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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Compagnie Gйnйrale des Etablissements MICHELIN-MICHELIN & Cie v. Mr Kristian Marjin van Wezel

Case No. D2001-0598

 

1. The Parties

Complainant: Compagnie Gйnйrale des Etablissements MICHELIN-MICHELIN & Cie, France.

Represented by: Domain Network SAS
Attn: Eve Chambrion
36, rue de Chateaudun
75009 Paris
France

Respondent: Kristian Marjin van Wezel
Regentesselaan 168
2562 EG Den Haag
The Netherlands

 

2. The Domain Names and Registrar

Domain Names:
<michelin-guide.com>
<michelinstar.com>
<michelin-star.com>
<michelinstars.com>
<michelin-stars.com>

Registrar: Easyspace Limited

 

3. Procedural History

The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") by email on April 25, 2001, and in hardcopy form on May 1, 2001. The Center has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that <michelin-guide.com>, <michelinstar.com>, <michelin-star.com>, <michelinstars.com> and <michelin-stars.com> ("the Domain Names") were registered through Easyspace Ltd and that Mr Kristian Marijn van Wezel ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Names.

On May 3, 2001, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was May 22, 2001. The Response was received by the Center on May 18, 2001, by email and in hard copy form on May 23, 2001. The Center received the Supplemental Complaint on May 29, 2001. On May 31, 2001, the Center received the Respondent’s Supplemental Response. On or about June 20, 2001, a further filing was received by the Center from the Respondent.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by the Center or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is June 20, 2001.

For the record, the Panel has been given no good reason to consider the supplemental and later filings of the parties and declines to do so.

 

4. Factual Background

The Complainant is the well-known tyre manufacturer. It is also the proprietor of the famous Guide Michelin. Restaurants featured in the guide are assessed and categorized by reference to a star rating known as Michelin Stars.

The Complainant is the proprietor of a large number of trade mark registrations for the word MICHELIN covering a wide variety of goods and services (including maps and guides) and dating back many years.

In or about mid-June 2000 the Respondent registered the Domain Names. The Domain Names were originally registered in the name of VirtualRealty.nl, but there is no dispute that the current registrant, the Respondent, is the same entity, although with a different name.

In the course of correspondence between the Respondent and investigators employed by the Complainant the Respondent sent an email to those investigators on December 7, 2000, reading as follows:-

"Re Internet Project

Dear Alix

I feel the name Michelin-Guide.com is worth something like Ј2,500 as it is "active" but "asleep", so in order to make it worth something you need to give it a face, body, arms and legs so to speak.

The name itself is pretty straightforward (it is what I typed in to my browser when I was looking for the Michelin-Guide online).

My plan is to set up a site within the next twelve months, dedicated to fine foods, wines, cigars, caviar, etc, but first of all the Restaurants and Hotels around the world that have been awarded Michelin’s coveted "Michelin Star" and "Bib Gourmand".

What I have found is that there is no such site available that has centralized the two categories or even attempted to do so, not even Michelin!

The natural domain names that one would type in the browser to find such information would probably be; michelinstar, michelin-star, michelinstars, michelin-stars, bibgourmand, bib-gourmand, michelin-guide, etc etc …. And yes I have all those just mentioned before, registered in good faith to promote a product and service I respect and feel passionate about.

Up until two years ago I was working as a full time chef, both here and in Australia, but have since shifted towards the internet to generate my main source of income.

If you are genuine and feel you need to have any further information about the price mentioned before, feel free to write or even call me.

Please let me know either way!

Regards

K.M. van Wezel"

The Complaint was launched on April 25, 2001.

 

5. Parties’ Contentions

A. Complainant

The Complaint reads substantially as follows:

"· Complainant’s activities

The Complainant is a well-known company that designs, manufactures and markets tyres for several vehicle industries (car, truck, aviation…). It is also highly involved into travel publications (maps, guides, atlases, computerized products) and vehicle racing (Formula One and Motorcycle Grand Prix, Superbike…) and rallies. The Michelin Group has a business presence in more than 170 countries, notably in the Netherlands, and its supplies a range of 28,000 products. Its consolidated sales figures for 1999 were of 13,673 millions of Euro and stands for 18% of the world market.

Regarding Complainant’s travel publications, Complainant has established its reputation through the famous "Guide Michelin" that selects restaurants and hotels in France and other countries like the Benelux countries. Particularly, Complainant made his guides famous for the number of stars he grants to the listed restaurants and hotels. The number of "Michelin Stars" has become a reference and a standard when assessing a restaurant. Complainant has also acquired its notoriety for travel publications through the full range of international titles it offers.

· Complainant’s trademarks

The Complainant has used and promoted its trademark MICHELIN for more than a century. Complainant owns worldwide numerous trademark registrations for the word <MICHELIN>, including the Netherlands where the Respondent has a place of residence. The trademark <MICHELIN> is without doubt considered a well-known trademark in accordance with Article 6bis of the Paris Convention in the majority of the Convention countries.

