Complainant is Compagnie Générale des Etablissements Michelin, Clermont-Ferrand, France, represented by Dreyfus & associés, France.
Respondent is Pavol Horecny, Levice, Slovakia.
The disputed domain name <pneumatiky-michelin.info> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2009. On November 19, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 19, 2009, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 22, 2009.
The Center appointed Ladislav Jakl as the sole panelist in this matter on December 29, 2009. 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.
Complainant asserted, and provided evidence in support of, and the Panel finds established, the following facts.
Complainant manufactures and sells tires for all kinds of vehicles, publishes maps and guides and operates a number of digital services in more than 170 countries. From the invention of the radial tire to the steel wheel, and from the first gastronomic guide, Complainant has played an active role at every stage of the automotive adventure. Thus created in 1889, enjoys a strong reputation in the field of tire manufacturing for cars, trucks, motorcycles and planes. Also offers a wide range of services such as car/truck assistance, publishing of road maps, restaurant, hotel and travel guides.
Complainant is the most well-known guide in France and abroad. The replacement tire market represents 72% of Complainant's sales in volumes in the Passenger Car-Light Truck market, and 83% in the Truck market. Accordingly, before being an equipment supplier for vehicle manufacturers, Michelin was primarily a player on the consumer market for passenger cars and motorcycles and on the professional consumer goods market for light and heavy utility vehicles. Complainant is active on all continents and notably in Europe. Distributes its products in more than 170 countries. In 2008 manufactured 177 millions tires and printed 16 millions maps and guides. Complainant is accelerating its industrial and commercial expansion in Central and Eastern Europe, South America and Asia to serve tire demand with local production and increases its share of business in those high-growth regions. In doing so, Complainant aims to align itself with the geographic breakdown of the world's tire markets and is optimizing its industrial tool to build on a robust and profitable position in the developed markets.
Complainant owns and mainly communicates on the Internet via various websites in order to present and to propose to Internet users its services and products, the main one is “www.michelin.com” but Complainant has also registered various local websites such as “www.michelin.sk” in Slovakia via its subsidiary Michelin Slovensko s.r.o. The website directs Internet users to a website that displays an official Michelin logo with Michelin man/Bibendum and information about Michelin along with sponsored links and advertising for online tire resellers.
Complainant noticed that the domain name <pneumatiky-michelin.info> was registered on April 12, 2009 and the disputed domain name includes the MICHELIN trademark in its entirety associated with a generic term in Slovak “pneumatiky”.
Complainant owns trademark registrations for MICHELIN in many countries around the world related to the tires production and sale, road maps and various guide publications in the field of hotels and restaurant. Complainant is notably the holder of the following International Trademarks designating Slovakia:
- MICHELIN, International Trademark n°348615 registered on July 24, 1968, duly renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20 including guides.
- MICHELIN, International Trademark n°448269 registered on October 24, 1979, duly renewed and covering goods in classes 8, 14 and 21.
- MICHELIN, International Trademark n°452542 registered on May 8, 1980, renewed and covering services in classes 35 and 41.
- MICHELIN, International Trademark n°492879, filed on May 10, 1985, duly renewed, and covering goods in class 12.
- MICHELIN, International Trademark n°517586, registered on September 24, 1987, renewed and covering goods and services in classes 9, 35 and 38.
- MICHELIN, International Trademark n°574577, registered on May 6, 1991 and covering goods in classes 6, 16, 18, 21 and 25.
- MICHELIN, International Trademark n°740073, registered on August 8, 2000 and covering goods in classes 6, 7, 12 and 17.
- MICHELIN, International Trademark n°816915, registered on August 27, 2003 and covering services in classes 35, 37, 39 and 42.
Complainant is also the owner of several Community Trademarks, among which
- MICHELIN, Community Trademark n°006993547, registered on February 6, 2009 and covering goods in classes 7 and 9.
- MICHELIN, Community Trademark n°005670872, registered on February 15, 2008 and covering goods in classes 3, 4, 7, 9, 11, 12, 20 and 28.
- MICHELIN, Community Trademark n°001791243, registered on October 24, 2001 and covering goods in classes 6, 7, 12, 17 and 28.
Moreover, Complainant operates, among others, the domain names reflecting trademarks:
- <michelin.com>, registered on December 1, 1993;
- <michelin.info>, registered on July 30, 2001.
The domain name <pneumatiky-michelin.info> reproduces entirely Complainant's
trademark MICHELIN which is very well-known especially in the field of manufacturing and sales of tires.
Before introducing the present UDRP action, Complainant sent a cease-and-desist letter by e-mail and registered letter dated July 23, 2009 to Respondent based on its trademark rights asking the latter to cancel the disputed domain name <pneumatiky-michelin.info>. Despite the fact that Complainant sent many reminders to Respondent, he never answered.
