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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin, Michelin & Cie v. Mitchell J. Newdelman
Case No. D2001-0512
1. The Parties
The Complainant in this administrative proceeding is Compagnie Générale des Etablissements Michelin, Michelin & Cie, based at 12, cours Salbon, 63000 Clermont-Ferrand, France.
The Complaint was filed against Mr. Mitchell J. Newdelman, based at Villa Jeanique 20, av. Villarem 06, 190 Roquebrune Cap Martin, France. Since the disputed Domain Name has not only been registered in the name of Mr. Newdelman but also in the name of Infinex International Ltd, based at Milner House, 18 Parliament Street, Hamilton, HM12, Bermuda (see point 3 below), the Panel considers this Complaint as being also directed against this company. The term "Respondent" thus refers to both Mr. Newdelman and Infinex International Ltd. (for more details on the identity of the Respondent, see Point 6 A below).
2. The Domain Name and Registrar
The domain name at issue is:
(hereafter "the Domain Name").
The Domain Name is registered with Register.com, Inc., c/o Customer support/Domain Name Disputes, based at 575 8th Avenue, 11th Floor, New York, NY 10018, USA.
3. Procedural History
The Complainant filed a Complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on April 6, 2001.
On April 10, 2001, the Center acknowledged Receipt of the Complaint.
On April 11, 2001, the Center transmitted to Register.com a request for Registrar Verification in connection with this case so as to:
- confirm that the Domain Name at issue is registered with Register.com;
- confirm that the person identified as the Respondent is the current registrant of the Domain Name;
- provide full contact details, i.e. postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrar’s WHOIS database for the registrant of the disputed Domain Name, the technical contact, the administrative contact and the billing contact for the Domain Name.
The same day, Register.com responded to the Center’s request for Registrar Verification and confirmed that Register.com is the Registrar of the Domain Name <guide-michelin.com>. It indicated that the Domain Name was registered in the name of Infinex International Ltd. and Mr. Mitchell Newdelman, who are also listed as administrative and billing contacts.
On April 12, 2001, the Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The undersigned has reviewed the documentary evidence provided by the Parties and the Center and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the ICANN Rules and the Supplemental Rules.
The administrative proceeding commenced on April 12, 2001. The same day, the Complaint was notified to Respondent.
On April 30, 2001, Respondent filed a Response, the receipt of which was acknowledged by the Center the same day.
Upon receipt of the necessary Declaration of Independence and Impartiality, the Center appointed the undersigned on May 9, 2001, to serve as sole Panelist in this administrative proceeding.
On May 10, 2001, Complainant submitted additional comments ("Complainant’s Additional Comments") to the Center, which were transmitted to the undersigned the same day.
Having decided to accept this submission, the undersigned granted Respondent, in application of Rule 12 of the Rules, a deadline until May 21, 2001, to submit additional comments in reply to Complainant’s second submission. This decision was communicated to the parties on May 14, 2001.
Respondent’s observations were received by the Center on May 15, 2001, ("Respondent’s Additional Comments").
4. Factual Background
The Complainant is a well-known French company, which manufactures and sells tyres. More important for the present administrative proceeding, Michelin & Cie is also well known for its travel publications, including the famous gastronomic and hotel guide book named "The Red Guide", previously known under the name "Guide Michelin".
In the year 2000, Michelin & Cie assured a business presence in more than 170 countries and sold approximately 595,000 Red Guides (Complaint p. 7).
The Complainant states that the <Michelin> trademark has been protected for more than a century and is nowadays registered in most countries. Under Annex F of the Complaint, Complainant provides the details of the trademark registration in France, where Mr. Newdelman is located.
The Domain Name <guide-michelin.com> was registered on April 8, 2000, in the name of both "Infinex International Ltd." and "Mitchell Newdelman". On April 10, 2000, Mr. Newdelman sent a letter to the tourism service of Complainant with a joint venture proposition, between Michelin & Cie and Infinex International Ltd., related to the web site <guide-michelin.com>. According to Mr. Newdelman’s suggestion, this website should be used so as to facilitate reservations in hotels and restaurants mentioned in the Red Guides, in return of a certain percentage for each reservation. Infinex’s contribution would consist in the creation of the database and in marketing/promotion. (Complaint Exhibit K). Pursuant to Respondent's allegation, its business proposition was turned down by Michelin late April or early May 2000, by phone (Response p. 7).
In fall 2000, Complainant hired a private detective, who contacted Respondent under the made-up name "Alix Genin". Pursuant to Complainant’s allegation, which is denied by Respondent, the latter told the private detective that the Domain Name in question was "available" and that he would consider transferring it (Complaint, p. 12; Response p. 8). In Response to an e-mail of "Alix Genin", dated December 1, 2000, Mr. Newdelman sent the private detective an attachment entitled "Infinex International Ltd. Selected Existing Domains Avail for Transfer". This list included two domain names incorporating famous trademarks, namely the domain name at issue <guide-michelin.com> and <Davidoff-on-Line-com>. However, behind both domain names, it was specifically stated that Respondent had no authority from Michelin and Davidoff, respectively (Complaint Exhibit D and E; Complaint p. 12 f; Response, p. 9).