· Complainant’s Domain Names and Web Sites

The Complainant has established its main web site under the generic top-level domain name <michelin.com> (www.michelin.com). This portal (with IP address 208.134.241.118) gives access to specific pages for local markets. Moreover, the Complainant has registered domain names under country specific top-level domain names for several countries. Particularly, its Dutch subsidiary owns the domain name <michelin.nl>. Another link in the www.michelin.com portal leads to another proper web site (with IP address 62.160.235.49) dedicated to Michelin Travel Publications. This site can be reached also through the domain name <michelin-travel.com> owned by the Complainant. This site advertises Complainant’s guidebooks and maps and offers online services like Route Calculation tools.

· Respondent’s Identity and Domain Names:

Complainant led investigations to find out about the Respondent’s identity and activities during last December. These investigations have been taking care of by anonymous third parts that have been able to interview the Domain Names administrative contact. Investigators found out that the administrative contact is the actual owner of the Domain Names <michelin-guide.com>, <michelinstar.com>, <michelin-star.com>, <michelinstars.com>, <michelin-stars.com> and therefore the Respondent for this Complaint.

The former Whois for the disputed domain names indicated "Virtualrealty.nl" as the Registrant. This entity is not registered with the Dutch Chamber of Commerce. Mr. Kristian Marijn Van Wezel is the administrative and technical contact for the domain name <virtualrealty.nl> that points to an ISP web site, E-trade.

At the time the Complainant investigates about the Respondent, one of the email addresses for the Respondent was mail@vanw.com. This led the Complainant to check out the site www.vanw.com. This site used to open on a web page headed with "www.VirtualRealty.nl". The current page indicates that information about that page can be obtained by writing at info@ketnet.com. When clicking that email address, the actual email address that appears is kristian@vanw.com which is obviously another email address for Mr. Kristian Marijn Van Wezel. The respondent is also listed on <vanw.com> and <ketnet.com> whois. The site for <ketnet.com> is under construction.

The site where vanw.com used to point to was still partly under construction but Marijn van Wezel’s name was appearing on the home page, underneath the graphic designs, as K.van Wezel. VirtualRealty was, inter alia, a domain brokerage site, offering some 260 generic domain names for sale through 3 links on the homepage. Most of the other links were under construction. The Respondent appears as administrative contact in the whois of several of these domain names.

· Respondent Activities

The registrant for <virtualrealty.nl> appears on the Whois as "Kookaburra Kookstudio" based in The Hague (known also as Gravenhage), Netherlands, while the Respondent is the administrative contact. Complainant has not been able to directly connect Mr. Marijn van Wezel to this company, other than through the WHOIS report. However, during an interview with Complainant’s investigators, the Respondent explained he was a professional cook chef until two years ago, working in both the Netherlands and Australia. The Respondent confirmed his relation with the cooking sector in the second email he sent to Complainant’s investigators on December 7, 2000. The Respondent states also he has shifted towards the Internet to generate his main source of income. Registering domain names looks like being one of his new activities.

Legal grounds

The Complainant contends that the three requirements of Paragraphs 4a(i), 4a(ii) and 4a(iii) of the Uniform Domain Name Dispute Resolution have been met. This will be shown below.

A. The domain name michelin-guide.com is confusingly similar to Complainant’s trademark MICHELIN

Complainant has registered its trademark MICHELIN in most countries of the world in respect of several classes.

The complaint is mainly based upon Complainant International trademark registrations for <MICHELIN> protecting the mark in the Benelux through the Madrid Agreement:

Trademark	Country	Class	Reg. No.	Reg. Date.
MICHELIN	International	9, 11, 14, 16, 20, 21, 24, 25, 26, 28, 34	R 457 819	26.06.80
MICHELIN	International	35, 41	R 452 542	07.09.73
MICHELIN	International	6, 16, 18, 21, 25	574 577	06.05.91
MICHELIN	International	1, 6, 7, 8, 9, 12, 16, 17, 20	R 348 615	24.07.88
MICHELIN	International	12	492 879	07.12.84
MICHELIN	International	9, 35, 38	517 586	01.04.87

True and correct copies of the Certificates of the international trademark registrations valid in the Benelux are attached.

Complainant asserts that the Domain Names are confusingly similar to its "MICHELIN" marks.

The Complainant notes that its distinctive and notorious trademark is identically reproduced in the Domain Names.

