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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Compagnie Generale des Etablissements Michelin, Michelin et Cie, Michelin Recherche et Technique S.A. v. Alvaro Collazo

Case No. D2004-1095

 

1. The Parties

The Complainants are Compagnie Gйnйrale des Etablissements Michelin, Michelin et Cie and Michelin Recherche et Technique S.A., France, represented by Cabinet Germain & Maureau, France.

The Respondent is Alvaro Collazo, Tarariras, Colonia, Uruguay.

 

2. The Domain Names and Registrar

The disputed Domain Names are:

<bfgodrich.com>
<bfgodrichtires.com>
<ciamichelin.com>
<giamichelin.com>
<iamichelin.com>
<michelinmen.com>
<michelinsports.com>
<vaimichelin.com>
<vamichelin.com>
<vioamichelin.com>
<voamichelin.com>
<wwwbfgoodrichtires.com>
<www-viamichelin.com>.

All are registered with iHoldings.com Inc. d/b/a DotRegistrar.com. The corresponding registration dates are respectively: April 27, 2004; December 6, 2004; June 22, 2004; July 31, 2004; June 29, 2004; June 18, 2004; December 6, 2004; March 28, 2003; October 9, 2004; July 31, 2004; July 31, 2004; December 6, 2004; and July 31, 2003.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2004. On December 28, 2004, the Center transmitted by email to DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On December 29, 2004, DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2005.

The Center appointed Ian Blackshaw as the Sole Panelist in this matter on February 3, 2005. 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.

 

4. Factual Background

The Complainants are Compagnie Gйnйrale des Etablissements Michelin, Michelin et Cie., which owns the MICHELIN brands, and Michelin Recherche et Technique S.A., which owns the BFGOODRICH brands following a transfer of ownership from the American Company Goodrich Corporation (collectively and individually hereinafter referred to as “the Complainants” and “the Complainant” according to the context).

Established on May 28, 1889, the French Company Manufacture des Pneumatiques Michelin (“Michelin”) has grown into a well-known Group, which includes the Complainants, that designs, manufactures and markets tires for several vehicle industries (cars, trucks, two-wheel vehicles and aviation). It is also highly involved in vehicle racing sports, including Formula One, Motorcycle Grand Prix and Super Bike, as well as rallies. Michelin has a business presence in more than 170 countries and supplies a range of 36,200 products. In 2003, Europe represented 52% of sales; North America 35%; and Asia, South America and Middle-East Africa 13%. Michelin is the largest World Tire producer in the world with 19.2% of the global market, producing more than 850,000 tires daily.

Michelin is also renowned for maps and travel guides. Michelin also offers a wide range of services in the field of travel assistance providing consumers with maps, guides as well as digital products. Michelin also provides consumers with a large range lifestyle products developed for the consumers’ market.

The Complainants advertise, market and promote their goods and services, under the trademarks MICHELIN and BFGOODRICH, through a variety of media and marketing channels, including printed publications, radio, television and the Internet, and have expended significant financial resources on advertising and promoting their goods and services under the MICHELIN and BFGOODRICH brands.

Michelin has gained notoriety for its trademarks throughout the world mostly under the house brand MICHELIN and under the trademark BFGOODRICH due to their longstanding, continuous development and use.

Michelin has used and promoted its MICHELIN trademark for about a century and owns numerous trademark registrations worldwide for the name “MICHELIN”. The trademark MICHELIN is without doubt considered as a well-known and notorious trademark throughout the world as the following selection of trademark registrations demonstrate:

- French trademark MICHELIN n° 1 392 599 dated November 28, 1977, duly renewed, for, inter alia, rubbers, plastic substances, inner tubes , vehicles, tires, maps and guides.

- International trademark MICHELIN n° 492 879 dated May 10, 1985, designating Albania, Armenia, Austria, Azerbaijan, Bosnia, Bulgaria, Benelux, Belarus, Switzlerland, Cuba, Czech Republic, Germany, Algeria, Egypt, Spain, Croatia, Hungary, Italy, Kyrgyzstan, Republic of Korea, Kazakhstan, Liechtenstein, Liberia, Morocco, Monaco, Republic of Moldova, Macedonia (The former Yugoslav Republic of), Mongolia, Portugal, Romania, Russia, Sudan, Slovakia, Slovenia, San Marino, Tajikistan, Tunisia, Ukraine, Uzbekistan, Viet Nam, Yugoslavia, for inner tubes for tires for vehicles.