On February 4, 2001, Complainant sent a letter to Mr. Newdelman, requesting Respondent to immediately cease and desist any use of the <Michelin> trademark and to agree to the transfer of the domain name to Michelin & Cie (Complaint Exhibit I).
Respondent answered this request in a letter dated March 1, 2001, (Complaint Exhibit K). He referred to the business proposition submitted to the Tourism Service of Complainant a year earlier, stating that he decided to let the Domain Name expire after Michelin had refused his suggestion. Respondent also pointed out that he had already been solicited by the Registrar to renew the Domain Name, but that he refused to do so with the intention to wait for the expiry of the Domain Name on April 10, 2001 (Complaint Exhibit K).
Complainant did not reply to this letter and filed this administrative proceeding on April 6, 2001.
Upon receipt of the Complaint, Respondent contacted Complainant to point out that the domain name registration had expired on April 8, 2001, according to the "WHOIS" inquiry (Response Exhibit "E-mail 1").
On April 23, 2001, Respondent submitted a settlement offer to Complainant at the following terms: Infinex International Ltd. and Mr. Newdelman would immediately transfer any and all rights to renew the Domain Name to Michelin & Cie. Complainant would withdraw the WIPO Complaint immediately thereafter (Response Exhibit "E-mail 4").
Complainant refused this settlement proposal on April, 24, 2001, making a counter-offer according to which the WIPO proceeding would be suspended so as to allow Respondent to renew the Domain Name and to transfer it to Complainant therafter (Response Exhibit "E-mail 5").
In response to Complainant’s e-mail, Respondent agreed on April 24, 2001, to the suspension of the administrative proceeding instead of its withdrawal, but refused to renew and transfer the domain name on the basis that he had already confirmed his intention not to ask for its renewal (Response Exhibit p. 35).
To the Panel’s knowledge, Complainant did not answer to this offer.
5. Parties’ Contentions
The Complainant alleges that the Domain Name is identical or confusingly similar to the <Michelin> trademark.
It points out that Respondent has no rights or legitimate interests in the Domain Name, since he is neither a licensee of Complainant nor otherwise authorized to use Complainant’s mark and has admitted himself in his letter of March 1, 2001, to having "no right, no title, and no interest in the name "Michelin"; full stop." (Complaint Exhibit K, Complaint p. 11).
Complainant contends that the Domain Name has been registered and is being used in bad faith. This allegation is mainly based on the allegation that Respondent attempted to sell the Domain Name for an amount exceeding out-of-pocket expenses to "Alix Genin", the private detective hired by Complainant with a view to gathering evidence against Respondent (Complaint p. 14). In Complainant’s view, Respondent’s intention to exploit the Domain Name for monetary purposes is corroborated by Mr. Newdelman’s business proposition to Michelin & Cie, which has been described in more detail above. Moreover, Complainant points out that Respondent owns more than 50 Domain Names, two of which incorporating famous trademarks. This is to be considered sufficient indicia, in Complainant’s opinion, that Respondent is a cybersquatter. Lastly, Complainant sees an indication of bad faith in Respondent’s refusal to transfer the Domain Name to Michelin & Cie.
Preliminarily, Mr. Newdelman requests the Complaint be dismissed based on the two following procedural grounds: firstly, he alleges that the Complaint has been filed against the wrong party, the Registrant of the Domain Name being Infinex International Ltd. and not Mr. Newdelman. Secondly, it is contended that an expired domain name is not covered by the Policy because Infinex International Ltd. (or Mr. Newdelman) have ceased to be the legal Registrant of the Domain Name and therefore are unable to transfer or cancel it (Response p. 4).
Should the Complaint not be dismissed on these grounds, Respondent contests that the Domain Name has been registered and is being used in bad faith. The allegation made by Complainant’s private investigator, according to which Mr. Newdelman mentioned that the Domain Name is available and offered it for sale is refuted. To the contrary, Mr. Newdelman contends that he specifically drew "Alix Genin’s" attention to the fact that Michelin’s approval was necessary for the use of the Domain Name (Complaint p. 8). Furthermore, he alleges that he registered the Domain Name with a view to making a valuable business proposition to Michelin, which cannot be considered an act of bad faith. This conclusion is also based on the fact that the Respondent has never used the Domain Name after Michelin’s refusal of his business proposition and decided to let it expire.
6. Discussion and Findings
A. Preliminary Objections
Before deciding on the merits of this case, the Panel is going to examine the preliminary procedural objections raised by Respondent.
(i) Respondent’s identity
The Panel rejects Mr. Newdelman’s contention that the Complaint is directed against the wrong entity on the following grounds:
As can be seen from the WHOIS inquiry, the Domain Name is registered in the name of both "Infinex International Ltd." and "Mitchell Newdelman". Respondent’s contention that his name is listed under "Infinex International Ltd." has no bearing in this matter (Respondent’s Additional Comments, p. 1 and 2).
Moreover, as Complainant pointed out, the Registrant’s phone number indicated in the WHOIS database does not refer to Infinex International Ltd., based in Bermuda, but to Mr. Newdelman’s residence in France.