The similarity between MICHELIN and the disputed domain names creates a risk of confusion on the following grounds:

- First of all, given the fame, the extensive reputation and notoriety throughout the world of MICHELIN, the public (especially in Europe) would expect the owner and user of the Domain Names to be associated with the Complainant;

- Moreover, regarding <michelin-guide.com>, Complainant believes that the mere adjunction of the descriptive term "guide" is not sufficient to consider that MICHELIN has lost its distinctive and attractive character in the whole denomination "michelin-guide". Indeed the domain name involves the Complainant’s mark in conjunction with a word that is descriptive of some products offered under the denomination MICHELIN, namely guide books. As a The Center panelist analysed regarding the disputed domain names <telstracommunications.com>, <telstradomains.com>, <telstra-ecommerce.com>, <telstrainternet.com>, <telstramobiles.com>, <telstranetwork.com>, <telstraphones.com>, <telstrasatellite.com>, <telstraurls.com> and <telstraweb.com> (See WIPO Case No. D2001-0046, Telstra Corporation Limited v. Ozurls), "the addition of the descriptive words in these domain names is not going to reduce the confusing similarity present in these domain names". Like demonstrated in this case, any consumer coming across the combination "michelin-guide" will clearly associate the domain name with the Complainant, not the Respondent;

- Regarding the four Domain Names associating Complainant’s trademark with the word "star(s)", Complainant contends that the mere adjunction of the generic term "star" is not sufficient to consider that MICHELIN has lost its distinctive and attractive character in the whole denominations "michelinstar", "michelin-star", "michelinstars" and "michelin-stars". As the Administrative Panel analysed in the same WIPO case regarding the disputed domain names <i-telstra.com>, <telstradigital.com> and <telstratechnical.com>, the addition of a generic word is too insufficient to ward off the spectre of confusing similarity. Indeed, "there is nothing in the additional word that alters the fundamental character of the domain name, as referring to some aspect of the Complainant and its marks";

- Last but not least, Complainant has been using its trademark in association with guidebooks on the European market since 1900, and on the Internet as well. Its International trademark registration in class 16 in respect of "cartes, guides et tous ouvrages ou publications" (Reg. No. R 348 615) gives protection to Complainant travel guide publications market in the Benelux and in several countries. Complainant benefits also from a global Internet presence through the domain name <michelin.com>. As a result, information on the travel publications such as guidebooks is accessible on the Internet from any place in the world. This presence – on the local market and on the Internet - indicates clearly that individuals, notably in the Netherlands, are likely to believe the Domain Names in dispute belong to the Complainant and are likely to use these Domain Names to seek out the Complainant’s web site. This risk of confusion was made clear in WIPO case Nike, Inc. v. B. B. de Boer (D2000-1397) for the <nike-shoes.com> domain name.

In the light of the foregoing, the Complainant contends that the relevant part of the Domain Names registrations is clearly confusingly similar to the trademark owned by Complainant.

B. Respondent has no legitimate interest in the domain names michelin-guide.com, michelinstar.com, michelin-star.com, michelinstars.com and michelin-stars.com.

The Respondent has no business or any other connection or affiliation with the Complainant. The Complainant has not licensed, expressly or impliedly, or otherwise permitted the Respondent to use the trademark MICHELIN or to apply for any domain name incorporating the trademark MICHELIN.

Our investigation has not found any other facts or elements to justify prior rights or a legitimate connection to the names "Michelin" or "Michelin Guide". Respondent is not otherwise known to the Complainant or to the public under the name in question, either in business or personally.

The fact that the Respondent has been involved in the cooking industry and that he has a project about a website dedicated to fine food and restaurants rewarded by the Michelin stars is completely irrelevant to justify the Respondent to use the MICHELIN mark without any consent from his legitimate owner.

In view of the above, it is clear that the Respondent has no legitimate interest in the domain names <michelin-guide.com>, <michelinstar.com>, <michelin-star.com>, <michelinstars.com>, and <michelin-stars.com>.

C. Respondent has registered and used the domain names in bad faith

1. Facts

- As mentioned earlier, Complainant’s investigators have been able to interview the Respondent in December 2000. This phone interview has been followed by two emails sent by the Respondent.

- On February 14, 2001, Complainant mailed to Respondent a demand to cease and desist from the trademark infringement. Respondent refused to collect the letter on February 21, 2001. A copy of the refusal is attached hereto.

- Whois of the disputed domain names and of the other domain names discussed in this complaint have been modified on March 10, 2001. This modification resulted in replacing "Virtualrealty.nl" by "Vanw" for the registrant identity.

2. Bad Faith Registration and use of the Domain Names

Complainant asserts the Domain Names have been registered in bad faith. Indeed, at the time of registrations, the Respondent knew of Complainant’s fame and ownership of its trademark. Given (i) the Complainant’s trademark registrations for the word MICHELIN in the world and in the Benelux, (ii) its worldwide and established reputation in the MICHELIN brand and the notoriety of its travel guide and its "stars", (iii) its <Michelin.com> domain name leading to a web site dedicated, inter alia, to MICHELIN Guides publications, and (iv) the fact that the Respondent has a "chef" background indicating he is fully aware of Complainant’s extensive notoriety, it is not possible to conceive of a plausible circumstance in which Respondent could ignore the Domain Name registrations were infringing Complainant’s rights and legitimately use the Domain Names.