- Argentina trademark MICHELIN n° 2 487 322 dated November 11, 1996, for, inter alia, motors, tires, vehicles, inner tubes, rubbers.

- Bolivian trademark MICHELIN n° 41663-A dated June 2, 1950, duly renewed, for class 12 goods.

- Brazilian trademark MICHELIN n° 007050054 dated January 1, 1980 duly renewed, for tires, inner tubes for tires for vehicles.

- Chilean trademark MICHELIN n° 428 033 dated June 24, 1994, duly renewed, for, inter alia, tires for wheels for vehicles.

- Peruvian trademark MICHELIN n° 24791 in force until June 2, 2014, for class 12 goods.

- Paraguayan trademark MICHELIN n° 239 357 (formerly n° 147 762) renewed on September  14, 2001, for tires for wheels for vehicles, inner tubes.

- Uruguayan trademark MICHELIN n° 131 740 dated May 27, 1974, duly renewed, for, inter alia, rubbers, tires, inner tubes, vehicles, valves, maps, guides, books.

- French trademark BFGOODRICH n° 1 436 720 dated March 10, 1967, for, inter alia, rubbers, plastic substances, inner tubes , vehicles, tires.

- Argentinean trademark BFGOODRICH n° 1 733 654 dated April 27, 1999, for tires and inner tubes for vehicles, rubbers.

- Paraguayan trademark BFGOODRICH n° 204 264 dated June 26, 1998, for tires, inner tubes, repair tools for tires.

- Thai trademark BFGOODRICH n° 144 990 in the name of Michelin Recherche et Technique SA.

This selection of trademarks shows that MICHELIN and BFGOODRICH are registered trademarks not only in the country of origin of the Complainants but also in the geographical area and the country where the Respondent is located.

Evidence of the use of the cited trademarks in South America and specifically in Uruguay where the Respondent is domiciled, has been submitted by the Complainants.

Some years ago, Michelin developed the now famous website “www.viamichelin.com”, which is available in Spanish, English, French, Italian and German languages; this website assists the Internet users in locating geographical places or in planning routes. It is also a shop window for promoting the Michelin goods and services by presenting a selection of information in connection with the destinations, or with its tourism guides, as well as tires. Viamichelin Company is also a subsidiary of the Michelin Group dedicated to travel assistance services using digital media and is a complementary product to the famous MICHELIN Guides.

For commercial consistency, the Complainants registered several domain names corresponding to the trademarks MICHELIN and BFGOODRICH and operate websites promoting their companies and products at: “www.michelin.com”; “www.viamichelin.com”; “michelinman.com”; “www.michelinsport.com”; “www.bfgoodrichtires.com”; “www. and bfgoodrich.com”.

As soon as the Complainants and the Michelin Group became aware of the existence of the Domain Names in issue, they sent cease and desist letters by e-mail and certified mail with return receipt to the Respondent on August 6 and 18, 2004, to inform him of their rights and their infringement through the registration and the use of the Domain Names in issue.

The Respondent having failed to respond to these letters, the Complainants sent another cease and desist letter to the Respondent, to which they again received no reply.

 

5. Parties’ Contentions

A. Complainant

1. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights:

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

1.1. The following Domain Names:

<ciamichelin>
<giamichelin>
<iamichelin>
<voamichelin>
<vioamichelin>
<vaimichelin>
<vamichelin>
<www-viamichelin.com>

are formed of the trademark MICHELIN to which 2, 3 or 4 letters have been added. In these Domain Names, the word “michelin” is without doubt the predominant element. From a visual and phonetical point of view, these Domain Names are similar to the trademark MICHELIN. The addition of the elements “cia”, “ia”, “voa”, “gia”, “vioa”, “vai”, “va” or “www-” before the Complainant’s mark is not sufficient to distinguish the domain names from Complainant’s trademark. On the contrary, these additions are designed to take advantage of mistakes that consumers are likely to make when trying to type the Complaint’s website address. Therefore, Complainant contends the above Domain Names are confusingly similar to the trademark MICHELIN in which the Complainant has rights.

