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Compagnie Générale des Établissements Michelin - Michelin & Cie v. Manuel Manero Peláez [2001] GENDND 934 (11 May 2001)

1. The Parties

Complainant is Compagnie Générale des Établissements MICHELIN - MICHELIN & CIE, a French company with its domicile at F- 63040 Clermont-Ferrand Cedex 1, France, represented in this proceeding by Mr. Mario De Justo, Esq., of JACOBACCI & PERANI - M. DE JUSTO, of Madrid, Spain.

Respondent is Mr. Manuel Manero Peláez, with an address at Avda. Eulza, 19 4 D, Barañain, E–31010 Navarra, Spain.

The domain name at issue is <guiamichelin.net>, registered with Network Solutions, Inc., of Herndon, Virginia, USA.

On February 9, 2001 a complaint in accordance with the ICANN Policy, its Rules, and the WIPO Supplemental Rules was submitted to the WIPO Arbitration and Mediation Center (the "Center"). On February 13, 2001 the complaint was submitted in hardcopy. On February 14, 2001 the Center acknowledged receipt of the latter. On

February 16, 2001 the Center sent its request for verification of registration records to the Registrar. On February 21, 2001 Network Solutions sent its reply to the Center.

On February 16, 2001 the Complainant submitted a supplementary filing, calling the attention of the Center to WIPO Case No. D2000-1414, allegedly similar to the present case, which in Complainant’s belief should be taken into consideration when rendering a decision in this case.

On February 27, 2001 the Center sent to the Respondent the notification of complaint and the commencement of administrative proceeding. The notification of complaint included a notice that the response should be sent on or before March 18, 2001. On March 19, 2001 the Center sent to the Respondent a notification of Respondent's default. The Panel has independently reviewed the case file, and finds that the Center has made all reasonable efforts in complying with Rules, Paragraph 2(a).

The Panel independently agrees with the Center's assessment of February 27, 2001, that the complaint complied with the formal requirements of Rules and Supplemental Rules, and that fees were paid.

On May 2, 2001, after having received Roberto A. Bianchi’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed him as a sole panelist. The deadline for rendering a decision on the merits is May 15, 2001. The Panel finds that it has been properly constituted.

The complaint was filed in English, except for some annexes in Spanish. The registration agreement was done and executed in English. The Panel finds that the language of this administrative proceeding shall be English (Rules, Paragraph 11). No translations are required of the annexes in Spanish because the Respondent and the Panel know and use this language.

No orders were issued. No extensions were granted.

The following facts and circumstances, because they have been alleged and satisfactorily evidenced by Complainant, and have not been contested by Respondent by its default, are being held as true by the Panel:

Complainant is the publisher of the tourist, restaurant and accommodation MICHELIN guides. It is also the manufacturer of the MICHELIN tires. The Spanish word for the (English and French) word "guide" is "guía". Accordingly, "Guía Michelin" means "Michelin Guide" in English or "Guide Michelin" in French. The Panel accepts without any effort that the MICHELIN trademark is famous, at least covering "guides" and "tires". See WIPO Case No. D2000-1414 Compagnie Générale des Établissements MICHELIN - MICHELIN & CIE v. Tgifactory decided on January 30, 2001, page 4, finding that the MICHELIN mark is famous, and that the Michelin Guides are notorious.

Complainant is the owner of numerous trade and service mark registrations of the word MICHELIN both internationally and in many countries: International TM No. 348,615 MICHELIN, which protects products in many classes, including "Guides" ("Guías" in Spanish), together with maps and all kinds of publications in class 16 of the current International Classification. Complainant’s International TM No. 457,819 MICHELIN also protects class 16 products on paper, printed matter, etc.. International TM No. 574,577 MICHELIN protects "Tourist guides" ("Guides touristiques") in class 16, apart from other classes, products and services.

Complainant owns many other trademarks that contain the word MICHELIN, either alone or with other components, protecting almost all kinds of activities, products and services: International TM No. 492,542 MICHELIN, which protects advertising services in class 35 or education and leisure services in class 41; International TM No. 348,615 MICHELIN, which protects products in many classes, including "Guides" ("Guías" in Spanish), together with maps and all kinds of publications in class 16; International TM No. 457,819 MICHELIN also protects class 16 products on paper, printed matter, etc., like the aforementioned; International TM No. 574,577 MICHELIN protects "Tourist guides" ("Guides touristiques") in class 16, apart from other classes, products and services.