Complainant is of the opinion that Respondent has used the Domain Names in bad faith.

- First of all, the Respondent clearly offered the Domain Names for sale to Complainant’s investigators with no prompting from them during the phone interview. Moreover, the Respondent wrote this offer in the emails he sent to the investigators. In the first email, the Respondent indicates he has not decided yet what price he wants for the domain names in question. In this email, the Respondent evokes "4-letters domain names" as being highly valuable. He mentions two 4-letters domain names he sold to a famous online travel agency for 2,000 GBP. True is that the domain names portfolio found at www.vanw.com in December consists mainly in 4-letters domain names. In his second email, the Respondent writes "I feel the name Michelin-Guide.com is worth something like 2500 GBP". 2,500 GBP for a domain name or even 5 domain names altogether is an amount of money exceeding the domain name registrant’s out-of-pocket costs directly related to the Domain Names. Paragraph 4(b)(i) of the Uniform Policy identifies these types of facts to be evidence of the registration and use of a domain name in bad faith.

- Secondly, the Complainant asserts the Respondent registered the Domain Names for the purpose of disrupting its business. Indeed, in Respondent’s second email, Respondent writes "My plan is to set up a site within the next twelve months, dedicated to fine foods, wines, cigars, caviar, etc, but first of all the Restaurants and Hotels around the world that have been awarded Michelin's coveted " Michelin star" and "Bib Gourmand". What I have found is that there is no such sites available that have centralized the two categories or even attempted to do so, not even Michelin!". This statement shows clearly two things:

(i) The Respondent’s intentions are to become – at least on the Internet - one of the Complainant’s competitors by using the Complainant’s trademarks, and to take advantage of the notoriety of the trademark MICHELIN;

(ii) From this, the purpose for the registrations of the Domain Names is to disrupt the business that the Complainant possibly can have on the Internet.

Paragraph 4(b)(iii) of the Uniform Policy identifies these circumstances to be evidence of the registration and use of a domain name in bad faith.

- Thirdly, Mr. Kristian Marjin van Wezel wrote in the same email "The name itself is pretty straight forward (it is what I typed in to my browser when I was looking for the Michelin-guide online) (…)

What I have found is that there is no such sites available that have centralized the two categories or even attempted to do so, not even Michelin!

The natural domain names that one would type in the browser to find such information would probably be: Michelinstar, Michelin-star, Michelinstars, Michelin-stars, Bibgourmand, Bib-Gourmand, Michelin-guide, etc, etc....... and yes I have all those just mentioned before, registered in good faith to promote a product and service I respect and feel passionate about."

The Respondent states himself that he registered the Domain Names that he thinks the Internet users will type in their browser to find information the Complainant provides, notably in its guides. This demonstrates the Respondent plans to use the Domain Names to attract traffic on his site. Besides, the Respondent’s cooking background indicates the Respondent is fully aware of Michelin’s attractive power as a brand. The circumstances of paragraph 4(b)(iv) described in the Uniform Policy are gathered in this case. Indeed, Complainant asserts that by using the Domain Names for his potential web site, the Respondent intentionally attempts to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant’s mark. This is evidence of registration and use in bad faith.

- Furthermore, even if the Respondent’s plan was a "bona fide" project as he implies at the end of his email, the Complainant contends that infringing Michelin’s rights is quite a questionable way to advertise a web site and bring in some traffic!

- The large Domain Names portfolio owned by Respondent indicates also that Mr. Kristian Marjin van Wezel is a savvy domain name broker of some sort, as confirmed the list of the nearly three hundred domain names attached hereto. This list contains denominations in which the Respondent has no right to (for instance <patentburo.com>). Complainant is on the opinion that this is very strong evidence that the respondent is a cybersquatter, willing to sell any of these names to the highest bidder. Indeed, in the case "Lancôme Parfums et Beautй & Cie v. SL, Blancel Web" (Case No. D2001-0028), the list of 50 domain names registered by the Respondent contains at least two trademarks belonging to third parties as well as several names which the respondent quite clearly has no right to. The administrative panel in this case considered that this type of domain names portfolio is a strong evidence that the Respondent is a cybersquatter.

- Finally, the Complainant contends that the circumstances in this case show that the Respondent is guilty of what is known and recognized as "passive holding", first analysed and defined in WIPO Case Telstra Corporation Limited v. Nuclear Marshmallows (Case No. D2000-0003) and confirmed in several WIPO cases. In those cases, the Administrative Panel concluded "the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith". Complainant is in the opinion that the circumstances of his case qualify the Respondent’s attitude to be a passive holding of the Domain Names, demonstrating the domain names are being used in bad faith."