Furthermore, it should be added that Michelin has become well known for its guides and maps and has developed on the Internet a website aiming at assisting people on line with itineraries. The said website, registered on November 7, 2000, is “viamichelin.com” and is used in the manner of a trademark. It clearly appears that the Respondent has imitated this unregistered trademark VIAMICHELIN as it has chosen domain names presenting misspelling of “viamichelin”: <ciamichelin.com>, <giamichelin.com>, <iamichelin.com>, <voamichelin.com>, <vioamichelin.com>, <vaimichelin.com>, <vamichelin.com> and <www-viamichelin.com>. The Domain Names are, therefore, similar to the trademark MICHELIN and the brand name VIAMICHELIN.

1.2. The Domain Name <michelinmen.com> is formed of the trademark MICHELIN to which a three-letter generic word “men” has been affixed.

From a visual and phonetical point of view, this Domain Name is similar to the trademark MICHELIN, as it clearly shows some resemblance with the notorious registered MICHELIN trademark which represents the distinctive and predominant element within the Domain Name. The well-known trademark MICHELIN is placed at the beginning of the Domain Name, which enables Internet users to immediately acknowledge and memorize this Internet address. The addition of the word “men” is not sufficient to distinguish the Domain Name <michelinmen.com> from Complainant’s MICHELIN trademark and avoid confusion.

Besides, the Domain Name evokes what has been for decades the well-known symbol of the Michelin group, namely the “Michelin Man”, also called BIBENDUM in French. This character, which has been considered the most famous device of the last century, is not only commonly known by consumers of MICHELIN products and services but also by the general public, due to its kindly appearance, its smile and its body originally made of tires. Visually, this drawing immediately refers to Michelin in the mind of the public, insofar as the company has been affixing it on its goods and services (tires, maps, guides, electronic maps on Internet) since the beginning of its business. The public has become so familiar with this drawing that it has even been named in the English language as the “Michelin Man”.

Insofar as “Michelin Man” has become a keyword to designate the Michelin Group, the Complainant has registered a domain name <michelinman.com> which directs to a website dedicated to it.

It is obvious that the English plural “men” is used by the Respondent in its domain name <michelinmen.com> to take advantage of the misspelling of the denomination “MICHELIN MAN” and the corresponding domain name <michelinman.com> by the public.

Whether the Panel considers that there is a difference between the trademark MICHELIN and the domain name <michelinmen.com>, at least it must be regarded as a minor difference, which is legally and practically insignificant.

Therefore, it must be concluded that the domain name <michelinmen.com> is identical or at least confusingly similar to the trademark MICHELIN in which the Complainant has rights.

1.3. The Domain Name <michelinsports.com>

The disputed domain name is formed of the trademark MICHELIN to which a generic word “sport” has been affixed.

From a visual and phonetical point of view, this Domain Name is similar to the trademark MICHELIN, as it clearly shows some resemblance with the notorious MICHELIN trademark, which represents the distinctive and predominant element within the Domain Name.

The well-known trademark MICHELIN is placed at the beginning of the Domain Name, which enables Internet users to immediately acknowledge and memorize this Internet address. The addition of the word “sports” is not sufficient to distinguish the Domain Name <michelinsports.com> from Complainant’s MICHELIN trademark and avoid confusion.

The Domain Name integrates the trademark in its entirety, as the trademark MICHELIN does not lose its individual character in the sign.

More specifically, the Internet user would undoubtedly be confused into believing that the domain name <michelinsports.com> is the sport branch of MICHELIN, a website dedicated to races, competition, sportscars. In fact, the contested domain name differs by one letter only to Complainant’s own website “www.michelinsport.com” which was registered on August 2, 1999. In conclusionthe Domain Name <michelinsports.com> is confusingly similar to the trademark MICHELIN in which the Complainant has rights.

2. The following Domain Names:

<bfgodrich.com>
<wwwbfgoodrichtires.com>
<bfgodrichtires.com>

show some resemblance with the registered trademark BFGOODRICH which may confuse the public.

