Compagnie Générale des Etablissements Michelin v. Cameron David Jackson
Case No. D2015-1671
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Cameron David Jackson of Kingston, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2015. On September 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 21, 2015, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2015.
The Center appointed Michelle Brownlee as the sole panelist in this matter on November 17, 2015. 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 owns numerous registrations for the MICHELIN trademark around the world, including Australian registration 258104, registered on May 1, 1972, for tires in International Class 12, Australian Registration 847441, registered on August 23, 2000, for goods and services in classes 9, 16, 37 and 41, and International Registration No. 1245891, registered on December 10, 2014 for services in classes 35, 36, 39, 40, 41, 44 and 45.
The Domain Name was created on January 5, 2015.
5. Parties’ Contentions
The Complainant is a leading tire company which manufactures and markets tires for every type of vehicle, including airplanes, automobiles, bicycles, motorcycles, earthmovers, farm equipment and trucks. The Complainant also offers electronic mobility support services on its website, “www.viamichelin.com” and publishes travel guides, hotel and restaurant guides, maps, and road atlases. The Complainant is present in more than 170 countries, including Australia, and has more than 112,000 employees and operates 68 production plants in 17 different countries. The Complainant established an affiliated company in Australia in 1997. Prior to that time, the Complainant’s MICHELIN branded tires were imported by local distributors. The Complainant’s Michelin tires have been present in the Australian market since the 1940s.
The Complainant’s services include club services, such as the Michelin Athletic Club, which includes bar and catering and conferencing facilities. Further, the Complainant announced in a press release in December, 2014 that the Michelin guide digital would soon be relaunched as “Club MICHELIN.”
On April 14, 2015, the Complainant sent a cease-and-desist letter to the Respondent via registered mail and email, requesting that the Respondent transfer the Domain Name to the Complainant. The Respondent replied that he would transfer the Domain Name for 200 EUR to cover the costs of phone calls to France, registration fees and his time. The Complainant respondent that the Respondent should transfer the Domain Name free of charge. The Respondent did not reply.
The Complainant contends that the Domain Name is identical or confusingly similar to its MICHELIN trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith. The Domain Name resolves to the default parking page of the Internet service provider, and does not appear to be actively used by the Respondent. The Complainant argues that the MICHELIN mark is so well-known that the Respondent must have registered the Domain Name in bad faith. The Complainant submits that the Respondent’s offer to sell the Domain Name for 200 EUR is evidence of bad faith because it is in excess of the Respondent’s out of pocket expenses in registering the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the MICHELIN trademark. The Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s mark.
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services; that the Respondent is commonly known by the Domain Name; that the Respondent is making a legitimate noncommercial or fair use of the Domain Name; or in any other way refuted the Complainant’s prima facie case.
The Complainant has presented evidence, which was not refuted by the Respondent, that the Domain Name resolves to a parking page provided by the Internet service provider’s website, and is not actively being used by the Respondent. Further, after the Complainant contacted the Respondent, the Respondent offered to sell the Domain Name for 200 EUR. The Panel finds that this activity cannot under the circumstances be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent does not have any rights to or legitimate interests in respect of the Domain Name.
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
“(i) circumstances indicating that the respondent has registered or acquired the domain name at issue primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(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 the respondent 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 web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.”
The Panel finds that the Complainant has established bad faith registration and use under paragraph 4(b)(i) of the Policy. The Respondent registered the Domain Name, which incorporated the Complainant’s famous MICHELIN trademark. When the Complainant contacted the Respondent, the Respondent did not offer any explanation for his registration of the Domain Name, and offered to sell the Domain Name to the Complainant for 200 EUR. The Complainant refused the offer and stated that the fee was higher than the registration fees for the Domain Name and suggested that any losses to the Respondent associated with transfer of the Domain Name would be minimal because the Domain Name was not in use. The Respondent did not respond to the Complainant’s demand, did not contest that the fee was higher than the registration fees for the Domain Name, and did not respond to the Complaint or otherwise offer any explanation of why he registered the Domain Name. Therefore, based on the evidence submitted by the Complainant, the Panel finds that the Respondent’s only purpose in registering the Domain Name was to attempt to sell it to the Complainant for consideration greater than the Respondent’s out-of-pocket costs related to the Domain Name.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Date: November 30, 2015