On several occasions, Complainant’s attorney and representative in these matters,

Mr. Mario De Justo, warned the Respondent that the domain name registration that it should be cancelled or transferred to Complainant.

As a response to Complainant’s requirement Respondent alleged that at the time he applied for the domain name <guiamichelin.net>, it was available and not registered by Complainant and, therefore, he was allegedly entitled to obtain and maintain said domain name. Furthermore, he informed the Complainant that he was preparing a web page where he intended to use Complainant’s trademark MICHELIN and make reference to the GUIA MICHELIN or MICHELIN GUIDE.

The service agreement between Network Solutions and the registrant-Respondent incorporates the ICANN Policy by reference. Respondent not having cancelled its registration, the Policy is applicable and this Panel has jurisdiction to decide the present dispute. Respondent has not contested the Panel's competence.

A) Complainant contends, inter alia, the following:

- The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The domain name registration is identical, enters into direct conflict and may be confused with the world-famous trademark MICHELIN belonging to the Complainant.

- The domain registration is formed by the generic Spanish word GUIA ("GUIDE" in French and English), referring to an informational tourist publication in relation to hotels, restaurants, monuments, etc., which has been published by the Complainant with its trademark MICHELIN for many years and is famous all over the world.

- The Complainant does not have a trademark registration for GUIA MICHELIN because it is unnecessary. In the same way as it does not have the expression NEUMATICOS MICHELIN (in spite of being one of the most important tire manufacturers in the world) or the expression MAPAS MICHELIN (in spite of being one of the most famous road map publishers in the world) registered as trademarks.

- It is obvious that the expression and domain registration <guiamichelin.net> is associated solely and exclusively with the Complainant and everybody relates it to the Complainant’s world-famous product and publication, as the Respondent also acknowledges.

- The objected domain registration was filed to misappropriate the world-wide fame, prestige, credibility and renown of the Complainant’s trademark MICHELIN and the expression GUIA MICHELIN.

- Millions of copies of the Complainant’s publication called in Spanish GUIA MICHELIN, have been published and distributed for many years and it is well-known throughout the world.

- Respondent has no rights or legitimate interests in respect of the domain name.

- The domain name was registered and is being used in bad faith.

- It is obvious that when the web page intended by Respondent starts to work there will be, of course, errors and confusion on the part of the public who, logically, as could not be otherwise, will think that the domain name <guiamichelin.net> is obviously related to the famous GUIA MICHELIN (and this is exactly the intention of the Respondent) and the Complainant’s world-famous trademarks MICHELIN.

B) Respondent

Respondent is in default.

As stated in WIPO Case No. D2001-0128 Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. and Ermenegildo Zegna España S.A v. Ocxon Media S.A., also a default proceeding, according to the Rules, in case of failure by the respondent to provide a response to the allegations of the complainant – as in the present case - the Panel is directed to decide the administrative proceeding on the basis of the complaint (Paragraph 14 (a)), and "shall draw such inferences therefrom as it considers appropriate" (Paragraph 14 (b)).

A respondent has generally in his hands the opportunity to provide evidence refuting the claims and contentions of the Complainant; if he does not offer such evidence, it may be inferred that such evidence would not have been favorable to him, or that he finds the statements of the Complainant right, or else that his interest in the domain name is so scarce that it is not worth his while to respond. In any case, silence is a choice of the Respondent, so if he does bring forward doubts or contradicts the statements of the Complainant, the latter shall prove the three elements required by the Policy without further opposition than his own ability to explain them. (See: Franpin, S.A. v. Paint Tools, S.L,. WIPO Case No. D2000-0052; InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; Easyjet Airline Company Ltd. v. Andrew Steggles, WIPO Case No. D2000-0024; Bartecard Ltd. & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177 or Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493).

Notwithstanding the above, the Panel must in any case establish whether the complaint succeeded in proving that each of the three elements listed in Paragraph 4(a) of the Policy are present (see Deutsche Bank AG v. Diego-Arturo Bruckner -WIPO Case No. D2000-0277). Indeed, as held in Cortefiel S.A. v. Miguel Garcìa Quintas - WIPO Case No. D2000-0140, the Panel should not decide in the complainant’s favor solely given the respondent’s default.

