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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements MICHELIN-MICHELIN
Case No. D2002-0875
1. The Parties
The Complainant is Compagnie Générale des Etablissements MICHELIN-MICHELIN, 63040 Clermont-Ferrand, France.
The Respondent is Los Planetas (LoIsrael Rondón), Alcobendas, Madrid 28100, Spain.
2. The Domain Name and Registrar
The Domain Name is <michelindie.com>.
The Registrar is DirectNIC of Intercosmos Media Group, Inc., 650 Poydras Street, Suite 2311, New Orleans, Lousiana 70130, United States of America.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center (the "Center") by email on September 18, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy 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 <michelindie.com> (the "Domain Name") was registered through the Registrar and that Respondent is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On September 20, 2002, Respondent submitted an email to the Center requesting that the language of the proceedings is Spanish. The Center invited to parties to reach an agreement regarding this issue through email dated September 20, 2002. On the same day, Respondent sent an email to the Center including his name and personal email for contact purposes.
On September 20, 2002, Complainant opposed to change of language. Being English the language of registration, it is in accordance with the Policy and the Rules that the language of these proceedings is English.
On September 23, 2002, 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 October 13, 2002. A Response was received by the Center on October 7, 2002.
The Panel was properly constituted. The undersigned Panelist submitted Statements of Acceptance and Declarations 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 October 30, 2002.
4. Factual Background
Complainant is owner of the trademark MICHELIN which is a well known trademark world wide. This trademark has been registered for identifying tourist guides, together with maps and publications (Class 16). In addition, Complainant has registered the trademark MICHELIN in Classes 35 and 41 for advertising services and education and leisure services.
5. Parties’ Contentions
The Complainant contends as follows:
· The Domain Name enters into direct conflict and may be confused with the world famous trademark MICHELIN which belongs to the Complainant.
· Consumers may be confused as to the relationship between the Complainant and the Respondent ("risk of association").
· Complainant has never given permission to Respondent to use / register a domain name including its famous MICHELIN trademark and has never had any relationship with the Respondent.
· That Respondent has not given a convincing reason for using a domain name that incorporates the trademark MICHELIN for a compilation of snack bars where "indie" music is played.
· That the fact that Respondent has provided false contact details in the Registrar shows that Respondent is aware of the absence of any rights or legitimate interests in the contested domain name.
· The Domain Name has been registered and is being used in bad faith, due to the world wide well known and fame of the trademark MICHELIN.
· The web page corresponding to the Domain Name may believe that the Domain Name is related to the famous MICHELIN guides.
· The fact that Respondent’s details given in the registration are not true demonstrates Respondent’s bad faith.
The principal contentions of the Respondent are as follows:
· Contents in <michelinedie.com> are all in Spanish and Respondent’s mother language is also Spanish.
· The Domain Name is formed by the international word "indie", which comes from the word "independent" and the generic term "michelín" (with tilde –sic-), which is associated with a part of the human body.
· Complainant cannot expect to take over any name that coincides with its trademark (e.g. the civil name "Michel").
· Contents in the web site hosted under the Domain Name have nothing to do with the services of Complainant. Therefore, there can be no confusion, since the trademark of the Complainant is not known for any activities related to music.
· When a search is done in google, the trademark of the Complainant comes out in the first search results.
· Respondent is not using the trademark "MICHELIN" and therefore there is no need to request any kind of permission for registering the Domain Name. The Respondent has rights and legitimate interest in the Domain Name, because that name has been used for the compilation since 1999.
· Respondent’s information taken from the WHOIS database was right at the time of registration in January 2002. The email address was enough in order to contact the Respondent who did not give any more data at the time of registration for privacy and confidentiality reasons.
· Domain name was not registered in bad faith because the Domain name corresponds to an activity that has been accomplished since 1999, the indie music guide.
· Since registration, the Domain Name has been online. Respondent has not registered the Domain Name for the purpose of selling, renting or even not using it.
· Respondent has not registered the domain names <michelindie.net> and <michelindie.org> which shows his good faith.
· The Domain Name is formed by two generic words.
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.
(i) Identical or confusing similarity
The Complainant has produced ample evidence to demonstrate its rights in the trademark MICHELIN. The Domain Name comprises the name MICHELIN, the word DIE and the generic <.com> suffix. In my opinion, although formed by two words as described, the Domain Name is preponderantly construed on the word MICHELIN, and this makes confusingly similar the Domain Name and the Complainant’s trademarks (see WIPO Case Nos. D2002-0847, D2002-0809, D2000-0022, D2002-0362 or D2002-0252, inter alia).
