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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin-Michelin & Cie v. Tarek Soliman/iSMER
Case No. DBIZ2002-00042
1. The Parties
The Complainant in this proceeding is Compagnie Générale des Etablissements Michelin-Michelin & Cie, 12 cours Sablon, 63000 Clermont-Ferrand, France.
The Respondents are Tarek Soliman/iSMER, 123/78 Marylebone High St., London W1M 4AP, United Kingdom.
2. The Domain Name and Registrar
This dispute concerns the domain name is <pilot.biz>.
The Registrar with which the domain name is registered is Registrars Asia Pty Ltd.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the STOP complaint on April 25, 2002 (electronic version), and May 13, 2002 (hardcopy). The STOP complaint was made pursuant to the Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel Inc. and approved by ICANN on May 11, 2001 ("the STOP"), and the Rules for Start-up Trademark Opposition Policy, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules"). The notification of STOP complaint and commencement of administrative proceeding was sent on May 14, 2002. The response was received on May 31, 2002 (electronic version), and June 4, 2002 (hardcopy). The notification of the appointment of the Panel was sent on June 24, 2002. The file was transmitted to the Panelist on the same day.
4. Factual Background and Parties’ Contentions
A. The Trademark
The complaint is based on the "PILOT" trademark.
Complainant is the owner of the UK trademark "PILOT", registration n° 2211675.
Complainant is also owner of the "PILOT" trademark in 12 other countries.
B. The complaint
In its complaint Complainant alleges that the disputed domain name is identical to its trademark.
Further, Complainant alleges that Respondents have no rights or legitimate interests in the domain name as they have no trademark rights to the name "PILOT", as they are not affiliated with Complainant or have any licence or any other authorization from Complainant and as they are not known under the name "PILOT" in the field of its business.
Complainant alleges that Respondents have registered the domain name in bad faith, as Respondents must have been aware of Complainant’s trademark because of the IP claims that were filed for <pilot.biz>. Complainant also alleges that Respondents registered the domain name in order to sell it to one of the owners of a "pilot" trademark for a price largely in excess of the registration’s out-of-pocket costs. Further, Respondents allegedly registered the disputed domain name in order to prevent the rightful owners of a "PILOT" trademark from reflecting their mark in a corresponding domain name.
C. The Response
In their response Respondents allege that Complainant has no trademark rights on the generic term "pilot" used in connection with goods and services provided to commercial and private aviation pilots.
Respondents allege that they have registered the domain name in good faith as Complainant has no evidence that they registered the domain name for the purpose of selling it.
Respondents request that the complaint be dismissed and that a decision of reverse domain name hijacking be rendered.
5. Discussion and Findings
a) Identical or Confusing Domain Name
There is no doubt that the domain name <pilot.biz> is identical to Complainant’s trademarks as the top level domain name .biz is not a distinguishing feature. Respondents do not contest this fact.
b) Respondents’ Rights or Legitimate Interests in the Domain Name
Complainant is a well-known company and so is its "MICHELIN" trademark. However, its "PILOT" trademark, although it is known in the tyre industry, is not well-known to the general public, consumers and internet users. Therefore, it is not granted an overall general protection such as a well-known trademark would be granted. Further, "pilot" is a generic word. Complainant cannot claim exclusive use of the word "pilot". Indeed, the UK patent office has more than 50 registrations of marks using the word "pilot".
Respondent Tarek Soliman claims that he has maintained an active interest in the field of aviation and that he intends to develop a website aimed at providing goods and services to pilots. This is not disproven by any document in the file.
c) Domain Name Registered and Used in Bad Faith
Complainant alleges that Respondents have registered the domain name in bad faith, as Respondents must have been aware of Complainant’s trademark. Respondents did proceed with the disputed domain name registration although they were aware of the IP claims of Complainant and third parties on the <pilot.biz> domain name. However, Respondent Tarek Soliman will be deemed to have registered the domain name in good faith by reason of his alleged intentions to use the domain name for a bona fide offering of goods and services to aviation pilots, and this is possible since Complainant does not have an exclusive trademark right on the generic word "pilot". Respondents did not proceed with the registration of a domain name clearly violating Complainant’s trademark rights, such as would have been the case if Respondents had registered <michelin.biz>.
Complainant also alleges that Respondents registered the domain name in order to sell it to one of the owners of a "PILOT" trademark for a price largely in excess of the registration’s out-of-pocket costs. However, Complainant has not provided any evidence of Respondents alleged bad faith in that regard.
Further, Complainant alleges that Respondents registered the disputed domain name in order to prevent owners of a "PILOT" trademark from reflecting their mark in a corresponding domain name. Complainant alleges that the registration by Respondents of a great number of domain name is a sign of their bad faith. However, the registration of numerous domain names is not per se unlawful, and the domains names which are registered by Respondents are mostly generic words at first sight which cannot be said to be infringing on the trademark rights of the rightful owners of such marks. Respondent Tarek Soliman alleges that most of those domain names were registered on behalf of third parties or at the request of Respondent iSMER partnership in order to be developed as commercial projects. In this regards as well, Complainant did not provide sufficient evidence of Respondents bad faith.
Respondents allege that Complainant attempted a reverse domain name hijacking. Such is not the case. Complainant has a valid "pilot" trademark. The ICANN Policy allows to assert valid trademarks rights, even if the remedy is not ultimately awarded.
In the light of the foregoing, the Panel decides that the disputed domain name is identical to Complainant’s trademark. However, Respondents have alleged legitimate interests in the domain name and it has not been established that they registered the domain name in bad faith.
Further, Complainant has not attempted to use means resorting to unfair competition in order to be awarded the domain name. Accordingly, the Panel dismisses the Complainant’s request and reject the Respondents’ request that a reverse domain name hijacking decision be returned.
In accordance with Paragraph 15(e) of the STOP Rules, the Panel decides that subsequent challenges under the STOP against the disputed domain name shall be permitted.
Dated: July 4, 2002