The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Guo Qiang Yao, Hang Zhou Jun Du Can Yin Guan Li You Xian Gong Si of Hangzhou, Zhejiang, China / Yinsi baohu yi kai qi (Hidden by Whois Privacy Protection Service) of Chengdu, Sichuan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with West263 International Limited (the "Registrar"). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 29, 2016. On May 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint, and stating that Chinese was the language of the Registration Agreement for the disputed domain name. The Center sent an email communication to the Complainant on May 17, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 19, 2016.
On May 17, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On May 18, 2016, the Complainant confirmed its request that English be the language of the proceeding, to which the Respondent replied in Chinese on May 19, 2016, yet did not expressly object to the Complainant's request.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint in Chinese and English, and the proceedings commenced on May 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2016. The Respondent did not submit any formal response save for its email communications on May 30, 2016, and June 1, 2016, on the issue of possible settlement. The Center notified the Parties that it would proceed to Panel Appointment on June 14, 2016.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 20, 2016. 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 is a leading tire company headquartered in Clermont-Ferrand France, but operates internationally, with a presence in 170 countries. The Complainant has established multiple offices in China, where the Respondent is located, and has operated in that jurisdiction since 1989. The Complainant owns numerous MICHELIN trademark registrations around the world, including two in China (Chinese Trademark No. 136402 for the mark MICHELIN in International Class 12, which was registered on April 5, 1980; and Chinese Trademark No. 9155688 for the mark MICHELIN in International Class 43, which was registered on February 28, 2011).
The Complainant manufactures and markets tires, offers electronic mobility support services and publishes travel guides, hotel and restaurant guides, maps and road atlases, including the annually published Michelin Guide, which details Michelin star-rated restaurants. These services are offered and promoted worldwide through domain names that utilize the MICHELIN trademark, including , and .
The Respondent Guo Qiang Yao, Hang Zhou Jun Du Can Yin Guan Li You Xian Gong Si used a privacy shield when registering the disputed domain name on September 29, 2015. According to the evidence provided by the Complainant, the disputed domain name resolved to the website of an apparent catering management business as of July 12, 2015. The website included a copyright notice identifying "Hangzhou jun catering management co., LTD" as the rights holder. On December 14, 2015, the Complainant sent a cease-and-desist letter to the anonymous privacy shield service provider requesting that the service provider (1) reveal the identity and contact details of the registrant; (2) cease use of the disputed domain name; and (3) transfer the disputed domain name to the Complainant. The anonymous service provider did not reply. However, upon receipt of the cease-and-desist letter, the website associated with the disputed domain name became inactive and at the time of this decision the disputed domain does not resolve to a website. 5. Parties' Contentions A. Complainant
The Complainant states that it is a leading tire company operating in 170 countries and having 112,300 employees. The Complainant further states that it has the industry's largest professional tire sale and service network in China and that it has taken steps to further strengthen the development of the Chinese market. The Complainant and its MICHELIN trademarks have a worldwide reputation with numerous MICHELIN trademark registrations around the world. Prior UDRP panels have found MICHELIN to be a famous mark.
The disputed domain name is highly similar to the Complainant's mark MICHELIN. The disputed domain name contains the Complainant's mark MICHELIN. The addition of the generic Top-Level Domain ("gTLD") ".com" to the disputed domain name must be excluded because it has no legal significance to the analysis. It is a functional component of the disputed domain name. Additionally, the inclusion of the generic term "best" does not impact the overall impression of the disputed domain name. The addition of a generic term to a famous mark does not sufficiently distinguish a disputed domain name from a complainant's mark. The Complainant contends that the term "best" increases consumers' confusion because it could be understood as a reference to the starred restaurants in the Complainant's Michelin Guide. Similarly, hyphenation is not sufficient to distinguish the disputed domain name from the Complainant's mark, because the dominant portion of the domain name is the Complainant's MICHELIN mark.
Given the widespread reputation and high degree of recognition of the MICHELIN mark and the lack of distinguishing factors between the disputed domain name and the Complainant's mark, the disputed domain name should be considered confusingly similar to the MICHELIN mark. Because of the worldwide brand awareness of the MICHELIN mark, an Internet user would most likely assume that a website associated with the disputed domain name would be connected with the Complainant and its well known Michelin Guide. The public would likely believe that the disputed domain name will lead to a website related to the Complainant and the starred restaurants found in the Complainant's Michelin Guide.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way, nor has the Complainant authorized the Respondent to use and register its trademarks or any domain name incorporating such marks. The MICHELIN mark was registered many years before the registration of the disputed domain name. The Respondent cannot reasonably claim actual or contemplated bona fide or legitimate use of the disputed domain name incorporating such a widely-known trademark in light of the absence of permission from the Complainant to use the mark.
The Respondent's other behavior suggests it has no rights or legitimate interests. Namely, after receiving a cease-and-desist letter from the Complainant, the website associated with the disputed domain name became inactive. Moreover, the Respondent registered the disputed domain name with a privacy shield services to hide the Respondent's identity and to prevent the Complainant from contacting the Respondent.
