holding of the disputed domain names satisfies the requirement of paragraph 4(a)(iii) of the Policy, that the disputed domain names are being used in bad faith (see Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172 and Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615).

Furthermore, this Panel finds that the Respondent's bad faith is also proven by the fact that at first the Respondent replied to the Complainant's cease and desist letter pretending to have registered the disputed domain names at the purpose to develop websites promoting the Michelin brand; then it offered to sell the disputed domain names to the Complainant for a compensation for the time and money spent on its project. But it never gave the Complainant any evidence or any specific indications of the presumed costs involved and did not reply anymore to the subsequent emails received from the Complainant, maintaining the registration of the disputed domain names <michelinstarred.restaurant> and <michelinstar.restaurant> and therefore leaving the Complainant with no other choice but to initiate the UDRP proceeding.

Such behavior is further evidence of the Respondent's bad faith.

In light of the above circumstances, the Panel is satisfied that the third element under paragraph 4(a) of the Policy is met and that the disputed domain names <michelinstarred.restaurant> and <michelinstar.restaurant> were registered and are being used in bad faith.

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 names <michelinstarred.restaurant> and <michelinstar.restaurant> be transferred to the Complainant.

Alessandra Ferreri
Sole Panelist
Date: November 3, 2015