"For all the foregoing reasons, the Complainant contends that the Respondent’s behaviour and activities constitute registrations and uses in bad faith of the registrations of the Domain Names <michelin-guide.com>, <michelinstar.com>, <michelin-star.com>, <michelinstars.com>, <michelin-stars.com>."

B. Respondent

The Response reads substantially as follows:

"I hereby wish to express my objections to all allegations and accusations made by Michelin.

Their evidence is circumstantial, misconstrued and provoked.

In Section "II-B" page 5 paragraph 6 to 9 of the Complainants notes about the respondents WHOIS details there is a slight hint of trying to create an atmosphere in which I am portrayed to be doing something suspicious. Updating ones Contact details is not a suspicious act.

My Chamber of Commerce registration is held in the name of "Virtual Realty" but as this is confusing for a lot of people in my own country and abroad I changed the name to VANW in the Registration Details. ["Virtual Realty" is often confused with "Virtual Reality"]

Section V paragraph 12 page 7 and partly page 8 the complainant describes their Business and Trademark and Domain name rights.

I wish not to contest these findings.

The next half of page 8 the complainant starts to create again an atmosphere of confusion surrounding the registration details and about the fact that the Name "Virtual Realty" is not registered with the Dutch Chamber of Commerce. If this were the case then I have certainly been paying my annual contributions in vain, but to prove that Michelin once again has misconstrued the facts, I will submit my latest Chamber of Commerce contribution proof of payment.

Then they talk about other domain names that I have, like vanw.com and ketnet.com. Since when is it illegal to own more than one domain name? There are numerous cases in which the panel understands the circumstances and reasons of why a respondent might have more then one domain name.

Warehousing domain names to offer them for sale to the public for instance is a perfectly acceptable business concept if I may quote from another case;

ATM ONLINE.COM, Inc., NV, USA
COMPLAINANT,

vs.

Websitenames.com, Inc., FL, USA
RESPONDENT.

DECISION
Claim Number: FA0005000094996

"Further, there is no evidence that Respondent is a cybersquatter in the traditional sense.  Respondent clearly warehouses domain names and offers them for sale to the public"

In my own case, because I have lots of website ideas, I made sure that I secured the names I feel might be useful for when I get around to starting a new project and the majority of those plans are for noncommercial use only.

What is left in my portfolio are 4letter acronyms and generic words in my native language that I wish to sell to fund a rather costly hobby. When a respectable company like Procter & Gamble registered about 2000 domain names back in 1995 the word "Cybersquater" had not been invented yet, but if it had been, that term would have most certainly applied to them if one holds to the same rules that are being adapted right here right now.

It is not my intention to stride away from the real issues in this case, but if you apply the same rules to the real world rather then the virtual one in which this case presides, the courts would be full.

Why is it that we find individuals or company’s that invest in domain names kind of shady but the land developer or even the small investor that can afford the land but not the house is called sensible or even smart when they secure there non-virtual "Domains".

When we move on to page 9 of the Complainant argument and read about ‘Respondents Activities’ their tactic of creating a suspicious atmosphere is in full swing again.

This time they are questioning why Virtual Realty is registered to a Kookaburra Kookstudio? Well let me shed some light on this issue and you will find that there is nothing suspicious about this either.

Kookaburra is the name of an Australian bird, Kookstudio means Cooking-studio (in Dutch) as in cooking lessons.

It was the name that I registered when I gave cooking classes a number of years ago.

The name was registered with the Chamber of Commerce otherwise I would not have been able to secure a domain name with the .NL extension.

The name Kookaburra Kookstudio was later changed to VirtualRealty.

When we get back to page nine where the Complainant analyzes Respondent’s activities the plot thickens.

I wish I had a copy of the exact wording of the telephone conversation, as this would contribute to my argument that this is clearly a case of "Reverse Hijacking". In fact I believe that, were the panel to even consider their evidence, they should also be in possession of that recorded phone call or otherwise declare this evidence incomplete and provoked.

A friendly female contacted me by telephone and she introduced herself as "Alix Genin", a partner in a startup Internet company dealing with travel in Europe.

I have to make a note here that I am digging deep into my memory and that the quotations might be slightly off track, hence I was under the impression I was dealing with some one who had the same interests as I had.

I surely would have noted down all details had I known of her ulterior motives

Let it be registered that this is a perfect example of acting in "bad faith" on Michelins behalf.

During the phone and email contact that was going on between me and her I got curious about what price they were willing to pay as anyone else would when approached by a stranger showing keen interest for one of your personal belongings.

I clearly stated during the phone conversation and the email correspondence that I was going to use the names for my own Website.

I have worked in Restaurants and Hotels here in Holland and in Australia and have always been fascinated about Michelin’s ratings of Restaurants.

