The Complainant is Compagnie Générale des Etablissements Michelin (Michelin) of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Zhichao Yang of Hefei, Anhui, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2013. On August 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2013.
The Center appointed David Perkins as the sole panelist in this matter on September 11, 2013. 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 4.1 The Complainant - Corporate History
4.1.1 The original pneumatic Michelin tire business dates from 1889 when it was carried on under the name Michelin et Cie. In 1940 that company was renamed Manufacture de Caoutchouc Michelin and in 1951 renamed again as Compagnie Générale des Etablissements Michelin [“CGEM”]. CGEM is the Complainant in this administrative proceeding. - International Operations
4.1.2 The businesses of the Complainant comprise manufacture of vehicle tires and the publication of maps and hotel / restaurant guides. Its 2012 Registration Document (exhibited to the Complaint) identifies its 8 Product Lines, the 8 Regions in which those products are distributed and sold, its integrated tire dealership networks in Europe and the United States, and its Research, Development and Process Engineering Centres in Europe, North America and Asia. It has 69 production facilities in 18 countries including China (the country where the Respondent is located), and marketing operations in 170 countries. It has 113,400 employees and achieved net sales in 2012 of Euro 21.5 billion. The Complainant has two manufacturing plants in China, one in Shanghai and the other in Shenyang. Its R&D centre and Head Office are in Shanghai. It has Sales Offices in Xian, Guangzhou, Chengdu, Shenyang and Shanghai and since 1988 it has also had a representative office in Hong Kong. China is the Complainant’s fastest growing market. 4.1.3 The MICHELIN trademarks
4.1.3.1 The Complainant is the proprietor of registered trademarks for MICHELIN worldwide. In previous decisions under the Policy, Panelists have considered MICHELIN to be a “well known / famous” mark. In that respect, the Complaint cites the decisions: Compagnie Générale des Etablissements Michelin v. Milan Kovac/ Privacy--P,WIPO Case No. D2012-0634 ; Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev,WIPO Case No. D2012-0384 ; Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / A Domain Privacy,WIPO Case No. D2012-0045 ; Compagnie Générale des Etablissements Michelin v. A Domain Privacy / Transure Enterprise Ltd., Host Master,WIPO Case No. D2013-0357 ; Compagnie Générale des Etablissements Michelin v. PrivacyP / Kim Bum LLC,WIPO Case No. D2013-0181 and Compagnie Générale des Etablissements Michelin v. A Domain Privacy and Transure Enterprise Ltd,WIPO Case No. D2013-0226 .
4.1.3.2 The Complaint provides particulars of the following registrations owned by the Complainant. Country Reg. No. Mark Class(es) Application and Registration
China
136,402
MICHELIN
12
February 23, 1979
China
9,801,172
MICHELIN
12
August 4, 2011 / October 7, 2012
International Registration*
771,031
MICHELIN
5, 7 to 12; 16 to 18; 20 - 21; 24 - 25; 39 and 42
June 11, 2001
The International Registration covers 52 countries, including China. 4.1.4 The MICHELIN Domain Names
The Complainant is the owner of a number of domain names incorporating the MICHELIN mark. Those listed in the Complaint are:
- registered December 1, 1993; and
- registered June 16, 2002 4.1.5 Cease & Desist Letter
A cease and desist letter dated March 14, 2013 was sent to the Respondent. No reply was received to that letter or to the 3 subsequent reminders dated March 22, 2013 and April 2 and 10, 2013. 4.2. The Respondent
In the absence of a Response, all that is known about the Respondent is that he registered the disputed domain name on September 3, 2012 and that it resolves to a pay-per-click website which contains commercial links to tires, including to websites of the Complainant’s competitors (for example, Firestone). 5.Parties’ Contentions 5.A. The Complainant 5.A.1 Identical or Confusingly Similar
5.A.1.1 The Complainant has rights in the well-known trademark MICHELIN. There are numerous registrations of that mark around the world and MICHELIN has a worldwide reputation.
5.A.1.2 The Disputed Domain Name incorporates the MICHELIN mark in its entirety. The suffix “ma” is either meaningless or an abbreviation for “man” (referring to the “Michelin Man”) or for “map” (referring to the well-known Guides Michelin).
5.A.1.3 Complainant’s case is that incorporation of the MICHELIN mark in its entirety establishes the “identical or confusingly similar” requirement of paragraph 4(a)(i) of the Policy regardless of the “ma” suffix. See, for example, RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin, WIPO Case No. D2010-1059 vs. Complainant’s RAPIDSHARE trade mark and Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150 vs. Complainant’s SWAROVSKI trade mark.
5.A.1.4 Additionally, the addition of a generic term is insufficient to avoid likelihood of confusion. See, for example, Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and A Domain Privacy,WIPO Case No. D2012-1453 vs. Complainant’s EUROMASTER trade mark; Swarovski Aktiengesellschaft v. Luo Li,WIPO Case No. D2012-1604 vs. Complainant’s SWAROVSKI trade mark; and Compagnie Générale des Etablissements Michelin v. isman to,WIPO Case No. D2012-0739 vs. Complainant’s MICHELIN trade mark. 5.A.2 Rights or Legitimate Interests
5.A.2.1 Complainant’s case is that , on the facts set out in paragraph 4.2 above, Respondent cannot bring himself within any of the circumstances set out in paragraph 4(c) of the Policy.
5.A.2.2 Specifically, Complainant’s trade mark rights [for example, as set out in paragraph 4.1.3.2 above] precede registration of the disputed domain in September 2012 and that Respondent is not licensed or otherwise authorised by Complainant to use the MICHELIN mark.