Complainant argues that disputed domain name <pneumatiky-michelin.info> reproduces entirely Complainant's trademark MICHELIN which is very well-known, especially in the field of manufacturing and sales of tires. In many WIPO UDRP decisions the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant's registered mark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and Accor v. Lee Dong Youn, WIPO Case No. D2008-0705).
The disputed domain name features a generic word added to the trademark, which is “pneumatiky”. The mere adjunction of this word is not sufficient to distinguish the disputed domain name from Complainant's MICHELIN trademark. Numerous WIPO UDRP decisions have established that adding generic words is insufficient to give any distinctiveness to the disputed domain name( Alstom v. FM Laughna, WIPO Case No. D2007-1736, and Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565). Furthermore, this term is a common Slovakian word, meaning “tire”, the term “pneumatiky” even increases the risk of confusion, because it is directly related to the Business, in which the Complainant is engaged.
The mere adjunction of the generic “.info” extension is irrelevant as it is well established that the generic top level domain name is not an element of distinctiveness that is taken into consideration when evaluating the identity or similarity of the Complainant's trademark and the disputed domain name. Previous decisions ruled that the gTLD “.info” has no distinguishing capacity and does not alter the value of the trademark represented in the domain name (Sanofi-aventis v. Brad Hedlund, WIPO Case No. D2007-1310).
Accordingly, by registering said domain name, Respondent created a likelihood of
confusion with Complainant's trademarks. It is likely that this domain name could mislead Internet users in thinking this is in some way associated with Complainant.
For all the above-cited reasons, Complainant concludes that disputed domain name is identical or confusingly similar to the trademarks MICHELIN in which Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
Complainant has submitted evidence, that Respondent is not affiliated with him in any way, nor has Respondent been authorized by Complainant to register and use Complainant's trademarks or to seek registration of any domain name incorporating said marks. Furthermore, Respondent has no prior rights or legitimate interest in the domain name.
Respondent never used the term “michelin” in any way before or after Complainant started its business. Respondent has not proved so far to be the holder of prior rights or to have any legitimate interest in the disputed domain name. The mark MICHELIN is wellknown and is widely used by Complainant (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022; Compagnie Générale des Etablissements Michelin – Michelin et Cie v. Petdorf Racing, WIPO Case No. D2005-0210).
Complainant's rights in the MICHELIN trademark predate Respondent's registration by a considerable length of time. Besides, before filing this complaint, Complainant sent a cease-and-desist letter to Respondent informing him that the registration and use of the disputed domain name infringes its intellectual property rights. Respondent did not answer. If Respondent had legitimate interest in the domain name, he would have vigorously defended his rights by responding quickly to cease-and-desist letter of Complainant. Previous decisions stated that the absence of response to cease-and-desist letter may be an evidence of Respondent lacking legitimate interests (HEALD COLLEGE, LLC v. Versata Software, Inc., WIPO Case No. D2008-1875 and Global Business Network, Inc. v. Mr. James Pinda, WIPO Case No.D2006-0101).
Respondent is not known under the name “michelin” or any similar term. Since the disputed domain name is confusingly similar to Complainant's well-known trademark, Respondent cannot reasonably pretend it was intending to develop a legitimate activity. The term “pneumatiky” is generic and does not convey any distinctiveness to the disputed domain name. Moreover, the term “michelin” has no meaning whatsoever in Slovakian which is the language of the Respondent, according to an online dictionary, or in any other language.
Further on Complainant argues that Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services. The only use which Respondent appears to have made of the domain name has been for a web page displaying information about Michelin and sponsored links and advertisements for online tire resellers which Michelin has not authorized and does not support. Besides, the web site contains at the top of the home page a stylized logo “Michelin man”, which is clearly a copy of Complainant's own logo.
The sole objective of Respondent to choose a domain name which incorporates the trademark MICHELIN in its entirety, adding only the element “pneumatiky”, is to benefit from the reputation of the trademark MICHELIN (Accor v. Eren Atesmen, WIPO Case No. 2009-0701). Previous WIPO UDRP decisions have considered that MICHELIN is a well established and well-known trademark).
For the above-cited reasons, Complainant concludes that Respondent has no rights or legitimate interests with respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.
With regards to bad faith registration, Complainant argues that it is obvious that Respondent knew or must have known Complainant's trademark MICHELIN at the time he registered the disputed domain name. Complainant's trademark is a well-known trademark throughout the world and in Slovakia. Due to the fact that the domain name directs Internet users to a web page relating to Complainant's business and history, Respondent cannot have ignored Complainant's international reputation at the time of registration of the domain name.