Within the Domain Names, the Internet user will recognize BFGOODRICH as the predominant element, due to its length, its notoriety and individual character.

2.1. <bfgodrich.com>

The fact that the Respondent has erased only one letter in a total of 10 letters of the trademark is not sufficient to consider that the difference is predominant.

More specifically, it must be emphasised that the Respondent has chosen to cancel the vowel “O” which is originally doubled in the trademark BFGOODRICH. This modification is so weak that it is visually and phonetically difficult for the Internet user to notice it.

It is hard to believe that this only modification occurred by chance. It is likely that the Respondent tried to take advantage of the Internet user’s misspelling while typing the Internet address of a website.

Therefore, it must be concluded that the Domain Name <bfgodrich.com> is confusingly similar to the trademark BFGOODRICH in which the Complainant has rights.

2.2. <wwwbfgoodrichtires.com>

The Respondent has reproduced the trademark BFGOODRICH in its entirety, to which it has simply added the usual Internet designation “www” and the generic term “tires” designating the goods the trademark BFGOODRICH covers.

The set of initials “www” is a technical requirement while entering the Internet address on the webpage. It happens that Internet user forgets to separate by a dot the initials “www” from the intended domain name.

The implication of this misspelling is that the Internet user is not connected to the intended website or, as in the present issue, is directed to another website, which is confusing.

Moreover, the trademark BFGOODRICH does not lose its individual character within the domain name <wwwbfgoodrichtires.com>.

Besides, the Respondent may not reasonably assert that the addition of the generic word “tires” is sufficient to distinguish the signs in issue as the addition of this term does not avoid confusion.

Indeed, this behaviour is a way to take advantage of the consumers’ misspelling.

It is worth underlining that the corresponding website of the Complainant is “www.bfgoodrichtires.com”.

Therefore, it must be concluded that both domain names <bfgodrich.com> and <wwwbfgoodrichtires.com> are confusingly similar to the trademark BFGOODRICH in which the Complainant has rights.

2.3. <bfgodrichtires.com>

In addition to the voluntary misspelling of the trademark BFGOODRICH (see above), the Respondent has added the generic term “tires” in respect of the goods that that trademark designates.

However, the Respondent may not assert that the addition of the word “tires” is sufficient to distinguish the signs in issue and to avoid confusion.

The Domain Name <bfgodrichtires.com> is, therefore, confusingly similar to the Complainant’s trademark.

2. The Respondent has no rights or legitimate interests in respect of the domain names (Policy, paragraphs 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

Complainant asserts that the Respondent is necessarily aware of the existing trademarks MICHELIN and BFGOODRICH due to their notoriety but also to the letters notifying him of Michelin’s rights in the same trademarks.

Evidently, the registered cease and desist letters that the Complainant has addressed to him are a supplementary proof that the Respondent cannot ignore the famous trademark MICHELIN.

However, the Respondent did not provide any explanation nor evidence of any legitimate right or interest in the Domain Names. Moreover, the Respondent must have had knowledge of the existence of the MICHELIN trademark when he registered the Domain Names as it is registered since 1974 in Respondent’s own country.

The Respondent is using the Domain Names without any authorization or license from the Complainants.

In addition to that, it appears that the Respondent has not registered nor used the name MICHELIN and BFGOODRICH as trademarks or trade names, nor has he ever been known by these names.

The adoption by the Respondent of Internet addresses similar to the trademarks MICHELIN and BFGOODRICH, the commercial name MICHELIN, the domain names “Michelin” and “bfgoodrich” of the Complainants would inevitably and misleadingly divert consumers to its websites and have the effect of tarnishing the trademarks.

The Respondent may not justify of any rights or legitimate interest in the present domain names, whereas the Complainants have duly mentioned to the Respondent that they were the owners of the trademarks MICHELIN and BFGOODRICH.

In view of the above, it is demonstrated that the Respondent has no rights nor legitimate interests in relation to the Domain Names.

3. The domain names were registered and are being used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

Despite several letters informing the Respondent about the Complainants’ trademark rights, no explanation regarding the registration and the use of the Domain Names in issue has been provided by the Respondent.