Complainant has evidenced sound rights in the trademark MICHELIN. Most - if not all - the trademark registrations pre-date the domain name registration. A comparison of the domain name at issue and the trademark results in this Panel's finding of confusing similarity. The addition of "guía" to the distinctive portion MICHELIN corresponding to Complainant’s famous mark, and the inclusion of the gTLD ".net" are not sufficient to distinguish the domain name from the trademark. As "guía" has a generic meaning, the addition of this word only reinforces the impression that the domain name is directly referring to one of the main products protected by Complainant’s mark: the MICHELIN GUIDE. See WIPO Case No. D2000-1414, page 4.

Additionally, Respondent itself has acknowledged in its letter of July 25, 2000 to Complainant that the "Guía Michelin" is célèbre (Spanish for "most famous" or "illustrious").

Complainant has met its burden of evidencing that the first prong of the Policy is present (Policy, Paragraph 4(a)(i)).

On May 8, 2001 the Panel tried to connect to the <www.guiamichelin.net> web page. This resulted in an error message stating that the web page cannot be reached, which means that for all practical purposes the web site is inactive. In a default case a lack of use generally prevents a panel to infer that the domain name in being used bona fide, or in a fair or noncommercial manner. As Respondent is in default there is no submission in its favor that Respondent has been commonly known by the domain name, either. All this means that none of the circumstances listed in Policy, Paragraph 4(c) is present in this case.

According to Complainant’s allegation and evidence, in its reply to the cease-and-desist letter of Complainant, Respondent stated that he registered the domain name at issue because Complainant failed to do so. This blunt statement cannot be admitted as a legitimate basis for establishing rights or interests in a domain name. As in WIPO Case No. D2000-1268 FRAVEGA S.A. v. Alejandro Razzotti, decided on December 6, 2000 by granting the remedy of transfer,

"[t]he Panel considers that mere registration cannot be the sole basis for establishing rights or legitimate interests in a domain name. The Panel accepts in this respect the reasoning by the learned panelist in WIPO Case No. D2000-0044 Educational Testing Service v. TOEFL (page 6):

The Panel considers that Respondent's statement of July 2000 about its preparations to develop a web site are most revealing about its lack of legitimate interests. Policy, Paragraph 4(c)(i) requires that in order for such preparations to be afforded any credibility they must be demonstrable and prior to the dispute ("before any notice to you of the dispute, your 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"). In the instant case, such intended preparations are described by Respondent (after having come to know of the dispute) in such a manner that they are neither demonstrable nor aimed at a bona fide offering of goods or services, but at an offering which would be predatory of the fame of the Michelin guides. Respondent's intention has quite reasonably been rejected by Complainant.

Under these circumstances, the Panel finds that Complainant has evidenced that Respondent lacks rights and legitimate interests in the domain name (Policy, Paragraph 4(a)(ii)).

As evidenced by its letter to Complainant of July 25, 2000, at the moment of registration Respondent had an actual knowledge of Complainant’s mark and its most famous (célèbre) Guía Michelin. Respondent's projected use of the web site corresponding to the domain name was described as providing a site where Respondent’s clients and others could find the Guía Michelin.

This means that Complainant was justified when it rejected such intended use by Respondent, in particular bearing in mind that Policy, Paragraph 4(b)(iv) describes as a circumstance of bad faith registration and use the following:

"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."

The web site is at present totally inactive. On the other part, Respondent in its letter of July 25, 2000 to Complainant has expressly stated that it intends to use the web site to provide some kind of services to his customers (clientes in Spanish). This can only mean that the intended use of the web site to be developed will be aiming at a commercial gain. Although due to the lack of any present use of the web site there is no way to precisely foresee what kind of business the Respondent does have in mind, it would not be fair to Complainant to wait until effective use of the site takes place..

The Panel bears in mind that Respondent had already stated that it intended to take profit of the well known nature of Complainant’s Guía Michelin. This equals to unfairly benefit of the almost sure confusion resulting in using the name of the famous Complainant’s guide to attract Internet surfers to Respondent’s site for a commercial gain. As Respondent has not replied to Complainant’s offer to reimburse just the registration costs, one cannot but infer that the most likely purpose of Respondent’s registration was in fact to make an illegitimate profit at the expense of Complainant’s prestige (and pockets).