The use of the disputed domain name by Respondent suggests that he is perfectly aware of Complainant and its MICHELIN marks. Respondent's use of the disputed domain name will cause consumers mistakenly to believe that <pneumatiky-michelin.info> website is affiliated with or owned by Michelin. As it is also developed in the previous section, the Panel has recognized the notoriety of Complainant's trademarks (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022; Compagnie Générale des Etablissements Michelin – Michelin et Cie v. Petdorf Racing, WIPO Case No. D2005-0210).
In light of the reputation of Michelin's trademark, the reproduction by Respondent of this trademark in its entirety combined with generic and descriptive term “pneumatiky” it is clear that Respondent was aware of the existence of Complainant's trademark. It has been held in previous cases that knowledge of a corresponding mark at the time of the domain name suggests bad faith (Caixa D'Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464 and Document Technologies, Inc. v. International Electronic Communications Inc, WIPO Case No. D2000-0270).
Complainant further submitted evidence that the disputed domain name is linked to website displaying sponsored links and advertisements for online tire resellers. It also reproduces at the top of the home page an official Michelin logo including “Michelin man/Bibendum”. The trademark MICHELIN is being used in bad faith in that the website carries a reproduction of Complainant's own logo. Viewing the logo on the website, Internet users would likely conclude that Respondent is licensed by Complainant or is an affiliate. By copying the “Bibendum” or “Michelin man” logo, Respondent uses the domain name in bad faith (La Française des Jeux v. Elliott Stambouli, WIPO Case No. D2007-0345; Mrs. Agnès Troublé v. Chan AERO, WIPO Case No. D2006-1399 and Six Continents Hotels, Inc. v. Hotel Partners of Richmond, WIPO Case No. D2003-0222).
In Complainant's opinion it seems obvious that Respondent registered the domain name in order to benefit from reputation of Complainant and to create a likehood of confusion with Complainant marks and website. The success of Respondent's operation presumably depends on attracting visitors, either directly or through search engines, but is founded upon the use of Complainant's registered marks and Complainant's undoubted fame and popularity. At least a proportion of Internet users arriving at Respondent's website are likely to be confused into thinking it is endorsed by or legitimately associated with Complainant, which is not (Viacom International Inc. v. Pablo, Palermao/Moniker Privacy Services, WIPO Case No. D2008-1179, and Estes Express Lines v. Whois Data Shield / Honk Kong Names LLC., WIPO Case No. D2007-0100).
Respondent has registered this domain name including a well-known mark to capitalize on Complainant's long history, its reputation and goodwill. The trade name and trademarks of Complainant are very well-known worldwide. Due to its major presence in the market, Respondent knows of the existence of the well-known trademarks of Complainant. The registration of the domain name incorporating the trademark MICHELIN was done with the knowledge of it and with the implied intent to take advantage to this mark (AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc. /Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485; Accor, SoLuxury HMC v. Jaewan Lee, WIPO Case No. D2009-0574; C.Crane Company Inc. v. Roobie Crossley, WIPO Case No. D2009-0815). Respondent's is not making any legitimate non-commercial or fair use of the domain names. The web page displayed sponsored links which provided pay-per-click revenue to Respondent. By using the domain name in this way, Respondent has intentionally attempted to attract Internet users to its web page for commercial gain in the form of clickthrough commissions (Accor, SoLuxury HMC v. Jaewan Lee, WIPO Case No. D2009-0574).
Besides, Respondent used the domain name for a website with pay-per-click links to companies in the same business as Complainant. The domain name was made to resolve a pay-per-click website displaying sponsored links to competitors of Complainant.
Respondent acquired the domain name with Complainant's trademark rights in mind for the purpose of attracting Internet users to its website for commercial gain (Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708 and EPSON Europe BV v. Costas Ioannou, WIPO Case No. D2009-0816).
Consequently, in view of the above, it is established that Respondent registered and used the domain name <pneumatiky-michelin.info> in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
Respondent did not reply to the case against it and is in default and no exceptional circumstances explaining the default have been put forward.
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, Complainant must prove that each of the three following elements are satisfied:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with Complainant. At the same time, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from Respondent's default.
The disputed domain name consists of a generic word “pneumatiky”, the term “michelin”, which is identical with Complainant's trademark, and with “info” which is a generic extension “information”.
The mere adjunction of the first and last generic words is not sufficient to distinguish the disputed domain name from Complainant's MICHELIN trademark. In many WIPO UDRP decisions, the Panel considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant's registered mark (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758 and Accor v. Lee Dong Youn, WIPO Case No. D2008-0705). Numerous WIPO UDRP decisions have established that adding generic words is insufficient to give any distinctiveness to the disputed domain name (Alstom v. FM Laughna, WIPO Case No. D2007-1736 and Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565).