1. Registration in bad faith

The Respondent has registered thirteen domain names using the Complainants’ well-known marks some of which he used to direct Internet users to other websites.

At this time, the prior trademarks MICHELIN and BFGOODRICH were registered in a large number of countries, including South America. Both the trademark MICHELIN and also the name of the character “MICHELIN MAN” were registered and have been widely used also in South America.

For that reason, the Respondent may not allege that it could not have any knowledge of any foreign trademarks MICHELIN and BFGOODRICH insofar as they are duly registered not only in Uruguay, where the Respondent is located, but also in the bordering States (Argentina, Bolivia, Brazil, Chile, Peru, Paraguay).

Although the existence of a trademark protection within the country of origin of the respondent is not a requirement to characterize cybersquatting under the UDRP, it should be considered as a material demonstration of bad faith in the registration of a domain name.

And the notoriety acquired by Michelin for the trademarks MICHELIN and BFGOODRICH is supplementary evidence of bad faith.

It is underlined that there is a well-established principle under UDRP case law and under paragraph 2 of the Policy, stating that, when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party.

However, due to the similarities between the trademarks MICHELIN and BFGOODRICH with the Domain Names in issue, it is more than probable that the Respondent had the Complainants’ trademarks MICHELIN and BFGOODRICH in mind when registering the Domain Names, especially as the Complainants’ trademarks are well known.

Theoretically, the Respondent should have previously checked the availability of the Domain Names before registering them.

In any event, the Respondent could not ignore the existence of prior rights on MICHELIN, BFGOODRICH, VIAMICHELIN and the prior use of the well-known name “MICHELIN MAN”, as trademarks, trade name, commercial name, domain name.

As a matter of fact, even if the Respondent did not conduct clearance searches within the Trademark Register, the prior trademarks MICHELIN and BFGOODRICH and also the name of the Michelin character do benefit from a very high notoriety around the world.

The fact that the Complainant’s entire trademarks MICHELIN and BFGOODRICH are registered as part of the respective domain names (<www-viamichelin.com>, <voamichelin.com>, <vamichelin.com>, <vaimichelin.com>, <iamichelin.com>, <giamichelin.com>, <ciamichelin.com>, <vioamichelin.com>, <michelinmen.com>, <michelinsports.com>, <bfgodrich.com>, <wwwbfgoodrichtires.com> and <bfgodrichtires.com>) renders difficult to infer a legitimate use of the domain names by Respondent.

No explanation may be reasonably submitted to understand why the Respondent selected the said domain names other than to mislead Internet users and create a likelihood of confusion with the Complainants.

And it must be underlined that Michelin has owned the domain name <michelinman.com>, corresponding to the Michelin character, namely the singular version of “michelinmen”, since November 6, 2001, and also <viamichelin.com>, the singular version <michelinsport.com>, and <bfgoodrichtires.com> without misspelling.

It seems that the Respondent considered that the few letters difference between the signs in issue would be sufficient to avoid any claims from the Complainants.

For all those reasons, it appears that the Respondent has conscientiously tried to take advantage of the Internet users’ misspelling in the Internet address.

The Internet users who would use a search engine to locate the Complainants’ websites are likely to be led to Respondent’s one due to the similarities of the domain names.

Therefore, in view of the above, it must be sustained that the domain names are registered in bad faith.

It has to be emphasized that the Respondent has voluntarily ignored the content of the cease and desist letter as he has registered some domain names in December 2004 infringing Michelin rights.

This behaviour reinforces his bad faith as he could not ignore Michelin rights at the time of the registration.

The fact that the Respondent has intentionally registered many websites with misspellings on VIAMICHELIN, MICHELIN, MICHELINMAN or BFGOODRICH is typosquatting: the Respondent imitates the trademarks MICHELIN, BFGOODRICH and the brand name VIAMICHELIN by registering domain names whose similarities consist in the misspelling of the original trademarks and/or brand name.

This typosquatting is a specific form of cybersquatting and clearly shows the bad faith of the Respondent.

