The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., United Kingdom / Nadine Elghool, United Kingdom and Registration Private, Domains By Proxy, LLC, United Kingdom / Nadine Elghool, United Kingdom.
The disputed domain names are:
- <michelininsider.com> and <themichelininsider.com> (the “First Disputed Domain Names”), registered with GoDaddy.com, LLC (the “First Registrar”); and
- <michelininsider.net> and <themichelininsider.net> (the “Second Disputed Domain Names”), registered with NameCheap, Inc. (the “Second Registrar”),
collectively, the “Disputed Domain Names”.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2020. On July 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 30, 2020, the Second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Second Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. On July 31, 2020, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the First Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center received two email communications from the Respondent on August 2, 2020 and August 3, 2020. The Center sent an email communication to the Complainant on August 5, 2020 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 10, 2020.
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 August 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2020. The Respondent submitted its response on August 28, 2020.
The Center appointed John Swinson as the sole panelist in this matter on September 15, 2020. 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 Compagnie Générale des Etablissements Michelin, a company incorporated in France. According to the Complaint, the Complainant is a leading international tyre company. The Complainant has more than 114,000 employees and a presence in 171 countries. The Complainant has developed a significant reputation in the tyre industry and won numerous awards. In 1920, the Complainant launched the Michelin Guide which rates dining establishments across various continents and has sold more than 30 million copies worldwide.
The Complainant is the owner of a number of registered trade marks for MICHELIN, including number 004836359, registered in the European Union on January 4, 2006 (the “Trade Mark”).
The Respondent is Nadine Elghool, an individual of the United Kingdom.
The Disputed Domain Names were registered between April 7, 2020, and June 20, 2020.
The First Disputed Domain Names resolve to a website which provides information on the fine dining industry. The Second Disputed Domain Names are inactive and, according to the Respondent, were locked due to the current proceedings before she could redirect users to the website active at the First Disputed Domain Names.
The Complainant sent the Respondent a cease and desist letter on June 16, 2020. The Respondent replied to this letter on June 20, 2020, refuting the Respondent’s assertions.
The Disputed Domain Names reproduce the Trade Mark in its entirety. Panels in previous WIPO decisions have considered the Trade Mark to be “well known” or “famous” and the incorporation of a well-known trade mark in its entirety may be sufficient to establish that a disputed domain name is identical or confusingly similar to that trade mark. The addition of the term “insider” in all of the Disputed Domain Names and the term “the” in two of the Disputed Domain Names is not sufficient to differentiate the Disputed Domain Names from the Trade Mark.
The Respondent has no rights or legitimate interests in the Disputed Domain Names for the following reasons:
- The Trade Mark was registered years before the Disputed Domain Names.
- The Respondent is not affiliated with the Complainant and has not received authorisation from the Complainant to use the Trade Mark.
- The Trade Mark is well-known / famous and is not a keyword.
- The Respondent’s name is not “Michelin” and as such the Respondent cannot claim a legitimate right or interest in the Trade Mark as a person’s name.
- Two of the Disputed Domain Names resolve to a website that creates a false affiliation with the Complainant due to references to Michelin starred restaurants and therefore the Respondent has not made demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services.
- The addition of the term “insider” to the Trade Mark in the Disputed Domain Names suggests endorsement by the Complainant.
- The Respondent’s use of the Disputed Domain Names cannot be legitimate given its similarity to the Complainant’s use of the Trade Mark.
The Respondent’s primary motive in registering and using the Disputed Domain Names was to capitalise or otherwise take advantage of the Complainant’s rights in the Trade Mark.
It is inconceivable that the Respondent was unaware of the Complainant at the time the Disputed Domain Names were registered. Panels in previous UDRP decisions have acknowledged the Complainant’s global reputation. In addition, the Respondent’s LinkedIn page indicates that she is currently employed at a Michelin starred restaurant and the Respondent’s registration of the Second Disputed Domain Names occurred after the Respondent received a cease and desist letter from the Complainant. The Respondent’s reproduction of the Trade Mark in the Disputed Domain Names, and its association with the terms “insider” and “the” provides further confirmation that the Respondent was aware of the Complainant and its Trade Mark. The Respondent had a duty not to infringe intellectual property rights in registering the Disputed Domain Names and a simple trade mark search for MICHELIN would have revealed the existence of the Trade Mark.