5.A.2.3 Further the Disputed Domain Name is so confusingly similar to the famous MICHELIN trade mark that it is inconceivable that Respondent could have used the Disputed Domain Name for a legitimate activity: see Policy paragraph 4(c)(iii). Indeed, as stated in paragraph 4.2 above, the Disputed Domain Name resolves to a pay-per-click website which displays commercial links to Complainant’s competitors in the tire business. Such cannot constitute a bona fide offering of goods or services: see Policy paragraph 4(c)(i).
5.A.2.4 Finally, there is no evidence that Respondent has been commonly known by the Disputed Domain Name: see Policy paragraph 4(c)(ii). 5.A.3 Registered and Used in Bad Faith
5.A.3.1 Complainant’s case is that, on the facts, the requirements of paragraph 4(b)(iv) of the Policy are met.
5.A.3.2 Specifically, as to registration in bad faith, it is inconceivable that Respondent could have registered the Disputed Domain Name in ignorance of Complainant’s rights in the well-known MICHELIN mark. Even if Respondent failed to check for trademark and/or domain name registrations of MICHELIN, the extent of Complainant’s business in China (the Respondent’s country) is so extensive that it is impossible that it was not known to the Respondent. Additionally, an internet search through Google would immediately have put the Respondent on notice of Complainant’s MICHELIN marks. Consequently, given the reputation of the MICHELIN trademark worldwide, including in China, registration in bad faith can be inferred. The Complaint cites numerous WIPO panel decisions under the Policy where registration in bad faith has been found in relation to similar marks. For example, Compagnie Gervais Danone v. Gueorgui Dimitrov / NETART,WIPO Case No. D2009-0901 vs Complainant’s well-known DANONE trademark and Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 vs Complainant’s famous NIKE trademark.
5.A.3.3 As to use in bad faith, Complainant asserts that Respondent “knew or should have known” of its rights in the MICHELIN mark but has, nevertheless, used the dispute domain name as described in paragraph 4.2 above. Such use of the disputed domain name, the Complainant says, falls squarely within the circumstances set out in paragraph 4(b)(iv) of the Policy.
5.A.3.4 Furthermore, use of the Disputed Domain Name without license or other authorization from the trademark owner - namely, the Complainant - has also been held to be a bad faith use. The Complaint cites Alstom, Bouygues v. Webmaster,WIPO Case No. D2008-0281 vs. Complainant’s BOUYGUES and ALSTOM trademarks.
5.A.3.5 Still further, use of the disputed domain name to generate pay-per-click revenue (see, paragraph 4.2 above) where the domain name incorporates a complainant’s well-known mark has consistently been held to constitute a bad faith use under paragraph 4(b)(iv) of the Policy. See, for example, F. Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956 vs the XENICAL registered trademark of Hoffman-le Roche for its prescription weight loss medication; L'Oréal SA v. LV Kefeng, WIPO Case No. D2009-1231 and vs Complainant’s well known L’OREAL and MAYBELLINE trademarks; and Christian Dior Couture v. Chen Takong,WIPO Case No. D2013-0053 vs Complainant’s famous DIOR trade mark.
5.A.3.6 Additionally, where the Disputed Domain Name is so confusingly similar to the Complainant’s trademark - as it is in this case - Panels have presumed that the “likelihood of confusion” prescribed in paragraph 4(b)(iv) of the Policy will inevitably result in diversion of Internet traffic from Complainant’s site to Respondent’s site. See, for example, MasterCard International Incorporated (“MasterCard”) v. Wavepass AS,WIPO Case No. D2012-1765 vs Complainant’s well known MASTERCARD trademark; and E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095 vs Complainant’s EDMUND’S US trademark.
5.A.3.7 Complainant also points to Respondent’s representations and warranties made under paragraph 2 of the Policy that, to his knowledge, registration of the Disputed Domain Name will not infringe upon or otherwise violate the rights of any third party. Such representation and warranty requires the registrant to verify that such infringement will not occur. On the facts of this case, given the well-known status of the MICHELIN mark, Respondent’s representation was manifestly false. In that respect, Complainant cites Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806.
5.A.3.8 Finally, Respondent’s failure to file a Response is indicative of bad faith. See, for example, Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269 vs Complainant’s NKIDS range of clothing for which it had US registered trade mark rights; and Groupe Auchan v. Registrant [1429578]: Broadcast Technology,WIPO Case No. D2009-0313 vs Complainant’s AUCHAN trade mark. 5.B.Respondent
The Respondent did not reply to the Complainant’s contentions. As noted, no Response has been filed. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent’s domain name 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy, paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interest in the domain name issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical and Confusingly Similar
6.5 Complainant has established trademark rights in the MICHELIN mark worldwide, including in China. It is, without doubt, a very well-known mark internationally.
6.6. For the reasons set out in the Complaint (summarised in paragraphs 5.A.1.2 to 4 above), the Disputed Domain Name is clearly confusingly similar to the Complainant’s MICHELIN trademark. Indeed, it is to all intents and purposes identical.
6.7 Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.8 On the facts set out in the Complaint, it is also clear that Respondent cannot demonstrate any of the circumstances set out in paragraph 4(c) of the Policy. The Complainant’s case summarised in paragraphs 5.A.2.2 to 4 is well made out.
6.9 Accordingly, the Complaint succeeds under paragraph 4a)(ii) of the Policy. Registration and Use in bad Faith
6.10 Both bad faith registration and use are, yet again, clear on the facts. The Complainant’s case summarised in paragraph 5.A.3.3 to 8 is well made out.
6.11 Accordingly, the Complaint succeeds under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be cancelled.
David Perkins
Sole Panelist
Date: September 17, 2013
Full & Egal Universal Law Academy