2. Use in bad faith

Some of the Domain Names in issue, namely, <www-viamichelin.com>, <voamichelin.com>, <vamichelin.com>, <vaimichelin.com> are linked to a general portal website and some others namely, <iamichelin.com>, <giamichelin.com>, <ciamichelin.com>, <vioamichelin.com>, <michelinmen.com>, <bfgodrich.com>, <bfgodrichtires.com> and <wwwbfgoodrichtires.com>, direct the Internet user to websites with a portal where a board mainly shows several car and car parts brands mixed with generic terms: MICHELIN tires or BF GOODRICH tires, Automobiles tires, Auto parts, BMW parts, Volvo parts, Toyota parts, Bridgestone tires…

It must be underlined that the top trademarks, which appear in the sites are MICHELIN tires or BF GOODRICH tires.

There is no indication that these websites are not supported by the trademark owners or that they are not official websites, which may confuse the Internet users who look for official information about the trademarks and the goods they designate.

Insofar as these websites are mainly linked with car parts and car parts brands, the Respondent’s behaviour demonstrates his bad faith in the use of the highly similar trademarks. He could hardly pretend that he ignored the trademarks MICHELIN and BF GOODRICH insofar as he uses his Domain Names in connection with tires, goods in relation to which MICHELIN and BF GOODRICH have acquired notoriety.

By virtue of Paragraph 4 (b) of the Policy, it must be evidenced, in particular: “Whether by using the domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.”

The reproduction of the portal shows that the Respondent mixes on the same board several brands, which may confuse the public who would conclude that there is a venture between the car and car parts and accessories companies.

Obviously, the aim of an Internet portal is to collect, organise and select keywords to direct an individual to some websites, which would match with their request. As an example, a consumer will go to a portal to obtain information about some new tires for his car. The portal will offer multiple choices to conduct a search in order to assist the consumer. Usually, the consumer has to enter the name of a company, a brand or the generic word tires.

In the present case, the Respondent may not claim to offer such a service as the domain name that is used would imply that only Michelin goods are selected or at least would infer its authorisation.

The main competitors of Michelin, such as Pirelli, Goodyear, Bridgestone, are included in the board.

And more specifically, as an example, by selecting the first link “Michelin tires”, the Internet User would assume to be directed to a website presenting tires from Michelin.

Most of the referenced tire dealers are not linked with Michelin nor refer to its goods, but instead to competitor websites. This causes serious damage to Michelin and misleads Internet users.

The Respondent also forces Internet users to access and view the advertisements on those sites as pop ups appear one after another on the screen.

In that regard, it has been already held in previous case law that a respondent’s use of banner advertisements and pop up windows in conjunction with a domain name incorporating a complainant’s trademark can be found to be a financially driven attempt to draw Internet users, some of whom were searching for the complainant’s website, to the respondent’s site by taking a free ride on the goodwill of the complainant’s trademark.

Thus, the Domain Names in issue are used in bad faith by the Respondent to primarily direct the public towards Michelin competitors, or globally to websites which are not linked to Michelin or authorised by Michelin.

For all those reasons, it is demonstrated that the Respondent has used the Domain Names to intentionally attract Internet users to his website for commercial gain by creating a likelihood of confusion.

Therefore, the Respondent has registered and uses the domain names in bad faith.

B. Respondent

The Respondent, having been duly notified and kept informed of the proceedings by the Center, did not file any Response to the Complainants’ Complaint.

 

6. Discussion and Findings

To qualify for cancellation, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous cases in which the Respondent failed to file a Response, the Panel’s decisions were based upon the Complainant’s assertions and evidence, as well as inferences drawn from the Respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936. The failure by the Respondent to dispute the Complainant’s allegations allows the inference to be drawn by the Panel that they are true.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

The Respondent has registered a total of 13 Domain Names, which the Complainants contend are identical or confusingly similar to the Complainants’ trademarks MICHELIN and GOODRICH.

