One of the biggest tyre manufacturers in the world the French company Michelin won a domain name dispute before the WIPO Arbitration and Mediation Center.
The case concerns a registered domain for michelin-wine.tokyo by an individual in 2020. This domain was used for website that offered wine delivery in Japan with the following message: “Starred sommelier carefully selected wine delivery service Michelin Starred selection. We will deliver 2 bottles of hidden wine that has not arrived in Japan every month”.
An interesting fact is that the French company publishes the MICHELIN Guide, that was launched for the first time in 1920 as a trip guide for motorists helping them to plan their trips. Later this guide was stared to be used for awarding stars for fine dining establishments. Nowadays Michelin Stars are one of the most valuable recognition for every restaurant around the world.
The company own several Michelin trademarks for Japan in classes 8, 11, 16, 20, 21, 24, 26, 35, 36, 39, 40, 41, 42, 44 и 45.
Finding the newly registered domain, the company filed a complaint with the WIPO Arbitration and Mediation Center. According to Michelin this domain infringes the rights over the earlier trademarks, what’s more the domain includes these marks entirely in its composition. Taking into account the nature of the website under this domain name, it could create consumer confusion taking advantages of the Michelin longstanding reputation.
WIPO Arbitration agreed and ruled for the transfer of the domain name to the French company. According to WIPO:
The Complainant owns international and Japanese trademark registrations for MICHELIN. The disputed domain name consists of “michelin”, “-wine” and a new gTLD, “.tokyo”. The disputed domain name entirely incorporates the Complainant trademark MICHELIN.
In the disputed domain name, the part “michelin” naturally attracts Internet users’ attention, and it is clearly recognizable. Moreover, the addition of “-wine” does not prevent a finding of confusing similarity.
The Complainant has never authorized the Respondent to use and register its trademark, or to seek registration of any domain name incorporating the Complainant’s trademark. Nevertheless, the Respondent’s website offers wine delivery services with such a message as “Starred sommelier carefully selected wine delivery service Michelin Starred selection. We will deliver 2 bottles of hidden wine that has not arrived in Japan every month”. The Respondent’s use of the disputed domain name cannot be recognized as use in connection with a bona fide offering of goods or services.
The Respondent is an individual whose name is Mai Miyota. The Panel sees no similarity between the Respondent’s name and the disputed domain name. Therefore, the Panel finds that the Respondent has never been commonly known by the disputed domain name.
The Respondent’s website offers wine delivery services with the above mentioned confusing message, which would likely mislead consumers to recognize the Respondent’s website as somehow related to the Complainant. Therefore, the Panel finds that the Respondent does not make a legitimate noncommercial or fair use of the disputed domain name. Rather, it is clear to the Panel that the Respondent has intent for commercial gain to misleadingly divert consumers.
Considering that the Complainant is famous for its publication “MICHELIN Guide”, the disputed domain name is easily associated with the Complainant. The composition of the disputed domain name affirms the likelihood of confusion (as it includes the trademark MICHELIN in its entirety with the added term “wine”), because it is well-known that MICHELIN Guide awards stars for fine dining establishments, and fine dining establishments often offer wines. In the present case, even the gTLD, “tokyo” may strengthen the confusion because Tokyo is a destination of many MICHELIN Guide users, and the Internet users can perceive the disputed domain name as somehow associated to the Complainant.
Source: WIPO.
INTELLECTUAL PROPERTY PLANET 