The First Disputed Domain Names resolve to a website containing content related to the fine dining industry. This use is very close to that of the Michelin Guide, which informs consumers about the quality of restaurants. Given the Complainant has not authorised the Respondent’s use of the Trade Mark, this gives rise to the risk of confusion and diversion of Internet traffic to the Disputed Domain Names based on the reputation of the Complainant. Further, the content on the First Disputed Domain Names may tarnish the reputation of the Trade Mark. The Respondent’s use of three of the Disputed Domain Names for email may also mean that there is a risk of the Respondent engaging in a phishing scheme.
Identity and confusing similarity must be assessed on a case by case basis. The Respondent does not claim to be affiliated with the Complainant.
The Respondent is entitled to register a domain name which contains a name that is not her own (i.e., Michelin). The Complainant cannot claim a monopoly over the word “michelin”. The Disputed Domain Names are used in relation to an informational website which is not associated with the Complainant’s brand. The brand Apple does not view the domain name <appleinsider.com>, which is used in relation to their products, as creating a likelihood of confusion or infringing on their rights. The same reasoning ought to apply in relation to the Complainant and the Disputed Domain Names. Further, the Disputed Domain Names do not appear in a Google search for the term “michelin”, meaning there is no likelihood of confusion.
The Complainant has provided no evidence that the Respondent is tarnishing its reputation and the Respondent does not intend to sell the Disputed Domain Names or target the Complainant’s consumers. In using the Disputed Domain Names to provide information about the fine dining industry, the Respondent is providing a bona fide service that is unrelated to selling tyres or reviewing restaurants and does not focus on Michelin starred establishments. The Respondent has obtained qualifications and has experience in workplaces related to the content displayed at the Disputed Domain Names and is not profiting from the Disputed Domain Names. Accordingly, the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names.
The Disputed Domain Names were not registered to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name and the Respondent has no intention of selling, renting, or transferring the Disputed Domain Names. The Respondent waited until after receiving notice of the dispute to purchase the Second Disputed Domain Names because she was waiting to receive her salary.
The Respondent is using the Disputed Domain Names to provide information on the fine dining industry, a use which is unrelated to the Respondent’s business. The Respondent is not the Complainant’s competitor and the Disputed Domain Names were not registered to disrupt the Complainant’s business or attract commercial gain by diverting traffic based on the Complainant’s reputation. The Respondent is not profiting from the Disputed Domain Names.
The Complainant’s claim regarding the use of three of the Disputed Domain Names for email is false. The only active email relating to the Disputed Domain Names is “info@michelininsider.com”. The Respondent does not intend to use the Disputed Domain Names for a phishing scheme.
The Respondent contends that the Complaint was lodged in bad faith and seeks a finding of Reverse Domain Name Hijacking against the Complainant.
The Respondent also requested that her address be redacted; the Panel notes that such address is not included in this Decision.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 have been registered and are being used in bad faith.
Consolidation
The Complaint relates to four domain names. Paragraph 3(c) of the Rules states that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
In this instance, the Respondent has confirmed that all of the Disputed Domain Names are owned by her. Further, all Disputed Domain Names relate to a trade mark owned by the Complainant. Accordingly, this Panel concludes that the consolidation of the multiple domain name disputes asserted by the Complainant against the Respondent is consistent with the Policy and Rules.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Marks.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
All of the Disputed Domain Names incorporate the Trade Mark with the addition of the term “insider” and two of the Disputed Domain Names also incorporate the term “the”.
The inclusion of the term “insider” and the term/article “the” does not dispel the confusing similarity to of the Disputed Domain Names to the Trade Mark. The Trade Mark is clearly recognisable in all of the Disputed Domain Names.
