The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Transure Enterprise Ltd., Host Master of Tortola, Virgin Islands (British), United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <michelinalpina4.com> (the “Disputed Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2013. On February 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 25, 2013, the Registrar transmitted by email to the Center its verification response disclosing the underlying 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 February 25, 2013 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 March 1, 2013.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2013.
The Center appointed Tan Tee Jim, S.C. as the sole panelist in this matter on April 15, 2013. 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 French multinational company which operates worldwide, having marketing operations in more than 170 countries, and having about 115,000 employees worldwide as of December 31, 2011. The Complainant owns numerous registrations of the trade mark MICHELIN (the “MICHELIN trade mark”) across the world, including Australia, where the Respondent is located:
- MICHELIN, International Trade mark No. 348615, registered on July 24, 1968 duly renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20.
- MICHELIN, International Trade mark No. 816915, registered on August 27, 2003 and covering services in classes 35, 37, 39 and 42.
- MICHELIN Australian Trade mark No. 258104 registered on May 1, 1972, duly renewed any covering goods in class 12.
In addition, the Complainant operates the domain name <michelin.com>, which reflects its registered trade marks.
The MICHELIN trade mark is protected in connection with, inter alia, the automobile and tire manufacturing industries, as well as in connection with hotel and restaurant guides and maps publications. It enjoys a worldwide reputation.
In particular, the Complainant is and has been established in Australia through Michelin Pty Ltd, having been established in October 1996 to manage and develop the markets of Australia, New Zealand and some of the Pacific Islands like New Caledonia, Fiji, Samoa and Tahiti. Prior to establishing Michelin Pty Ltd in Australia, the MICHELIN brand had established a presence in Australia for the last 50 years through importation of its products by sales distributors.
The MICHELIN trade mark has been recognized as “well-known” or famous in several UDRP decisions under the Policy (see, for example, the following: Compagnie Générale des Etablissements Michelin (Michelin) v. Rosa Chen, WIPO Case No. D2011-1336; and Compagnie Générale des Etablissements Michelin v Milan Kovac / Privacy--Protect.org, WIPO Case No. D2012-0634).
The Complainant became aware of the Respondent’s registration of the Disputed Domain Name, which resolves to a parking page displaying sponsored links related to tires. As the Respondent is an anonymous service which is used to not reply, the Complainant did not send a cease-and-desist letter to the Respondent.
The disputed domain name was registered on December 14, 2012.
The Complainant’s contentions may be summarized as follows:
(1) The Disputed Domain Name is identical or confusingly similar to the MICHELIN trade mark in which the Complainant has rights, for the following reasons:
(a) The Disputed Domain Name reproduces the MICHELIN trade mark in its entirety, with the mere addition of the generic term “alpin” and the term “a4”, and the addition of such generic terms does not dispel any likelihood of confusion;
(b) The term “Alpin A4” (the “Alpin A4 Mark”) refers to a kind of tires which are sold by the Complainant, and the adjunction of the term “alpina4” in the Disputed Domain Name is likely to mislead consumers who might think that it is an official website run by the Complainant;
(c) The Disputed Domain Name reproduces the MICHELIN trade mark in its entirety, which previous UDRP panels have considered to be “well-known”. The addition of generic terms to the “well-known” MICHELIN trade mark does not heighten the risk of confusion between the MICHELIN trade mark and the Disputed Domain Name; and
(d) The gTLD “.com” is not to be taken into consideration when examining the identity or similarity between the MICHELIN trade mark and the Disputed Domain Name, and the mere adjunction of a gTLD such as “.com” is insufficient to avoid a finding of confusing similarity.
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, for the following reasons:
(a) The Respondent is not affiliated with the Complainant in any way, nor has the Respondent been authorised by the Complainant to use and register the Complainant’s Mark, or to seek registration of any domain name(s) incorporating the Complainant’s Mark;
(b) The registrations of the MICHELIN trade mark preceded the Respondent’s registration of the Disputed Domain Name;
(c) The Disputed Domain Name is so identical to the MICHELIN trade mark that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the Disputed Domain Name;
(d) The Respondent is not commonly known by the name “Michelin”;
(e) The Respondent has not demonstrated use of, or preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services;
(f) The Respondent registered the Disputed Domain Name with a privacy shield service to hide his identity and prevent the Complainant from contacting him, displaying the fact that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(g) The term “michelin” has no meaning in the English language – the language of the registration agreement, and of the official language of the country in which the Respondent is located.