The Panel finds that the Domain Name is confusingly similar to trademarks in which the Complainant has rights.
(ii) Rights or legitimate interest of the Respondent
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, which, if found by the Panel to be proven, demonstrates existence of the Respondent’s rights or legitimate interests in respect of the Domain Name. None of those circumstances apply here. The Respondent has done nothing with the Domain Name save to connect it to a web page advertising services related with snack bars where "indie" music is played, according to Respondent’s allegations. The Panel does not regard this situation as evidence of use of the Domain Name "in connection with a bona fide offering of goods or services," as required by the rules.
In addition, the Respondent has not been commonly known by the Domain Name and there is no suggestion that the Respondent is making a legitimate non-commercial or fair use of the Domain name. The Panel is of the view that to take a domain name, with which one has no natural connection, and which is formed by combining a well-known trademark such as "MICHELIN" with the word "DIE" (that has an obscure and tragic meaning in the English language), is not fair use of the Domain Name.
Certainly, the Panel considers that Respondent’s registration and ‘use’ of the Domain Name has not been such as to give the Respondent any rights or legitimate interests in respect of the Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
(iii) Bad Faith Registration and Use
Rule 4(a) of the Policy requires demonstration that the Respondent registered and used the Domain Name in bad faith, and provides various tests as possible means of determining bad faith. These are not exclusive tests, however, and the Panel is authorized to make its determination on any other basis of law or fact deemed appropriate.
As to the fulfillment of the bad faith requirement, it should be stressed first of all that Complainant is holder of several trademarks. These trademarks cover services related with guides where places, restaurants, etc., are advertised. The fact that Respondent is offering information about snack bars and similar places in the web site corresponding to the Domain Name demonstrates the existence of risk of association between Respondent and Complainant, since both of them are offering the same class of products and services. At this instance, it should be questioned why Respondent chose the domain name by combining the word "MICHELIN" on one side, and "DIE" on the other, being that Complainant is absolutely well-known throughout the world by the word "MICHELIN", which, regardless to say, is registered as trademark. In the Panel’s opinion, the fact of choosing a similar name for the Domain Name was something deliberate and sought in order to create confusion and risk of association.
On the other hand, it must be taken into account that the concept of bad faith must be focused not only from a subjective, but also from an objective approach. It is not only the knowledge of the Respondent when registering a domain name confusingly similar to relevant trademarks; it must also be decisive the sole fact of the continuous use of such a domain name under conditions revealing that the Respondent’s activity, both registration and actual use, cannot be allowed without at the same time causing a damage to a legitimate interest or to a potiur ius of a third party.
Due to the fact of the above-mentioned trademark registrations, the notorious and well-known name of the Complainant’s trademarks and corporate name, not only in the Spanish market but also world wide, it cannot be accepted that Respondent was not aware of the name or trademark "MICHELIN", either in the moment of registering the Domain Name at issue, or afterwards when using it (see WIPO Case Nos. D2000-0003, D2000-0110, D2002-0776, D2002-0735, inter alia). There must be a iuris tantum presumption that Respondent is using in bad faith the domain name if the foregoing conditions, inter alia, are met, since otherwise it would be extremely difficult for Complainant to demonstrate the internal animus of the Respondent when registering the domain name, or when using it, and thus to demonstrate that an illegal activity has taken place. Another solution would mean for the Complainant a so-to-speak diabolical prove. Consequently, the burden of the prove must be for Respondent who must prove that he has registered or is using in good faith the disputed domain name.
As a result, the Panelist must come to the reasonable conclusion that the Respondent was completely aware of the fact that the registration of the domain name <michelindie.com>, on which the Respondent has not proved to have any right or interest, was something deliberate that caused a damage to and collides with the rights and legitimate interests of Complainant (see WIPO Case Nos. D2000-0018, D2000-0020, D2000-0239 and D2000-0277, inter alia).
Therefore, the domain name <michelindie.com> was registered and is being used in bad faith.
Complainant has proved that the domain name is confusingly similar to some of its trademarks, that Respondent has no rights or legitimate interest in the Domain Name at issue, and that Respondent did register and is using the Domain Name in bad faith. Therefore, according to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires the registration of the domain name <michelindie.com> to be transferred to Complainant.
Jose Carlos Erdozain
Dated: October 30, 2002