Prior decisions concerning the use of term “inside” (materially equivalent to “insider” here) in association with a trade mark reached a similar conclusion (see, e.g., Chanel, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd., Host Master, WIPO Case No. D2012-1065; Inter IKEA Systems B.V. v. Above.com Domain Privacy / Ni How, WIPO Case No. D2013-0387).
The Panel finds that the Disputed Domain Names are confusingly similar to the Trade Mark.
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Respondent did not present any evidence to suggest that she is commonly known by the Disputed Domain Names and, by her own admission, the Respondent is not associated with the Complainant and has not been authorized to use the Trade Mark.
The Respondent contended that she was entitled to register a domain name incorporating the Trade Mark because “Michelin” is merely an individual’s name and the Complainant does not enjoy a monopoly over the term. However, “Michelin” is not the Respondent’s name (so she cannot claim the safe harbor of being “commonly known by” it), and she has no prior rights or interests in respect of this name.
The Complainant has demonstrated that the Trade Mark is well known worldwide, including in the fine dining industry. The Respondent did not present any evidence to explain why she selected the term “michelin” for inclusion in the Disputed Domain Names which would not evince an intention to capitalize on the Complainant’s marks. Consequently, the only reasonable explanation for inclusion of “michelin” in the domain name of a website relating to the fine dining industry is that it was selected to attract Internet users to that website based on the Trade Mark’s reputation in respect of fine dining publications. Such use is not legitimate or bona fide, and does not establish that the Respondent had rights or legitimate interests in respect of the Disputed Domain Names.
The content at the Respondent’s active websites are an Internet publication or blog about fine dining. The Respondent writes content about fining dining in general, with articles about topics such as “who is to blame for poor service in a restaurant” and “COVID-19’s impact on the restaurant industry”. The articles are not about the Michelin restaurant guide and are not criticisms of the Michelin rating system, although some articles refer to Michelin starred establishments using this term (and also refer to Rosette establishments). The articles are posted anonymously, and the Respondent is not identified on the website; the legal and copyright notices on the website refer to “Michelin Insider” and not the Respondent.
Although the articles on the Respondent’s blog are coherent and appear to be original and express the Respondent’s opinion on matters relating to the restaurant industry, and although some articles relate to Michelin starred restaurants, this does not give the Respondent an entitlement to use the Complainant’s famous trade mark in the Disputed Domain Names. A number of well-known prior decisions (including Red Bull GmbH v. Maxwell Arnold, WIPO Case No. D2014-1589) have concluded:
“The right to express one’s views is not the same as the right to use another’s well-known trademark in a confusing manner (in a domain name) to identify one’s self as the source of those views.”
In short, it cannot be said that the Respondent’s use of the Trade Mark to attract or divert Internet users to her website based on the reputation of the Trade Mark is bona fide or legitimate.
The Complainant contended that the Respondent’s inclusion of the term “insider” in the Disputed Domain Names falsely suggests endorsement by the Complainant. It is difficult to state with precision what qualitative aspects of a term included in domain name along with a trade mark would automatically suggest sponsorship, endorsement or affiliation. Certain geographical terms (e.g., trademarkusa.com) would typically fall within this category by their nature, whereas certain critical terms (e.g., trademarksucks.com) prima facie suggest that there is no affiliation (The Royal Edinburgh Military Tattoo Limited v. Identity Protection Service, Identity Protect Limited / Martin Clegg, WM Holdings, WIPO Case No. D2016-2290).
The use of term “insider” in the Disputed Domain Names falls somewhere between these two ends of a continuum. However, when consideration is given to the significant overlap between the content on the Respondent’s website and the Trade Mark’s reputation in the fine dining industry, the term “insider” could most certainly be regarded as suggesting endorsement by or affiliation with the Complainant, when no such endorsement or affiliation exists.
