International tyre giant, Michelin, has been successful in its bid to prevent an individual in Japan from trading under the domain ‘Michelin-wine.tokyo’.
The domain had been registered to a wine delivery service website, that featured 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”.
Michelin own several namesake trademarks for Japan in 15 different classes. Upon discovery of the infringement, the company filed a complaint with the WIPO Arbitration and Mediation Centre. Michelin claimed that the nature of the website along with its domain name, could create consumer confusion and that it takes advantage of Michelins’ considerable international reputation for high standards.
In 1920, Michelin published the Michelin Guide as a helpful guide for motorists to plan their trips in an age without internet. The Michelin Guide evolved, and I now most known for its Michelin Stars. Michelin Stars are awarded to distinguished dining establishments and they’ve become an internationally renowned symbol for quality.
The WIP ruled:
“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’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
Image credit: Unsplash
