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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Gйnйrale des Etablissements Michelin-Michelin & Cie. v. Tgifactory
Case No. D2000-1414
1. The Parties
The Complainant is COMPAGNIE GENERALE DES ETABLISSEMENTS MICHELIN - MICHELIN & Cie., a company incorporated under the laws of France, with principal place of business in France, 63040 Clermont-Ferrand Cedex 1.
According to the Whois database of Network Solutions, the Respondent is TGIFACTORY with address at Villarroel, 17 atic 2, E - 08011, Barcelona, Spain.
2. The Domain Name and the Registrar
The domain name at issue is "guiamichelin.com" (hereinafter the "Domain Name"). The registrar is Network Solutions, Inc. (hereinafter the "Registrar").
3. Procedural History
On October 18, 2000, the Complainant filed by email a complaint (hereinafter the "Complaint") with the WIPO Arbitration and Mediation Center (hereinafter the "Center"). The Center received a hard copy of the Complaint on October 19, 2000.
On November 3, 2000, the Center requested the Registrar to verify the Domain Name in dispute. The Registrar confirmed on November 9, 2000, that the Domain Name has been registered via the Registrar's registration services, that the current registrant is TGIFACTORY, that the Network Solutions' 5.0 Service Agreement is in effect and that the Domain Name registration is active status.
On November 29, 2000, the Center proceeded to verify whether the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "ICANN Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "WIPO Rules"), including the payment of the requisite fees. The Center concluded that the Complaint satisfies all of these formal requirements.
On the same date, the Center notified the Respondent that an administrative proceeding has been commenced against it as of November 29, 2000, and sent to Respondent a copy of the Complaint. The Center also set Respondent a time limit expiring on December 18, 2000, to file its Response.
On December 13, 2000, the attorneys of Respondent's administrative contact, Inlander Communications (hereinafter the "Administrative Contact"), sent a letter to the Center stating that the Administrative Contact acted as mere intermediary and, therefore, it should not be deemed a party in these proceedings. On December 19, 2000, the Center confirmed to the Administrative Contact that the administrative proceedings would continue against Respondent and that no further case-related communications would be sent to the Administrative Contact.
On December 24, 2000, the Center notified the Respondent that it had failed to meet the deadline to file a Response and was, therefore, in default.
On January 16, 2001, the Center informed the Parties that an administrative panel (the "Panel") has been appointed and transferred the file to the Panel.
The Panel finds it was properly constituted in compliance with the ICANN Rules and the WIPO Rules and the panelist issued a Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background
The Complainant is a French company whose trademark MICHELIN is protected by numerous national and international registrations in a large number of countries. Copies of the corresponding registration certificates filed by Complainant are attached to the Complaint as Annex III. One of Complainant's main activities, besides the manufacturing and marketing of tires, is the publication of tourist guides and maps in numerous countries and languages. In the Spanish language, Complainant's tourist guides are known as "guia Michelin".
The Respondent registered the Domain Name "guiamichelin.com" on December 27, 1999. The record does not contain any information on Respondent's activities. In its letter of December 13, 2000, the Administrative Contact stated that Respondent "does not exist as a legal entity and it seems that TGIFACTORY is just a fictitious name". The Administrative Contact further stated that it found out that it was one of its free-lance contractors who registered the Domain Name in the name of a non existing company.
5. Parties' Contentions
- that the Domain Name "guiamichelin.com" is confusingly similar to the Complainant's famous trademark MICHELIN because it consists of the mark MICHELIN and the word "guia", which is the Spanish equivalent of the English word "guide";
- that the combination of "guia" and "Michelin" in the domain name identifies in Spanish one of the Complainant's main products, namely tourist guides and maps;
- that the Complainant's trademark MICHELIN is famous all over the world and is protected by numerous international registrations claiming various products and services including tourist guides and maps, other printed matter, advertising, leisure and education services;
- that the Domain Name at issue is misleading for the public; according to the Complainant, its trademark is so well established that the term "guiamichelin" would be associated solely with Complainant's products and publications;
- that Complainant did not need to protect the combination "guia Michelin" with a trademark registration because in Spanish the word "guia" is the generic term for guide and, therefore, is not distinctive for tourist guides;
- that the Domain Name has been registered in bad faith in order to damage Complainant's interests and misappropriate its fame and prestige;
- that on several occasions, Complainant's representative, attempted to obtain from the owner transfer or cancellation of the Domain Name, without any reply (Complaint Annex V).
The Respondent did not file any Response to the Complaint.
6. Discussion and Findings
To have the disputed Domain Names transferred to it, Complainant must prove each of the following (Policy, paragraph 4(a)):
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the Respondent's domain name has been registered and is being used in bad faith.
Identity or Confusing Similarity
Complainant has shown that it owns numerous MICHELIN trademark registrations for products, including tourist guides and maps, in a considerable number of countries around the world. MICHELIN is a famous trademark, and its tourist guides are notorious. The word "guia" is the Spanish term that corresponds to the English word guide and is, therefore, a generic term for tourist guides. The addition of a generic term to a famous mark is not sufficient to avoid confusion (Chanel, Inc. v. Estco Group (WIPO Case No. D2000-0413 and Parfums Christian Dior v. Netpower WIPO Case No. D2000-0022). The Panel therefore finds that the Domain Name at issue is confusingly similar to Complainant's trademark.
Legitimate Rights or Interests
The Respondent has not made any use of the Domain Name, did not reply to Complainant's letters (Annex V to the Complaint) and did not file a Response. Furthermore, according to information provided by the Administrative Contact, it appears that the Respondent does not even exist as a legal entity: rather, it appears that a free-lance contractor of the Administrative Contact, behind its back, registered the Domain Name under a fictitious name. Under these circumstances, the Panel finds that the Respondent would not appear to have any legitimate rights or interest in the Domain Name.
Registration and Use in Bad Faith
Complainant's Michelin guides are notorious, and the sole reason for Respondent to register the Domain Name appears to have been the misappropriation of the goodwill of the Complainant's famous trademark MICHELIN for tourist guides. While the Respondent appears not to have an interest in the Domain Name, it deliberately prevented the Complainant from reflecting the Spanish name of its tourist guides into a corresponding domain name (Mrs. America Productions, Inc. v E.T. Corp., NAF 0003000094377). Spanish speaking persons looking for Michelin guides and entering the Domain Name expecting to find Complainant would be immediately linked to a website not belonging to the Complainant. Moreover, the fact that the Domain Name was registered under the fictitious name of a non-existing entity is a further indication that the Domain Name was registered in bad faith by the individual who purported to act under the name of TGIFACTORY. (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO 2000-0003; 3636275 Canada, dba eResolution v. eResolution.com WIPO D2000-0110; Parfums Christian Dior v. Javier Garcia Quintas and christiandior.net
WIPO D2000-0226; Hyosung Corporation v. HH WIPO D2000-0236).
Panels have repeatedly held that the mere holding of a domain name may constitute a "use" in the sense of paragraph 4(a)(iii) of the Policy. The concept of a domain name "being used in bad faith" is not limited to positive action; rather, inaction is within the concept (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO 2000-0003). Respondent registered the Domain Name in December 1999, and held it for more than a year under a fictitious name without making any good faith use thereof. Accordingly, this Panel finds that Respondent has registered and used the Domain Name in bad faith.
For all of the foregoing reasons, this Panel decides that the Domain Name "guiamichelin.com" registered by Respondent is confusingly similar to the trademark MICHELIN in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the Domain Name "guiamichelin.com" be transferred to the Complainant.
Dated: January 30, 2001