1. Dealing first with the MICHELIN claims, these concern the following Domain Names:

<ciamichelin.com>
<giamichelin.com>
<iamichelin.com>
<“michelinmen.com>
<michelinsports.com>
<vaimichelin.com>
<vamichelin.com>
<vioamichelin.com>
<voamichelin.com>
<www-viamichelin.com>

Whilst not identical, the predominant and essential component of all these Domain Names is the name “Michelin” which is a trademark of the Michelin Group of Companies. This trademark is well established and well-known, the original Michelin Company having been founded in 1889, and registered and used throughout the world, including the country in which the Respondent is domiciled, namely, Uruguay, and surrounding countries, details of such registrations are set out above.

The other letters in these Names, in the opinion of the Panel, are of a generic nature and not sufficient to distinguish the Domain Names from the name “Michelin” in which the Complainant has trademark rights. Indeed, not only are the Domain Names similar to the Complainant’s trademarks, the presence of the generic material does not preclude the likelihood of confusion on the part of Internet users and consumers, who will be attracted by the presence in the Names of the “Michelin” name which has become a famous mark around the world.

In any event, it is established case law that where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

Furthermore, regarding the Respondent’s Domain Name <michelinmen.com>, the symbol “Michelin Man” has been affixed to and used in conjunction with the goods and services of the Michelin Group since the beginning of its business. For consumers and the members of the general public alike, this symbol has become well known and inextricably linked with the Michelin Group and its products and services. As a result of its notoriety, the term “Michelin Man” has entered and become part of the English language. In view of this, the Complainant registered on November 6, 2001, the Domain Name <michelinman.com> for a website dedicated to it. The difference between the Respondent’s Domain Name of “Michelinmen” and the Complainant’s “Michelinman”, namely one letter – an “e” instead of an “a”, in the opinion of the Panel is of no legal significance. The Respondent’s Domain Name is confusingly similar to the Complainant’s trademarks, which were registered prior to the Respondent’s Domain Name.

And regarding the Respondent’s Domain Name <michelinsports.com>, –addition of the word “sports”in the opinion of the Panel, is of no legal significance: there is still a likelihood of confusion with Complainant’s trademarks.

Finally, regarding the Respondent’s Domain Name <www-viamichelin.com>, and the various other Domain Names comprising misspellings of the name “viamichelin”, the Complainant, in support of its well-known guides and maps, has already registered on November 7, 2000, the Domain Name <viamichelin.com> for a website dedicated to assisting on-line requests for itineraries. The name “VIAMICHELIN” although not a registered trademark is a brand name of the Complainant used in the manner of a trademark As such, the Respondent’s Domain Names, consisting of the name “viamichelin” and various misspellings of it, in the opinion of the Panel, are confusingly similar to the Complainant’s unregistered trademark “VIAMICHELIN”.

Thus, the Panel finds that the above-mentioned Domain Names registered by the Respondent if not identical are confusingly similar to the Complainant’s trademark “MICHELIN”.

2. Dealing now with the “GOODRICH” domain names, these concern the following Domain Names:

<bfgodrich.com>
<bfgodrichtires.com>
<wwwbfgoodrichtires.com>

Whilst not identical, the predominant and essential component of these Domain Names is the name “BFGOODRICH” which is a trademark in which the Complainant has rights.

Internet users will recognize this component in the Domain Names registered by the Respondent, due to the length of the name, its notoriety and individual character.

Taking the Domain Names in turn. The <bfgodrich.com> name is confusingly similar to the Complainant’s trademark “BFGOODRICH” because it lacks only one letter out of a total of ten letters, namely the letter “O”. Visually and phonetically, this difference is negligible and the Internet user is not likely to notice it. In the opinion of the Panel, therefore, the Domain name is confusingly similar to the Complainant’s trademark.

Regarding the Domain Name <bfgodrichtires.com>, in addition to the loss of one “O”, the generic and descriptive word “tires”, which the trademark “BFGOODRICH” designates, has been added. Again, in the opinion of the Panel, these differences are not likely to avoid confusion on the part of consumers and Internet users. See in Chanel Inc. v. Estco Technology Group, WIPO Case No. D2000-0413, it was held that the domain name <chanelstore.com> was confusingly similar to the “Chanel” mark. And that the addition of the generic term “store” did not avoid any such confusion. Thus, the Domain name is confusingly similar to the Complainant’s trademark.