I have looked and searched for a decent website that had Indexed them all in an easy to find format but up until this date that has never occurred

So I worked and brainstormed on the plan up until December 2000 when I was ready to upload the first page of the website explaining my intentions and asking the readers to get involved.

It was going to be a meeting ground for those interested in the same topic and related goods like wine, cognac, caviar, cigars and all other related joy’s of a connoisseur.

All this was well explained and shows that selling the names had never entered my mind up until then!

It is a well-known fact that an individual can be persuaded and in this case provoked into mentioning things that he otherwise would not have said.

From here on (page 10) the complainant is ready to argue why he feels the three points set out under the UDRP have been met and why they should be the owners of the names in question.

Applicable Disputes

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

None of the names in question are Identical but have the Mark incorporated. This is to give the reader a connection and a clue of what the site is about and it is exactly about "Guiding" the visitors to the "Michelin Star" Restaurants. The argument that there is no confusing similarity is usually met with rejection by the panel in similar cases and I will therefore not contest this argument.

I do however wish to give you an example of use of a mark in a domain name in the case of Bridgestone-Firestone where a person is criticizing the company and where the panel has decided that the respondent is making a noncommercial and fair use of the name. The Panel also found that in a case of noncommercial and fair use the respondent, can incorporate a trademark in its domain name [trademarksucks.com] as it otherwise cannot identify it self with the company it is criticizing or in my own case promoting!

I do not wish to criticize the Company that is directly responsible for the Star classifications of the Restaurants but rather create a place in cyberspace where I can express my opinions and those of others that might visit the site. If an individual wishes to find Michelin they will automatically go to www.michelin.com where one is left to find its own way in the jungle of information.

It will probably take you at least 15 minutes and 10 levels down before you even get to the first Michelin Star Restaurant indexed in their database. I am not happy about this as I wish to have this information more easily available. To identify that information within the domain names I have the right to incorporate the diluted trademark as long as I am;... 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.

There is one more issue that might arise when defending its right to a domain name and that is the use of the suffix .com/net or org in expressing the nature of business.

There have been cases where this has been an issue in identifying the noncommercial and fair use of the names involved. Lately one has to recognize that the underlying meanings of the .com/.net and org have become less meaningful and diluted then it would have been lets say back in 1995.

To project this into an example I may use the one of ICANN, which is considered to be a Non Profit Corporation. Yet ICANN has registered;

"www.icann.com/www.icann.net/www.icann.org"

When you go to their "About us" section this is what it says;

The Internet Corporation for Assigned Names and Numbers (ICANN) is the non-profit corporation that was formed to assume responsibility for the IP address space allocation, protocol parameter assignment, domain name system management, and root server system management functions previously performed under U.S. Government contract by IANA and other entities.

This would suggest that there is no need to have the .net and .com suffixes registered as the .net is for networks and the .com is for commercially driven businesses,

But as the Internet has gone from a handful of geeks and the Army to mainstream I can understand why one would want to register all three, because the average person is not interested in what the underlying purpose of the name is but will probably type in to his Browser "anything.com" and maybe then get to the lower level suffixes even when it is a "Non Profit Organization" that he was looking for.

So the argument that if a domain name holds the suffix .com it is engaged in a commercial business is questionable.

The same argument applies to a lot of commercially driven dot com businesses that have also registered the dot net and the dot org suffix of their name. They are not automatically engaged in Networks or Non Profit Organizations.

(ii) you have no rights or legitimate interests in respect of the domain name; and

I have every right to the names in question because I want to use it for a noncommercial purpose of promoting and indexing Michelin Star Restaurants. The phone call and emails between the Private Investigator {Alix Genin} and my self have shown very clearly that there was a plan in place to start a Website about Michelin Star Restaurants. Under the rules set out I may use any name to express my freedom of speech, which in this case is to promote the method, implementation and consequences of classifying eating establishments with a Michelin Star. In this case I want to promote a service rather then complain about it. There are a number of cases in which this right to freedom of speech is expressed in a negative sense and where the name is confusingly similar. These cases are the result of usually unhappy customers creating a website to express their grievances like for instance the case of "Bridgestone firestone (Case No. D2000-0190).

(iii) your domain name has been registered and is being used in bad faith.

Beneath are the indicators set out for the panel to identify whether there is a case of "Bad faith"

(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or

The names that are disputed here were all registered in good faith and were secured for when I was going to start my website. Correspondence between myself, and the private detective indicates that even though I was briefly tempted to do otherwise my plans were well underway and that I was not acting in bad faith.

(ii) you have 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 you have engaged in a pattern of such conduct; or

There is or are no trademarks registered and therefore one can conclude that the trademark owner disputing my names has no trouble reflecting their name in the domain www.michelin.com And I am not aware of having done any wrongdoing in any pattern!

