The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is 1&1 Internet Limited of Gloucester, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) / Fui Afeku of London, United Kingdom, self-represented.
The disputed domain name <michelin.house> is registered with 1&1 Internet AG (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2017, 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 January 12, 2017 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 January 13, 2017.
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 January 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2017. The Response was filed with the Center on February 6, 2017. The Respondent sent a separate email to the Center on the same date.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 13, 2017. 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 large tire manufacturing company with headquarters in Clermont-Ferrand, France.
The Complainant owns the following trademark registrations for MICHELIN:
- European Union trademark MICHELIN no. 1791243 dated August 3, 2000, duly renewed, covering goods in classes 6, 7, 12, 17, 28;
- European Union trademark MICHELIN no. 4836359 dated January 4, 2006, duly renewed, 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, 39;
- European Union trademark MICHELIN no. 9914731 dated April 21, 2011, covering goods and services in classes 9, 35, 37, 38, 39, 41, 42, 43.
The disputed domain name was registered on September 22, 2016. At the time of this decision the disputed domain name did not resolve to an active webpage.
The Complainant’s assertions may be summarized as follows:
(i) Identical or Confusingly Similar
The Complainant has been using the MICHELIN trademark in connection with a wide variety of products and services around the world. Further, several prior UDRP panel decisions have regarded the MICHELIN trademark to be “well-known” or “famous”.
The disputed domain name is identical or at least confusingly similar to the Complainant’s MICHELIN trademark.
(ii) Rights or legitimate interests
The Complainant states that the Respondent is not affiliated with the Complainant nor has it been authorized to use and register its trademarks, or to seek registration of any domain name incorporating the MICHELIN trademark.
The Complainant states that the disputed domain name is identical to the Complainant’s famous MICHELIN trademark, so that Respondent cannot reasonably pretend they were intending to develop a legitimate activity through the disputed domain name.
In addition, the disputed domain name resolves to an error page. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. It is most likely to be believed that the Respondent has no rights or legitimate interests in the disputed domain name.
Finally, the Respondent registered the disputed domain name with a privacy shield service to hide his identity and prevent the Complainant from contacting him. Such behavior highlights the fact that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
(iii) Registration and Use in Bad Faith
According to the Complainant, the disputed domain name was registered and is being used in bad faith.
The Complainant also asserts that because the Respondent, who had no rights or legitimate interests in the Complainant’s MICHELIN trademark, knew or should have known about the Complainant’s rights, bad faith can be found. Complainant is well-known throughout the world including in the United Kingdom – the Respondent’s home country. Several UDRP panels have previously mentioned its worldwide reputation, making it unlikely that the Respondent was unaware of the Complainant’s proprietary rights in the trademark. As the composition of the disputed domain name entirely reproduces the Complainant’s trademark MICHELIN, it is impossible that the Respondent did not have this trademark and company name in mind while registering the disputed domain name.
The Complainant claims that 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.
The Complainant claims it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name. The Complainant further argues that passive holding of the disputed domain name can satisfy the requirements of paragraph 4(a)(iii).
The Complainant requests that the disputed domain name be transferred to it.
The Respondent has submitted a short Response stating: “The trademark name ‘michelin’ registered does not include the use of ‘michelin’ to highlight the works of the great fine art painter Jules Michelin (1815-1870). Which was available before the first registration of ‘michelin’ first trademark registration.”
Subsequently, the Respondent sent an email stating the following: “The domain name ‘michelin.house’ does not infringe any of ‘michelin’ intellectual property rights as it was registered for the use to highlight fine arts. ‘Michelin.house’ was registered to celebrate the works of a great fine artist known as Jules Michelin (1815-1870). thanks Fui Afeku”.
According to paragraph 4(a) of the Policy, the Complainant must prove each of 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 is being used in bad faith.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Complainant has established that it is the registered owner of various trademark registrations for its MICHELIN trademarks, which is wholly incorporated in the disputed domain name. It is well accepted that the generic Top-Level Domain is typically disregarded when assessing confusing similarity.
In the light of the above, the Panel finds that the disputed domain name is identical to the trademark in which the Complainant has rights.
The second ground to be demonstrated by the Complainant, according to the provisions of the Policy, is Respondent’s absence of any rights or legitimate interests in the disputed domain name, per paragraph 4(c) of the Policy.
It is sufficient for a complainant to make out a prima facie case that the respondent does not hold rights or legitimate interests in the domain name. Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the MICHELIN trademark in a domain name or in any other manner. The Panel notes that the Respondent’s name does not reflect the disputed domain name. The Panel finds there is no evidence of legitimate noncommercial or fair use of the disputed domain name.
The Respondent contends that “The domain name ‘michelin.house’ does not infringe any of ‘michelin’ intellectual property rights as it was registered for the use to highlight fine arts. ‘Michelin.house’ was registered to celebrate the works of a great fine artist known as Jules Michelin (1815-1870)”.
The Panel is of the view that a mere assertion of a legitimate interest without any evidence of intention to use the disputed domain name is not enough to show legitimate interest in the disputed domain name, and in the context of these circumstances the Panel finds the Respondent’s explanation spurious.
Therefore, in light of the Complainant’s prima facie case, unrebutted by Respondent, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant is well-known worldwide. The Panel considers that it is very likely that the Respondent knew of the Complainant especially given the Complainant’s worldwide reputation (Compagnie Générale des Etablissements Michelin v. Way Su, WIPO Case No. D2016-2221; Compagnie Générale des Etablissements Michelin v. Shuitu Chen, WIPO Case No. D2016-1924; Compagnie Générale des Etablissements Michelin v. Mark Hill, WIPO Case No. D2015-2274; and Compagnie Générale des Etablissements Michelin v. zhouhaotian, WIPO Case No. D2015-1728).
Passive holding of the disputed domain name coupled with the fame of the Complainant’s MICHELIN trademark does not avoid a bad faith finding. “It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is in use within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003)”. Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.
The Panel also takes into account that:
- the Respondent registered the disputed domain name with a privacy shield service to hide his identity and prevent the Complainant from contacting him;
- the Respondent has been a party to one other case, where it was held that he registered the disputed domain in bad faith. See Sir Terence Conran, Conran Holdings Limited v. Fui Afeku, WIPO Case No. D2016-2199.
The Panel also takes notice of the Respondent’s explanation for the registration of the disputed domain name, and finds that its unsupported assertions are not credible and thus, in the circumstances of this case, are an additional factor weighing against the Respondent under this element.
Given the foregoing, the Panel finds that the disputed domain name was registered and used in bad faith.
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 <michelin.house> be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: February 27, 2017