(3) The Disputed Domain Name was registered and is being used in bad faith, for the following reasons:
(a) Due to the MICHELIN trade mark being “well-known” throughout the world, the Respondent could not have been unaware of the MICHELIN trade mark when the Respondent registered the Disputed Domain Name;
(b) As a “well-known” mark, bad faith may be inferred in the registration of a domain name which consists of the Complainant’s Mark;
(c) The reproduction of the Complainant’s Mark, combined with the term “alpina4” proves that the Respondent was aware of the existence of the Complainant’s Mark. This is especially so since the Complainant is well established in Australia, where the Respondent is located. As such, it is impossible that the Respondent did not have the MICHELIN trade mark in mind while registering the Disputed Domain Name;
(d) In any event, a simple trade mark search or a simple search on the Internet through any search engine at the time of the registration of the Disputed Domain Name would have revealed the registrations of the Complainant’s Mark. Taking into account the age of the Internet, the advancement of technology, and the Complainant and the Complainant’s Mark’s worldwide reputation, it is impossible that the Respondent was unaware of the existence of the Complainant and the MICHELIN trade mark at the time of the registration of the Disputed Domain Name;
(e) The use of the Disputed Domain Name to direct or divert Internet users to a website displaying pay-per-click links which are likely to generate revenue for the Respondent evidences bad faith;
(f) The adjunction of the term “alpina4” was overtly chosen by the Respondent in order to “bait” Internet users to visit its website. A clear inference may be drawn from the Respondent’s operations that he is trying to benefit from the fame of the Complainant’s Mark;
(g) The use of the Disputed Domain Name was not authorised by the Complainant;
(h) The use of the Disputed Domain Name which is confusingly similar to the MICHELIN trade mark is likely to have resulted in many Internet users attempting to visit the Complainant’s website, to have visited the website set up by the Respondent instead; and
(i) It is likely that the Respondent registered the Disputed Domain Name to prevent the Complainant from reflecting the MICHELIN trade mark in the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must prove each of the following three elements set out in paragraph 4(a) of the Policy:
(1) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant bears the burden of proving these elements.
Paragraph 14(a) of the Rules provides that if the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint.
It is clear to the Panel that the Disputed Domain Name is identical or confusingly similar to the MICHELIN trade mark and other trade marks in which the Complainant has rights.
The Panel notes that the first element of the UDRP serves essentially as a standing requirement, typically involving a comparison between the trade mark and the disputed domain name itself to determine likelihood of Internet user confusion (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) at paragraph 1.2).
The Complainant has provided evidence of its trade mark registrations for the MICHELIN trade mark in several countries, including Australia, since as early as 1968. The Complainant has also provided evidence of recognition of the MICHELIN trade mark as well as the goodwill and reputation which the MICHELIN trade mark enjoys.
In addition, the Complainant has provided evidence of the use of the Alpin A4 Mark in respect of a type of automobile tire that is being sold by the Complainant. Although no evidence has been submitted by the Complainant to show that the Alpin A4 Mark is a registered trade mark, the Panel is satisfied that the Complainant has rights in the Alpin A4 Mark by virtue of its use in respect of automobile tires that the Complainant markets and sells.
On the basis of the evidence, the Panel is satisfied that the MICHELIN trade mark and the Alpin A4 Mark are distinctive of the Complainant’s goods and services, and that the Complainant has rights in the said marks.
Further, the Panel is cognizant of the several UDRP decisions which have considered the MICHELIN trade mark to be “well-known” (see, for example, the following: Compagnie Générale des Etablissements Michelin (Michelin) v. Vyacheslav Nechaev, WIPO Case No. D2012-0384; and Compagnie Générale des Etablissements Michelin v Milan Kovac / Privacy--Protect.org, WIPO Case No. D2012-0634). In the premises, and on the basis of the evidence submitted by the Complainant, the Panel is likewise satisfied that the MICHELIN trade mark is a “well-known” mark.