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

On the contrary, I feel that my project will contribute, rather than disrupt.

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.

I am exercising my right to publish either critical or positive commentary about the Michelin Star Restaurants and that I can not do so without making reference to Michelin (Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998)

I have also stated that the Site is of a noncommercial nature and that the underlying story constitutes to "Fair use"

As I expressed earlier in my response to the allegations of bad faith I feel that in this whole affair only one has acted in "bad faith" and that is Michelin!

Provocative methods to fabricate a case when there isn’t one is not the way to seek ones own justice but should rather be seen as obstructing the course of justice!

The core question here is was the name first of all registered in bad faith and the answer is clear, NO!

Under the rules set out complainant must prove that the respondent registered the domain names 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 your documented out-of-pocket costs directly related to the domain name.

To back this up, I must stress that I never put those names up for sale because it had never entered my mind. It was not until the actual idea was suggested by Michelin’s private detective.

The answer about why I named a price is a human example of curiosity killed the cat, when I was asked on the phone if I wanted to part with the names or if I was interested in a cooperative working relation with them.

When I was ready to start using my domain names mid February I found that some one had changed the locks and blocked me out of my domains with a dispute warning.

The only reason the domain names are now not pointing to a website is because I am not allowed to use them.

The Website that I was about to upload when I found, the doors locked to my domains has been put on hold until this case has been resolved

If you wish to view the considerable efforts that have gone in to this project so far you may go to "http://www.michelinguides.com".

The domain name to the site is one that I will discontinue to use once I have control over the disputed names again but as I needed some interim shelter for the time being I found "Michelinguides.com" more appropriate then "MichelinSucks.com"

I cannot even start to express the frustration and anger this whole case has brought upon me as in my opinion this is a clear case of reverse hijacking.

On page 15 the complainant recognizes the fact that there is considerable proof of my plan to use the names in good faith, and of my background in cooking and therefore connection to the core of my website project.

On page 16 there is a direct unnecessary attempt to blatantly characterize my integrity by calling me a "savvy domain name broker of some sort"

Then they try and reinforce that characterization by involving a list of names.

But as I explained before the holding and warehousing of domain names is not a questionable activity.

Quote from the ATMonline case;…..Further, there is no evidence that Respondent is a "cybersquatter" in the traditional sense.  Respondent clearly warehouses domain names and offers them for sale to the public………End of Quote

They then proceed to pointing out a domain name that according to them is a definite sign of me being a "cybersquater".

"Patentburo" is not a protected name but just the combination of two generic words and I will attach two queries from the WHOIS.net trademark search to prove this.

The list of names that they refer to has, to my knowledge, no International Trademarks neither does the list contain denominations in which I have no rights. It is merely a list of 4 letter domain names and a collection of names that relate to some of my hobby’s and interests.

They then refer to several cases in which they see similarities to reinforce the basis for their complaint.

One has to seriously question whether the complainant has even read the finer details of these cases or whether they were trying to overwhelm the respondent by referring to unrelated cases and legal "mumbo jumbo".

Telstra Corporation vs. Ozurls is a case that is so obvious and deserves no further comment from me but to agree with the panels findings.

There was no formal response other then a signed email by "Barry Goode".

Also the quoted phone call and the response from Barry Goode indicated that his intention at the time of registration was to resell the names to Telstra.

The next three cases they have attached have all been one sided decisions because of the accused persons failure to submit there respond to the case and are therefore nearly always considered as "Bad faith" by default.

According to Michelin I was sent a Notification of Violation of Trademark Rights. This, however, I never received.

I now wish to present you the cases that are more appropriate and related to this case." [The Respondent refers to EasyJet Airline Company Ltd. v. Mr. Tim Holt (Case No. D2000-0465), Koninklijke Philips Electronics N.V. vs. Jaaska (or Jääskä) Kaketti (Case No. D2001-0231), Weber-Stephen Products Co. v. Armitage Hardware (Case No. D2000-0187), Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers (Case No. D2000-0190)].

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is 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 interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Identical or confusing similarity

The Domain Names each comprise the Complainant’s registered trade mark MICHELIN in combination with either the word "guide" or the word "star(s)", both words in that context directly referring/relating to the Complainant’s "Guide Michelin".

In the Response the Respondent states "none of the names in question are identical but have the mark incorporated. This is to give the reader a connection and a clue of what the site is about and it is exactly about "guiding" the visitors to the "Michelin Star" restaurants. The argument that there is no confusing similarity is usually met with rejection by the Panel in similar cases and I will therefore not contest this argument."

The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights.

Rights or legitimate interest of the Respondent

There is no dispute between the parties as to the meaning and effect of the Domain Names. They identify the products and services of the Complainant. In his letter of December 7, 2000 (quoted in full in paragraph 4 above) the Respondent expressly states that the Domain Names are obvious domain names of or for the Complainant. Indeed, in the case of <michelin-guide.com> the Respondent admits that it is the name, which the Respondent entered in his browser when looking for the Michelin Guide online.