Finally, regarding the Domain Name <wwwbfgoodrichtires.com>, the essential element is the name “BFGOODRICH”. In the opinion of the Panel, the addition of the letters “www” and the generic and descriptive word “tires”, which the trademark designates, may be ignored as they do not avoid any likelihood of confusion on the part of consumers and Internet users, who are familiar with the well-known name “BFGOODRICH” for tires. Indeed, the inclusion of the letters “www” as part of the Domain Name is likely to cause further confusion, as the letters “www.” are the access code to the Internet. Furthermore, additional confusion is likely to be caused, since the Complainant has already registered on June 19, 1997, the Domain Name <bfgoodrichtires.com>.

Thus, the Panel finds that the above-mentioned Domain Names registered by the Respondent if not identical are confusingly similar to the trademark “BFGOODRICH” in which the Complainant has rights.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any right or legitimate interests in respect of the domain names (Article 3 (b)(ix)(2) of the Rules and Article 4 (c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- Whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- Whether the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

In the absence of any response by the Respondent to the Complainants’ cease and desist letters or to the Complaint itself, there is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering any of the Domain Names in issue.

In particular, the Respondent has not been commonly known by the Domain Names nor has been authorized or licensed to use the Complainants’ trademarks MICHELIN and BFGOODRICH as part of the Domain Names.

Neither can the Respondent to claim that he was unaware of the MICHELIN trademark, which has been registered in his country since 1974 – long before the Respondent registered the Domain Names incorporating this trademark. Likewise, the Respondent must also have been aware of the BFGOODRICH trademark which is also well-known in the tires’ business.

Furthermore, the adoption by the Respondent of Domain Names confusingly similar to the Complainant’s trademarks inevitably leads to the diversion of Michelin consumers to the Respondent’s websites and the consequential tarnishing of the Complainants’ well-known and valuable trademarks. In other words, the Respondent is trading for his own commercial gain on the good name and reputation of the Complainants’ businesses and trademarks, without any right or legal justification to do so.

Thus, the Panel concludes that the Respondent has no rights to nor legitimate interests in the Domain Names in issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. This list is not exhaustive but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.”

The Respondent has registered thirteen Domain Names each containing as an essential component the Complainants’ well-known and commercially valuable trademarks and several of them directing Internet users to other websites offering products and services competing with those offered by the Complainants. This has hardly happened by chance and, by exploiting the Complainants’ goodwill in their trademarks and the businesses that they designate, the Respondent is acting in bad faith.

Furthermore, by registering and using the Domain Names incorporating the Complainants’ trademarks, the Respondent is misleading consumers and Internet users into thinking that he is in some way sponsored or affiliated with the Complainants and their well-known businesses, which is not, in fact, the case. This, without any explanations by the Respondent to the contrary, of which none are forthcoming on the websites or otherwise, constitutes bad faith. See the case of eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 of January 18, 2001, where it was stated that:

“The Domain Name consists of the EBAY trademark plus the addition of the country name Korea. Because the Domain Name incorporates the identical EBAY trademark, a consumer or user of the Internet viewing a website located at the “www.ebaykorea.com” domain address would be likely to assume that the website or operator is somehow sponsored by or affiliated with eBay, when it is not.”

The failure to respond to the Complainants’ three ‘cease and desist’ letters and also to answer the Complaint and participate in the present proceedings, is, in the view of the Panel, further evidence of bad faith on the part of the Respondent. If the Respondent had any justification for registering the Domain Names in issue in the first place it is reasonable to assume that the Respondent would have taken these opportunities to put forward an answer in defense of his actions.

For all the foregoing reasons and also those advanced by the Complainants and summarized above, the Panel concludes that the Respondent has registered and is using the Domain Names in issue in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names

<bfgodrich.com>
<bfgodrichtires.com>
<ciamichelin.com>
<giamichelin.com>
<iamichelin.com>
<michelinmen.com>
<michelinsports.com>
<vaimichelin.com>
<vamichelin.com>
<vioamichelin.com>
<voamichelin.com>
<wwwbfgoodrichtires.com>
<www-viamichelin.com>

be transferred to the Complainants.


Ian Blackshaw
Sole Panelist

Dated: February 8, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-1095.html

 

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