The Disputed Domain Name incorporates both the MICHELIN trade mark and the Alpin A4 Mark in their entirety such that it is likely to mislead the public and Internet users to believe, and to act on the belief, that the Disputed Domain Name belongs to the Complainant, or is in some way associated with the Complainant.
Even if the Panel is wrong in its conclusion that the Complainant has rights in the Alpin A4 Mark, the fact that the Disputed Domain Name incorporates the MICHELIN trade mark in its entirety is sufficient to satisfy the requirement that the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights (Compagnie Générale des Etablissements Michelin (Michelin) v. Vyacheslav Nechaev, WIPO Case No. D2012-0384). In particular, in the UDRP decision of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel found that “when a domain name incorporates a MICHELIN trade mark in its entirety, it is confusingly similar to that mark despite the addition of other words”.
The Panel is also of the view that the likelihood of confusion is unlikely to be dispelled by the use of the extension “.com”. The mere adjunction of a gTLD such as “.com” is irrelevant and does not ordinarily distinguish the MICHELIN trade mark and/or the Alpin A4 Mark from the Disputed Domain Name for the purposes of determining the identity or similarity under the Policy (Titoni AG v. Runxin Wang, WIPO Case No. D2008-0820).
For the abovementioned reasons, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the MICHELIN trade mark and/or the Alpin A4 Mark, both marks in which the Complainant has rights.
The Complainant contends that the term “alpin” is a “generic term”, and that the addition of the generic term “alpin” and the term “a4” to the MICHELIN trade mark, a “well known” mark, does not heighten the risk of confusion between the MICHELIN trade mark and the Disputed Domain Name. In support, the Complainant has cited and relied on two (2) UDRP decisions, namely:
(1) Merck Sharp & Dohme Corp. v. GlobalCom, Henry Bloom, WIPO Case No. D2011-0700 (the “Merck Sharp Decision”); and
(2) Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S.A. v. Eijiobara Obara, WIPO Case No. D2102-0047 (the “Michelin Decision”).
In the Merck Sharp Decision, the term that was added to the MICHELIN trade mark was the very word “generic”. The panel in that decision found, and rightly so, that the term was generic, and that the addition of such a generic term has little, if any, effect on the determination of legal identity between the disputed domain name and the complainant’s mark.
In the Michelin Decision, the various terms that were added to the MICHELIN trade mark included the terms “tires”, “dealers”, “hydroedge” and “ltx”. The panel in that decision found that all the terms that were added to the complainant’s marks in the disputed domain names were “generic and descriptive”.
In the Panel’s view, it is unfortunate that the panel in the Michelin Decision decided that all the additional terms in the disputed domain names were considered “generic and descriptive”. While the terms “tires” and “dealers” were rightly considered to be generic terms, the terms “hydroedge” and “ltx” are not common English words, and should not have been considered to be generic. In particular, while the term “hydroedge” is made out of 2 generic or descriptive terms “hydro” and “edge”, the combination of the terms is not a common English word, and should not have been found to be descriptive or generic (see Turkcell Iletisim Hizmetleri A.S. v. Onur, WIPO Case No. DNL2010-0047, where the panel found that while each of the terms “Turk” and “Cell” were descriptive terms, the combination of the two to form “Turkcell” in the complainant’s trade mark was not a descriptive or generic term).
In the present case, the Panel does not agree with the Complainant’s contention that the term “alpin” is generic. Indeed, “alpin” is not a common word in the English language, and may not be found in the Oxford English Dictionary. It is a fancy word, and should remain as such.
Notwithstanding this, however, the Panel reiterates that for the earlier mentioned reasons, it finds that the Disputed Domain Name is identical or confusingly similar to the MICHELIN trade mark and/or the Alpin A4 Mark, both marks in which the Complainant has rights.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name. Accordingly, the Respondent may demonstrate any of the following:
(1) the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or
(2) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(3) the Respondent is making a legitimate, non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
As the Respondent has not filed a response, the Panel does not have before it any evidence of the circumstances specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give the Respondent a right to or a legitimate interest in the Disputed Domain Name.
Numerous cases under the Policy have adopted the approach that if a respondent fails to respond and dispute the complainant’s claims, it may be inferred that the claims are true and that the respondent knows that its website bearing the offending domain name is misleading (see, for example, Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441). In Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, the panel inferred the lack of response as “indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”.