In this context, it has to be stressed that it was Mr. Newdelman who approached Michelin & Cie with a business proposition after the registration of the Domain Name. All subsequent contacts, correspondence and negotiation between the parties were carried out between Complainant and Mr. Newdelman. The latter did at no time before this administrative proceeding mention that he was not the owner of the Domain Name and had no competence to dispose of the Domain Name without the consent of other people having the power to represent Infinex International Ltd.
It was also Mr. Newdelman who filed a very elaborate Response and the Observations to Complainant’s additional submission in this administrative proceeding.
In the light of the foregoing, Complainant could legitimately assume that Mr. Newdelman had the power to duly represent Infinex International Ltd.
Based on these facts, the Panel concludes that as far as this domain name dispute is concerned, Infinex International Ltd. is not an entity independent from Mr. Newdelman.
In fact, other WIPO Decisions have shown that it is relatively common for disputed domain names to be registered in the name of a company rather than in the name of the individual who has actually registered and controls the domain name. This problem is commonly solved by privileging the factual ownership of the Domain Name over a formal legal reasoning and to consider both the Company and the individual as the Respondent for the purpose of the WIPO proceeding (see WIPO Case No. D2000-1171 Migros Genossenschaftsbund (Federation of Migros Cooperatives) v. Centro Consulenze, Kim Paloschi; WIPO Case No. D2000-0226 Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net; WIPO Case No. D2000-1496 Guerlain S.A. v. Somsak Sooksripanich, Yahoo Thailand). In a case, where not only the company, but both the individual and the company are mentioned as the registrant, this solution seems all the more justified.
Hence in conformity with the results of the WHOIS inquiry, the Panel regards both Mr. Newdelman and Infinex International Ltd. as Respondent in the present proceeding.
(ii) The expiry of the Domain Name
According to the registrar verification response, which is relevant to determine whether the conditions for the administrative proceeding are fulfilled, Mr. Newdelman and Infinex International Ltd. are still listed as the Registrants of the disputed Domain Name. For this reason, the Panel is of the opinion that the Complaint is still justified and rejects Respondent’s second objection.
The fact that the Domain Name has expired will however be taken into account when examining the merits of this dispute.
B. The merits of the dispute
To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the 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 the Domain Name;
(iii) the Domain Name has been registered and used in bad faith.
These three elements will be considered below:
(i) Identity or Confusing Similarity
The Panel is of the opinion that the Domain Name <guide-michelin.com> is confusingly similar to the <Michelin> trademark. There is no doubt that the Domain Name at issue creates a strong association with Complainant’s trademark, firstly by incorporating the <Michelin> trademark, and secondly by referring to one of the most famous products of Complainant, the Michelin Guide.
(ii) Rights or Legitimate Interests
Complainant’s allegation that Respondent has neither been licensed nor otherwise authorized to use the <Michelin> trademark has not been disputed in the Response.
Moreover, Respondent has provided no evidence of any other legitimate ground for the use of the Domain Name in question.
In the light of the above, the Panel concludes that Complainant has satisfied the second condition of the Policy.
(iii) Bad Faith
The third element Complainant has to prove to succeed in its Complaint is registration and use of the Domain Name in bad faith.
It is beyond doubt that Respondent was aware of Complainant’s right in the <Michelin> trademark. As stated in the Response, Mr. Newdelman registered the Domain Name with the intention to address a business proposal to Michelin, which he did immediately after the registration (Response, p. 6). There are consequently indications that Respondent registered the Domain Name in bad faith.
However, to satisfy the conditions set out in Art. 4 (a) (iii) of the Policy, Complainant has not only to prove that the Domain Name was registered, but also that it is being used in bad faith. In other words, it is not sufficient to prove that Respondent was in bad faith when it registered the Domain Name. There must also be evidence "that the circumstances of the case are such that Respondent is continuing to act in bad faith" (WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows).
In the present dispute, it is important to point out that Respondent had informed Complainant before the Complaint was filed and only a few weeks before the expiry date of the Domain Name that he had renounced renewal and decided to let the Domain Name expire. Respondent confirmed this decision in subsequent correspondence and offered to sign a settlement agreement pursuant to which he would transfer the right to renew the Domain Name to Complainant.
In doing so, he clearly expressed his will to cease infringing Complainant’s trademark in near future, which is a sufficient indicia that the Domain Name is not being used in bad faith. Contrary to Complainant’s opinion (Complainant’s Additional Comments, p. 3), Respondent has no duty, under the circumstances of the present case, to take active measures which aim at preventing the Domain Name from being registered by a third party after its expiry. Moreover, it would have been sufficient to await the end of the two months grace period granted to Respondent by the Registrar to renew the disputed Domain Name before filing the WIPO proceeding.
The aforementioned result complies with an analysis under general principles of civil procedure. Indeed, the Complainant has lost (or never had) a legally protected interest to sue, in view of the fact that the Domain Name, the object of this procedure, has expired.
In the view of the above, the Panel concludes that Complainant has failed to satisfy the third element of the Policy.
In the light of the foregoing, the Panel concludes and decides that the Complaint be denied.
Dated: May 30, 2001