The Respondent refers to the website at <appleinsider.com> as a similar domain name and website that has been in existence for a period of time to show that her website is legitimate, but the Panel does not find this argument persuasive. There may be an agreement between Apple Inc. and this publisher. Or Apple Inc. may be pleased that this website exists and reviews its products. Or Apple Inc. may be in the process of preparing legal proceedings. We do not know. The mere existence of this website does not create a precedent that assists the Respondent.
Findings by previous panels that a respondent took advantage of a trade mark’s reputation have typically involved an element of commercial gain on the part of the respondent (see, e.g., Bharti Airtel Limited v. Tushar Sarin / Rockerzz, WIPO Case No. DCO2015-0015; BASF SE v. Hong Fu Chen, Chen Hong Fu, WIPO Case No. D2017-2203; APM MONACO SAM v. Gregory Jackson, Cavages co.LTD, WIPO Case No. D2019-1330). There is no direct evidence that the Respondent in this case is benefiting financially from the website at the Disputed Domain Names, but that is not fatal to the Complainant’s case (Sodexo v. Takashi Yamaguchi, WIPO Case No. D2017-0280; Accor , SoLuxury HMC v. WL Web Development / Luke Ward, WIPO Case No. D2015-1073). Even so, the Respondent is publishing a blog at the website at the Disputed Domain Names, and the more Internet traffic that the blog receives, the more potentially valuable the blog. It would be open to the Respondent to sell the blog in the future or include advertising on the blog. Further, the blog may be collecting email addresses (the blog’s privacy policy is silent in this regard) which may also be of value to the Respondent.
For the reasons outlined above, irrespective of whether the Respondent’s website is presently noncommercial or not, the Respondent does not have rights or legitimate interests in the Disputed Domain Names.
In light of the above, the Complainant is successful on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
Paragraph 4(b) of the Policy provides four circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. However, this list is non-exclusive and merely illustrative, meaning that even where a complainant cannot demonstrate the literal or verbatim application of one of these scenarios, evidence demonstrating that a respondent seeks to abuse, take unfair advantage of or otherwise engage in behaviour detrimental to the complainant’s trade mark may also be sufficient (section 3.1 of the WIPO Overview 3.0).
The Complainant contended and the Panel accepts that the Trade Mark is well known internationally, including in the fine dining industry. Previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0).
Given the Respondent’s experience in the fine dining industry (apparently including working at a Michelin starred restaurant) it can reasonably be assumed that the Respondent was in fact aware of the Trade Mark prior to registering the Disputed Domain Names. As outlined above, in the Panel’s view, it is precisely because of the Trade Mark’s reputation in the fine dining industry that the Respondent incorporated the Trade Mark in the Disputed Domain Names. This constitutes registration in bad faith. There would be nothing preventing the Respondent from presenting her views in a blog using non-trademark-targeting terms such as “finedining” or “finedininginsider” in the domain names, as opposed to doing so using the Complainant’s Trade Mark.
The Complainant contended that there is a risk that the Respondent will use the Disputed Domain Names to engage in a phishing scheme or tarnish the reputation of the Complainant or the Trade Mark. There is no evidence to support either of these contentions.
However, as outlined above, the Panel considers that the Respondent’s inclusion of the Trade Mark in the Disputed Domain Names was based on the Trade Mark’s reputation in the fine dining industry, the same industry which is the focus of the Respondent’s website. Similarly, the Respondent’s addition of the term “insider” in Disputed Domain Names falsely suggests endorsement or affiliation with the Complainant. Accordingly, although there is no specific evidence whether the Respondent may have directly benefitted financially from the Disputed Domain Names, these attempts by the Respondent to attract or divert Internet users to her website represent bad faith use.
This conclusion applies to all of the Disputed Domain Names. While there is currently no active website at the Second Disputed Domain Names, the Respondent has stated that it was her intention to redirect the Second Disputed Domain Names to her website.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.
It is unnecessary for the Panel to consider this issue in view of its findings above.
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 <michelininsider.com>, <michelininsider.net>, <themichelininsider.com>, and <themichelininsider.net>, be transferred to the Complainant.
John Swinson
Sole Panelist
Date: September 28, 2020