WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin (Michelin) v. PrivacyProtect.org , Ma Ying Jo

Case No. D2012-0915

1. The Parties

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

Respondents are PrivacyProtect.org of Nobby Beach, Australia and Ma Ying Jo of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <iamichelin.com> is registered with RegisterMatrix.com Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2012. On April 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2012, 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 proceedings commenced on May 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 23, 2012.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 5, 2012. 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

Complainant is the owner of registrations for the word trademarks MICHELIN. Complainant in particular refers to registration of the term MICHELIN on the register of IP Australia, registration number 879562, dated June 4, 2002, in international classes (ICs) 5, 6, 7, 8, 9, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, and 42, covering, inter alia, machines for mounting and dismounting tires, and travel services; international registration under the Madrid System, registration number 348615, dated July 24, 1968, designating 47 countries, in ICs 1, 6, 7, 8, 9,12,16, 17 and 20, covering, inter alia, articles manufactured from natural and synthetic rubber; and maps, guides and all works or publications, and; international registration under the Madrid System, registration number 771031, dated June 11, 2001, designating more than 50 countries, including China, in ICs 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42, covering, inter alia, tourism and hotel reservation services.

Complainant is a multinational enterprise producing and distributing, inter alia, tires for automotive vehicles and hotel/restaurant guides and maps, under the MICHELIN trademark. Complainant maintains an active commercial Internet website at “www.michelin.com”. The aforesaid website reflects the global presence of Complainant in the automotive tire and travel services markets. Complainant has more than 5500 employees in China.

In 2001, Complainant created an affiliate company “ViaMichelin” to promote its travel and tourism services on digital media, and established an active commercial website at “www.viamichelin.com”. Services provided under the ViaMichelin name are also available on mobile handsets and personal navigation devices. According to Complainant, its “www.viamichelin.com” website attracts more than 400 million visits annually.

Complainant has submitted limited direct evidence in this proceeding that would establish a well-known character for its MICHELIN trademark. It has, instead, relied on several previous panel decisions under the UDRP to support a claim that this mark is well-known. At least one of these decisions, Compagnie Generale des Etablissements Michelin, Michelin et Cie, Michelin Recherche et Technique S.A. v. Alvaro Collazo, WIPO Case No. D2004-1095, refers to substantial evidentiary support in reaching the conclusion that the aforesaid trademark is well-known.

According to the registrar’s verification, Respondent is the registrant of the disputed domain name. According to a DomainTools WhoIs report furnished by Complainant, the record of registration of the disputed domain name was created on August 1, 2011.

The disputed domain name has been used to direct Internet users to a link farm webpage that includes links for various automotive, travel and tourism goods and service providers, including providers of goods and services competitive with those of Complainant. The specific webpage links differ depend upon the country in which the disputed domain name is entered into a browser, but the general results are similar.

The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the trademark MICHELIN as evidenced by registrations in numerous countries, including Australia and China, where Respondent is located. Complainant argues that it has long used the aforesaid trademark in commerce, and that its MICHELIN trademark is well-known.

Complainant contends that the disputed domain name is confusingly similar to its trademark and company affiliate name. Complainant argues that the disputed domain name merely adds the letters “ia” to its trademark in the disputed domain name, which is a minor typographical variation of its trademark, as well as the company name of its affiliate. Complainant argues that the close typographical variation of its trademark and affiliate name does not significantly affect the appearance or pronunciation of the disputed domain name, and is intended to take advantage of Internet user misspellings to redirect them to Respondent’s website for commercial gain (i.e., the practice known as “typosquatting”).

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because: (1) Respondent is not in any way affiliated with Complainant or its trademark; (2) Respondent has no prior rights or legitimate interests in the disputed domain name; (3) Respondent has not been commonly known by Complainant’s trademark or the disputed domain name, nor has it been licensed to use it; (4) Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; pay-per-click parking pages do not constitute bona fide offerings of goods or services, and; (5) typosquatting does not constitute legitimate use of the trademark.