In the present case, the Panel would make the same inferences.
There is also no evidence that the Respondent was or was commonly known by the Disputed Domain Name prior to its registration, or that it has any registered trade marks that are identical with or similar to the Disputed Domain Name. On the contrary, the Panel accepts, as was submitted by the Complainant, that the MICHELIN trade mark is a “well-known” mark such that it is impossible for the Respondent not to have known that the Complainant owns the rights to the Complainant’s Mark” when it registered the Disputed Domain Name.
In addition, the Complainant has also stated that the Respondent is not in any way affiliated with the Complainant, nor has the Respondent been authorised by the Complainant to use and register the Disputed Domain Name. In the absence of such license or authorisation provided by the Complainant, it is clear that no bona fide or legitimate use of the Disputed Domain Name can reasonably be claimed by the Respondent (LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
It is apparent that the Disputed Domain Name is used to misleadingly divert Internet users to the Respondent’s website bearing the Disputed Domain Name for the Respondent’s commercial gain by creating a likelihood of confusion with the Complainant’s Mark.
For the abovementioned reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and finds for the Complainant in respect of paragraph 4(a)(ii) of the Policy.
In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Disputed Domain Name has been registered and is being used in bad faith. Paragraph 4(b) sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Disputed Domain Name in bad faith, namely:
(1) Circumstances indicating that the Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or
(2) Circumstances showing that the Respondent has registered the Disputed Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(3) Circumstances showing that the Respondent has registered the Disputed Domain Name primarily for the purposes of disrupting the business of a competitor; or
(4) The Respondent has, by using the Disputed Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the MICHELIN trade markas to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
By failing to file a Response, the Respondent did not take the opportunity to invoke any circumstances which could demonstrate that it did not register and use the Disputed Domain Name in bad faith and to assist the Panel in this regard. This in itself suggests that the Disputed Domain Name was registered and is being used in bad faith by the Respondent. If the Respondent legitimately registered and/or is using the Disputed Domain Name in good faith, there is no reason for it to fail to submit a Response and challenge the Complainant’s contentions.
Numerous cases decided under the Policy indicate that a finding of bad faith may be made where the respondent “knew or should have known” of the registration and use of the complainant’s trade mark(s) prior to registering the domain name (see, for example, Turkcell Iletisim Hizmetleri A.S. v. Ozgur Karadag, WIPO Case No. D2011-2038).
In the present case, the Complainant has registrations of the MICHELIN trade mark in many countries around the world, including Australia, which pre-date the Respondent’s registration of the Disputed Domain Name on December 14, 2012.
The Complainant has also provided documentary evidence and extracts from its website “www.michelin.com.au” showing the strong presence that the Complainant and the MICHELIN trade mark has in Australia, where the Respondent (or at least its presumed privacy service, Above.com Domain Privacy) is located. Furthermore, a simple Internet search by the Respondent would have revealed the Complainant’s registration and the use of the MICHELIN trade mark in Australia and around the world. Such search could have been carried out from Australia, the Virgin Islands (Respondent Transure Enterprise Ltd., Host Master location) or elsewhere around the world. Even if the Respondent did not have actual knowledge of the Complainant’s registration and the use of the MICHELIN trade mark, it would have constructive knowledge of the same.
In these circumstances, doubt can also be cast on the honesty or legitimacy of the Respondent’s choice of the Disputed Domain Name, especially as it bears or contains the MICHELIN trade mark and the Alpin A4 Mark, words which have no relation to the Respondent. It may therefore be inferred from the Respondent’s choice of the Disputed Domain Name that the intent was or must have been to create a false impression of an association with the Complainant and/or its website as well as its products and services.
This inference is enhanced by the Respondent’s use of the Disputed Domain Name to direct Internet users to a website displaying pay-per-click links, which are likely to disrupt the Complainant’s business or to take undue advantage of the MICHELIN trade mark to generate profits and revenue for the Respondent.
On the whole, the Panel is satisfied that the Disputed Domain Name was registered and is being used in bad faith. It therefore finds for the Complainant in relation to paragraph 4(a)(iii) of the Policy.
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 <michelinalpina4.com> be transferred to the Complainant.
Tan Tee Jim, S.C.
Sole Panelist
Date: April 26, 2013