Furthermore, this term is a common Slovakian word, meaning “tire”, the term “pneumatiky” even increases the risk of confusion, because it is directly related to the business in which the Complainant is engaged. The mere adjunction of the generic extension “.info” is irrelevant as it is well established that the generic top level domain name is not an element of distinctiveness that is taken into consideration when evaluating the identity or similarity of the Complainant's trademark and the disputed domain name. Previous decisions ruled that the gTLD “.info” has no distinguishing capacity and does not alter the value of the trademark represented in the domain name (Sanofi-aventis v. Brad Hedlund, WIPO Case No. D2007-1310). Accordingly, by registering said domain name, Respondent created a likelihood of confusion with Complainant's trademarks. It is likely that this domain name could mislead Internet users in thinking this is in some way associated with Complainant.
For the above cited reasons the Panel finds, that the disputed domain name is confusingly similar to Complainant's registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.
Respondent has put forward no evidence that it holds a right or legitimate interest in the disputed domain name.
In accordance with Complainant, the Panel finds, that Respondent is not affiliated with Complainant in any way, nor has Respondent been authorized by Complainant to register and use Complainant's trademarks or to seek registration of any domain name incorporating said marks. Furthermore, Respondent has no prior rights or legitimate interest in the domain name. Respondent never used the term “michelin” in any way before or after Complainant started its business. Respondent has not proved so far to be the holder of prior rights or to have any legitimate interests in the disputed domain name. The mark MICHELIN is wellknown and is widely used by Complainant (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022; Compagnie Générale des Etablissements Michelin – Michelin et Cie v. Petdorf Racing, WIPO Case No. D2005-0210). Complainant's rights in the MICHELIN trademark predate Respondent's registration by a considerable length of time.
Before filing this complaint, Complainant sent a cease-and-desist letter to Respondent informing him that the registration and use of the litigious domain name infringes its intellectual property rights. Respondent did not answer. If Respondent had legitimate interest in the domain name, he would have vigorously defended his rights by responding quickly to cease-and-desist letter of Complainant. Previous decisions stated that the absence of response to cease-and-desist letter may be an evidence of Respondent lacking legitimate interest (HEALD COLLEGE, LLC v. Versata Software, Inc., WIPO Case No. D2008-1875 and Global Business Network, Inc. v. Mr. James Pinda, WIPO Case No.D2006-0101).
Respondent is not known under the name “michelin” or any similar term. Since the disputed domain name is confusingly similar to Complainant's well-known trademark, Respondent cannot reasonably pretend it was intending to develop a legitimate activity. Moreover, the term “michelin” has no meaning whatsoever in Slovakian which is the language of the Respondent, according to an online dictionary, or in any other language. Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services. The only use which Respondent appears to have made of the domain name has been for a web page displaying information about Michelin and sponsored links and advertisements for online tire resellers which Michelin has not authorized and does not support.
For above cited reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.
Under paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include inter alia paragraphs 4(b)(ii), (iii) and (iv):
(ii) the respondent 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 it has engaged in a pattern of such conduct; or
(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 by creating a likelihood of confusion with the complainant's mark as to source, sponsorship, affiliation, or endorsement of its website or of a product on that website.
Complainant has submitted evidence, unchallenged by Respondent, that it is obvious that Respondent knew or must have known Complainant's trademark MICHELIN at the time he registered the disputed domain name. Complainant's trademark is a well-known trademark throughout the world and in Slovakia. Due to the fact that the domain name directs Internet users to a web page relating to Complainant's business and history, Respondent cannot have ignored Complainant's international reputation at the time of registration of the domain name. Disputed domain name used by Respondent suggests that he is aware of Complainant and its MICHELIN marks and that Respondent's use of the disputed domain name will cause consumers to believe that <pneumatiky-michelin.info> domain name is affiliated with or owned by Michelin.
The Panel further finds that by using Complainant's trademark to draw Internet users to a site offering what appears to competing or at least related goods, Respondent is attempting to divert customers from Complainant and thus to disrupt Complainant's business. Such conduct has been found to signal bad faith in other cases such as Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658. Respondent has offered no satisfactory alternative explanation for its conduct and the Panel finds that such disruption was and still is the primary purpose behind Respondent's registration of the disputed domain name.
Respondent's use of the disputed domain name further indicates an intentional attempt to attract, for commercial gain, Internet users to the linked site by creating a likelihood of confusion with Complainant's MICHELIN mark as to source, sponsorship, affiliation, or endorsement. Taking into account the fame of Complainant's mark and its widespread use, Internet users encountering the disputed domain name are likely to be misled into believing that they have found a website legitimately connected to Complainant. Respondent's use of the Michelin logo on the website serves only to confirm that misperception on the part of visitors to the site, who are already familiar with Complainant's famous Michelin logo for online goods.
For the above cited reasons the Panel finds, that the disputed domain was registered and used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
Complainant has requested that the disputed domain name be cancelled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pneumatiky-michelin.info> be cancelled.
Ladislav Jakl
Sole Panelist
Dated: January 11, 2010