Complainant contends that Respondent registered the disputed domain name in bad faith because: (1) Respondent must have been aware of Complainant’s well-known trademark when it registered the disputed domain name; (2) the fact of registering a third party’s well-known trademark evidences bad faith; (3) a quick trademark search would have revealed the existence of Complainant’s trademark; (4) a Google search of “viamichelin” would have demonstrated that all first results relate to Complainant’s products or news; (5) typosquatting in relation to a well-known trademark evidences bad faith, and; (6) under the circumstances of the case, use of a privacy service evidences bad faith. Complainant argues that Respondent is using the disputed domain names in bad faith because: (1) Respondent is using the disputed domain name which is confusingly similar to its trademark in order to divert web traffic for commercial gain using the goodwill built up by Complainant; (2) Complainant’s trademark is well-known and Respondent must have been aware of it when it registered the disputed domain name; (3) diversion of Internet users to pay-per-click links represents commercial use of the disputed domain name and; (4) many Internet users attempting to visit Complainant’s website have no doubt ended up on the webpage set up by Respondent.

Complainant requests the Panel to direct the Registrar to cancel the disputed domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its records of registration. Respondent did not reply to e-mail notification. The express courier delivery service engaged by the Center appears to have delivered the Complaint to Respondent’s physical address in Australia, but was apparently unable to complete physical delivery in China. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) 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.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided substantial evidence of rights in the trademark MICHELIN including registration in various countries, among them Australia and China. Complainant has provided substantial evidence of use of the trademark in commerce. Respondent has not challenged the validity of Complainant’s trademark registrations, or its rights in the trademark. The Panel determines that Complainant has rights in the trademark MICHELIN in Australia and China, among other countries.

The disputed domain name <iamichelin.com> directly incorporates Complainant’s distinctive MICHELIN trademark and adds letters “ia”.¹ Respondent has provided no explanation or justification for use of the term MICHELIN in the disputed domain name, and the letters “ia” have no apparent independent meaning or usage in connection with that term. Because Complainant’s MICHELIN trademark is distinctive, entry of the disputed domain name into a browser returns results associated with Complainant and its competitors. The Panel concludes that the disputed domain name is confusingly similar to Complainant’s MICHELIN trademark.

Complainant indicates that it makes use of the term “via” as a prefix to its trademark in an active commercial website and for related digital business. Complainant has not argued that “viamichelin” constitutes a trademark independent of its MICHELIN trademark. As such, the Panel refrains from using this term as part of its analysis of confusing similarity. Nevertheless, the Panel recognizes that Respondent appears to be taking advantage of the substantial usage of the term “via” by Complainant in connection with its distinctive trademark.

The Panel determines that Complainant has rights in the trademark MICHELIN and that the disputed domain name is confusingly similar to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))

Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Respondent is not in any way affiliated with Complainant or its trademark; (2) Respondent has no prior rights or legitimate interests in the disputed domain name; (3) Respondent has not been commonly known by Complainant’s trademark or the disputed domain name, nor has it been licensed to use it; (4) Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; pay-per-click parking pages do not constitute bona fide offerings of goods or services, and; (5) typosquatting does not constitute legitimate use of the trademark. Complainant has made a prima facie demonstration that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent has not provided any explanation or justification for registration and use of the disputed domain name, or any basis on which the Panel might find that Respondent has rights or legitimate interests in the disputed domain name.

Respondent’s only use of the disputed domain name on the record of this proceeding is in connection with establishment and maintenance of a “link farm” webpage that offers to direct Internet users to providers of goods and services that include various direct competitors of Complainant in the market for tourism, travel and automotive products and services. Respondent is using Complainant’s distinctive trademark to direct Internet users to goods and services of competitors of Complainant. This is not a fair commercial use of Complainant’s trademark, and it does not constitute a bona fide offering of goods or services. In the absence of other evidence that might establish rights or legitimate interests, Respondent has failed to rebut Complainant’s prima facie demonstration of lack of rights or legitimate interests.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Among those circumstances are: (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”

Respondent registered the disputed domain name incorporating Complainant’s distinctive trademark, and has used that disputed domain name solely for the purpose of directing Internet users to a link farm webpage offering goods and services directly competitive with those of Complainant. It is reasonable to infer that Respondent is earning pay-per-click revenues from its link farm webpage. It appears to the Panel that Respondent is using the disputed domain name to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website.

The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Per the request of Complainant, the Panel will direct the Registrar to cancel the disputed domain name.

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 name, <iamichelin.com>, be cancelled as requested.

Frederick M. Abbott
Sole Panelist
Dated: June 9, 2012

¹ Under circumstances such as those presented in this case, inclusion of the generic top-level domain identifier “.com” does not affect analysis of substantial similarity within the meaning of the Policy.