On the face of it therefore the Respondent has no right or legitimate interest in respect of the Domain Names. The Respondent has a case to answer.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, "if found by the Panel to be proved" shall demonstrate the Respondent’s rights or legitimate interests to the Domain Names. The two potentially relevant circumstances here are, first, that Respondent, prior to being given notice of the Complaint has made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services and, secondly, that the respondent is making a legitimate non-commercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers etc.

In the Response the Respondent states "I have every right to the names in question because I want to use it [sic] for a non-commercial purpose of promoting and indexing Michelin Star restaurants … under the rules I may use any name to express my freedom of speech, which in this case is to promote the method, implementation and consequences of classifying with a Michelin Star." He points to his site at <michelinguides.com> (not a domain name the subject of this dispute), which shows how he says he proposes to use the Domain Names. The site in question is devoted to establishments the subject of the Complainant’s Guide and features links to websites of the Complainant. There is no indication as to when this website was developed. It is not extensive. The Panel suspects that it was developed after the Respondent received notice of the Complaint.

While the Respondent claims in the Response that his use of the Domain Names will be for a non-commercial purpose, it is to be noted that in his letter of December 7, 2000, he states "Up until two years ago I was working as a full time chef, both here and in Australia, but have since shifted towards the internet to generate my main source of income."

The Panel is prepared to accept that the Respondent intended to use the Domain Names for a website devoted inter alia to recipients of the Complainant’s Michelin Stars, but the Respondent has failed to show any demonstrable preparations dating back to before the Respondent received notice of the Complaint. The Respondent has also failed to demonstrate to the satisfaction of the Panel that his use of the Domain Names was to be for a non-commercial purpose. The Panel believes that registration of the Domain Names was part of the Respondent’s "[shift] towards the internet to generate [his] main source of income."

As indicated below, the Panel does not believe that the use of names so closely associated with the Complainant in this way for the Respondent’s commercial purposes constitutes a fair use of the Domain Names.

The right of free speech and the legitimate interest in providing an online service giving information in respect of or relating to the Complainant’s guide is not a right or legitimate interest in respect of the Domain Name itself. The Respondent can readily exercise his right of free speech and his legitimate interest in providing information in respect of or relating to the Complainant’s guide without using the Domain Names.

The Panel finds that the Respondent has no rights or legitimate interest in respect of the Domain Names.

Bad Faith

In support of the allegation of bad faith the Complainant relies on:-

(i) The Respondent’s knowledge of the Complainant’s fame and ownership of its trade mark at the time of registration of the Domain Names.

(ii) The Respondent’s offer to sell the Domain Names to the Complainant’s investigators (see the December 7, 2000, letter quoted above).

(iii) The Respondent’s intention to disrupt the Complainant’s business by setting up a site of the kind described in the Respondent’s December 7, 2000, letter.

(iv) The fact that by registering names, which the Respondent accepts are the natural domain names that one would type in the browser to find information relating to the Complainant and its services, the Respondent "plans to use the domain names to attract traffic on his site."

(v) The fact that the Respondent has done nothing with the Domain Names to date constitutes "passive holding" as analysed in the Telstra Case (WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows).

For the purposes of this case the Panel is prepared to accept that when the Respondent registered the Domain Names he did so for the reasons set out in his letter of December 7, 2000.

Accordingly, for the purposes of this case, the Panel finds that the Complainant has not proved that the Respondent registered the Domain Names with the intention of selling them or with the intention of disrupting the Complainant’s business.

However, the Panel finds that the Domain Names were registered and are being used in bad faith.

When the Respondent registered the Domain Names he knew that they were names, which were ideal to indicate the Complainant’s guide. He knew that they were names, which would be ideally suited to anybody seeking to visit the Complainant’s site and with a view to accessing information relating to the Complainant’s guide. In so doing he knew that he would attract to his site visitors intending to visit the Complainant’s site. Necessarily, therefore, by using the Complainant’s names he will derive business opportunities that would not otherwise have been open to him. In other words, by doing what he has done he will attract visitors to his site who would not otherwise have visited him. The fact that he has not yet connected the Domain Names to his planned site is irrelevant. It is a threat hanging over the Complainant’s head.

It is for these reasons that the Panel finds that the Domain Names were registered in bad faith and are being used in bad faith.

 

7. Decision

In the result, the Panel having found that the Domain Names are identical to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used in bad faith, the Complaint succeeds.

The Panel directs that the Domain Names, <michelin-guide.com>, <michelinstar.com>, <michelin-star.com>, <michelinstars.com> and <michelin-stars.com> be transferred to the Complainant.

 

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Tony Willoughby
Sole Panelist

Dated: June 20, 2001