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Compagnie Générale des Établissements Michelin - Michelin et Cie v. Petdorf Racing [2005] GENDND 279 (27 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Établissements Michelin - Michelin et Cie v. Petdorf Racing

Case No. D2005-0210

1. The Parties

The Complainant is Compagnie Générale des Établissements Michelin - Michelin et Cie, Clermont-Ferrand, France, represented by Cabinet Dreyfus & Associés, France.

The Respondent is Petdorf Racing, Peter Stallybrass, Richmond Hill, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <hondamichelinchallengeseries.com> is registered with DomainPeople.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2005. On February 24, 2005, the Center transmitted by email to DomainPeople a request for registrar verification in connection with the domain name at issue. On February 25, 2005, DomainPeople 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 March 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2005.

The Center appointed Anders Janson as the sole panelist in this matter on April 13, 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 Complainant asserted, and provided evidence in support of, the following facts, which the Panel finds established:

The Complainant, Compagnie Générale des Établissements Michelin - Michelin et Cie, is established under the laws of France in 1889. The Complainant designs, manufactures and markets tires for several vehicle industries, and is involved in vehicle racing and rallies. The Complainant also offers services regarding travel assistance, with maps and guides.

The Complainant has a business presence in more than 170 countries world wide, and supplies a range of more than 36 000 products.

The Complainant has used and promoted its trademark “MICHELIN” for more than a century, and owns numerous trademark registrations worldwide. The Complainant’s trademark portfolio includes the following registered trademarks.

- MICHELIN, trademark no 1392599, registered in France on January 1987, for the classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;

- MICHELIN, trademark no 214 191, registered in Canada on June 11, 1976, for classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;

Furthermore, the Complainant owns and actively runs a vast number of domain name related to its trademark MICHELIN, such as <michelin.com> and <michelin.fr>.

The Panel finds it established that the MICHELIN trademark is very well known. It is registered and used in commerce around the world and widely known throughout. Panels in previous UDPR cases have previously considered this to be a fact (inter alia, Compagnie Générale des Établissements Michelin - Michelin et Cie v. Graeme Foster, WIPO Case No. D2004-0279, and Compagnie Générale des Établissements Michelin - Michelin et Cie v. Mikkel Nielsen), WIPO Case No. D2001-0660.

The Respondent is an individual with a stated address in Richmond Hill, Ontario, Canada.

A cease and desist letter was sent by the Complainant to the Respondent. The Respondent has failed to answer.

The disputed domain name was registered by the Respondent with Domainpeople Inc. on February 18, 2004. The website does not resolve to a website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;

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

- The domain name has been registered and are being used in bad faith; and

- The domain name <hondamichelinchallengeseries.com> should be transferred to the Complainant

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The domain name at issue is <hondamichelinchallengeseries.com>. Complainant is the holder of several trademarks. The trademarks are very well known.

The Complainant has asserted that the disputed domain name consists of the trademark MICHELIN in its entirety, with a prefix “HONDA”, a trademark owned by a famous Japanese car manufacturer and the added words “challenge” and “series”. The combination of these words suggests a cooperation of both companies for racing or rallies, in particular since both trademarks are owned by companies under the same scope of business.

The words “challenge” and “series” are generic and do not convey any distinctiveness to the disputed domain name. The meaning of the words is associative with racing. As such, adding the words “challenge” and “series” to the trademarks MICHELIN and HONDA emphasize the risk for confusion for Internet users.

The Panel finds it established that the trademark “MICHELIN” is very well known and that the ownership of the trademark belongs to the Complainant. The Panel further finds it established that the disputed domain name is confusingly similar to the Complainants’ trademark.

The Panel notes that the Complainant has stated that the owner of the trademark HONDA does not object to the disputed domain name being transferred to the Complainant as a result of these proceedings. The Panel finds no reason not to accept this allegation.

In conclusion, the Panel finds that the Complainant has provided statements to support a finding that the disputed domain name and the trademark of the Complainant are confusingly similar.

The Panel holds that the Complainant has established element (i) of the Policy’s Paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent is not and has never been affiliated to the Complainant. The Complainant has not authorized the Respondent to use and register its trademarks and service marks, or to seek the registration of any domain name. There is no evidence of the Respondent’s use of, or demonstrable preparation to use the domain name with a bona fide offering of goods and services.

Complainant has put forward a prima facie showing of lack of Rights and Legitimate Interests. The Respondent has not presented any evidence of any rights or legitimate interests in using the disputed domain name.

The Panel therefore holds that the Complainant has established element (ii) of the Policy’s Paragraph 4(a).

C. Registered and Used in Bad Faith

The Complainant has asserted that the Respondent knew or must have known of the Complainant when registering the disputed domain name. The Respondent’s name also indicates a connection to racing, which even further would suggest knowledge of the Complainant and its trademark.

The Complainant has put forward evidence that Michelin is involved in numerous sports events such as races and rallies and especially in a special racing series named “Honda Michelin Challenge Series.” Information about such events can be found on the Internet. The Panel finds that the Respondent must, at the time it registered the domain name, have been aware of Complainant’s activities (Annex 13).

The disputed domain name has not been in active use, and the Complainant asserts that the Respondent’s sole purpose of registering the disputed domain name has likely been to prevent the Complainant from registering the disputed domain name.

Considering that the Complainant’s trademark MICHELIN is famous, that the disputed domain name includes the very wording of the Complainant’s racing event, and that the domain name is not in active use, the Panel finds that the Respondent registered and is using the disputed domain name 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 name <hondamichelinchallengeseries.com> be transferred to the Complainant.

Anders Janson
Sole Panelist

Dated: April 27, 2005