In whole, Respondent’s statements show that the circumstance of bad faith registration under Policy, Paragraphs 4(b)(iv) and 4(a)(iii) is present.

Although the web site is presently inactive, this does not mean that the domain name is not being used, and particularly, that it is not being used in bad faith. As in several other cases, this Panel - and many other WIPO panels as the one deciding WIPO Case No. D2000-1414- accept the sound criterion established by the learned panelist who decided the Telstra WIPO Case No. D2000-0003, where inactivity, if relevant circumstances were present, allowed a finding of bad faith (because amounting to positive bad faith action).

In the present case the following relevant circumstances have been found by the Panel to be present:

a) Respondent has not shown that it is using or preparing to use the domain name for any legitimate purpose. It has, to the contrary, stated that he intends to use the web site specially referring to the well known character of the Guía Michelin, one of the main products of Complainant.

b) Respondent openly acknowledged in its letter of July 25, 2000 that the future users or visitors of its web site would be undoubtedly attracted by Complainant’s name and famed guide. Had Complainant not reacted by initiating this proceeding, Respondent might already be using the web site in a manner contrary to sound trademark rights of Complainant.

c) The permanence of the present domain name registration, should the web site remain inactive, could cause Internet users to believe that Complainant does not have a web site, or that it is unable to maintain one. Alternatively, the intended use as stated by Respondent in its letter of 2000 allows to infer that it will be exactly the one described in Policy, Paragraph 4(b)(iv).

d) Being one of the main services of Complainant to provide information on countries, cities, places, restaurants and accommodation in its famous guides, it appears quite natural for any Internet user that the web site <www.guiamichelin.net> does in fact belong to Complainant and not to anybody else unauthorized by Complainant and without any rights or legitimate interests in the domain name. Instead, Respondent would be using Complainant’s mark and the name of one of its main products as a lure for attracting Internet users to Respondent’s own site.

e) Respondent is a national or a resident of Spain. Complainant has selected the Spanish Courts’ jurisdiction should Respondent challenge the present decision.

Under Spanish trademark and unfair competition law - which may be looked to as the applicable national law before the Spanish Courts - a trademark such as the famous MICHELIN mark would most likely be judicially protected against any unauthorized use such as the disputed domain name registration. See WIPO Case Nos. D2000-0143 RAIMAT, S.A. v. Antonio Casals, D2000-0162 Cortefiel, S.A. v. The Gallery Group, D2000-0219 URALITA, S.A. v. Rafael del Rosal Macías, D2000-0467 METRO BILBAO, S.A. v. Ignacio Allende Fernández, D2000-0592 CANONAIS, S.L. v. María Dolores Díaz Ros, D2000-0779 SOCIEDAD ESPAÑOLA DE RADIODIFUSIÓN, S.A. v. Javier Ferrandiz Paya, D2000-0883 ANTENA 3 DE TELEVISIÓN, S.A. v. Pedro González Ibánez, D2000-1026 Bodegas Vega Sicilia, S.A. v. www.portaldedominios.com, D2000-1042 Don Algodon H, S.A. v. Miguel García Quintas, D2000-1184 DORPAN, S.L. and SOL MELIÁ, S.A. v. Heros Safarian Boghosian, D2000-1220 GRUPO PICKING PACK, S.A. v. Próspero Moran and ASTURNET, S.L., and D2000-1250 CLESA , S.A. v. VESA TECNOLOGIAS, S.L. .

The Panel thus finds that the domain name is being used in bad faith (Policy, Paragraph 4(a)(iii)).

The Panel found that the domain name <guiamichelin.net> is confusingly similar to Complainant’s mark MICHELIN, that Respondent lacks rights or legitimate interests in the domain name, and that the domain name was registered and is being used in bad faith by Respondent.

The Panel requires, pursuant to Policy, Paragraph 4(i) and Rules, Paragraphs 14(a) and 15, that the domain name registration of <guiamichelin.net> be transferred to Complainant, Compagnie Générale des Établissements MICHELIN - MICHELIN & CIE.

Roberto A. Bianchi
Sole Panelist

Dated: May 11, 2001