The disputed domain name was registered and is being used in bad faith. The MICHELIN mark is well-known worldwide and was so at the time of the registration of the disputed domain name. The Complainant conducts business in China, where the Respondent is located, and has done so since 1989. Additionally, upon receiving a cease-and-desist letter from the Complainant, the Respondent deactivated the website associated with the disputed domain name. A quick search for MICHELIN trademarks would have revealed the existence of the Complainant and its trademark. Even without a trademark registration search, a simple Internet search for "Michelin" demonstrates that all first results relate to the Complainant and its products and services or news references to the Complainant. Therefore, it is implausible that the Respondent was unaware of the Complainant when the Respondent registered the disputed domain name. Given the reputation of the Complainant's MICHELIN mark, knowledge of the Complainant's intellectual property rights at the time of registration of the disputed domain name establishes bad faith registration. .
Additionally, the Respondent registered the domain name through a privacy shield service, which itself indicates registration in bad faith.
Bad faith use exists where, absent permission or license from the Complainant, the Respondent could have no legitimate use for a domain name containing such a widely known trademark. The disputed domain name directed to the website of a catering management business, which corresponded to the Complainant's field of activities encompassing restaurant rating guides. The current, inactive status of the disputed domain name does not preclude a finding of bad faith use. Given the totality of circumstances of the Respondent's behavior, the current passive holding of the disputed domain name is in bad faith.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not submit a formal response to the Complainant's contentions. In the informal communications with the Center the Respondent denied bad faith registration of the disputed domain name, noting that it had ceased use of the disputed domain name after receiving the Complainant's cease-and-desist letter. 6. Discussion and Findings A. Language of Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the Parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent responded informally but did not expressly object to English as the language of the proceeding. If the Complainant were to submit all documents in Chinese, the administrative proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation because the Complainant is not able to communicate in Chinese. What is more, although the language of the Registration Agreement is Chinese and the Respondent is located in China, the circumstances suggest that the Respondent understands English. The disputed domain name includes the English word "best" and Latin characters, and at the time the Complaint was filed, the disputed domain name directed to a page that was published in English. The Panel determines that the language of the proceeding should be English. B. Preliminary Remarks Regarding Respondents
The Complainant initially named "Yinsi baohu yi kai qi (Hidden by Whois Privacy Protection Service)", a privacy protection shield service, as the Respondent in this proceeding. Upon being informed by the Center that the underlying registrant was disclosed by the Registrar to be "Guo Qiang Yao, Hang Zhou Jun Du Can Yin Guan Li You Xian Gong Si", the Complainant submitted an amended Complaint. The Complainant did not replace the original Respondent with Guo Qiang Yao, Hang Zhou Jun Du Can Yin Guan Li You Xian Gong Si. Rather, the Complainant added Guo Qiang Yao, Hang Zhou Jun Du Can Yin Guan Li You Xian Gong Si to the Complaint and did not differentiate between the Respondents in the Complaint. The Panel will treat both the privacy shield service and the underlying registrant as the Respondent in this proceeding. See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320. The Panel proposes to treat the underlying registrant, Guo Qiang Yao, Hang Zhou Jun Du Can Yin Guan Li You Xian Gong Si, as the substantive Respondent and references hereinafter to "the Respondent" are to be construed accordingly. C. Scope of the Policy
The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a):
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
While the Panel notes the content of the Respondent's communications, the Panel finds that the Complainant has met this burden, as set out under each element below. D. Identical or Confusingly Similar
The Complainant has rights in the MICHELIN mark. The Complainant has established that it is the registered owner of various trademark registrations for MICHELIN marks. The Panel accepts that the Complainant's marks are internationally well-known. The disputed domain name consists of the generic term "best" and an exact replication of the Complainant's MICHELIN mark, separated by a hyphen.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. To establish confusing similarity, the trademark and the domain name itself should be compared. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2. The generic term "best" does not impact the overall impression of the disputed domain name, and is insufficient in preventing Internet user confusion. The inclusion of the term "best" as a laudatory term could increase confusion when paired with the disputed domain name because it suggests the disputed domain name and resulting webpage are affiliated with the Complainant's widely known restaurant rating system.
Similarly, neither the addition of the gTLD ".com" nor hyphenation is sufficient to distinguish the disputed domain name from the Complainant's mark. The gTLD, as a technical part of the domain name, does not affect the legal assessment of the confusing similarity. Despite hyphenation, the Complainant's mark remains the dominant component of the disputed domain name. Punctuation is typically irrelevant in the confusing similarity analysis, especially when the disputed domain name includes the trademark as its prominent feature. See, e.g., Yahoo! Inc. v. wangwe gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng,WIPO Case No. D2014-0714 (holding that the absence of the exclamation point at the end of "yahoo" in the disputed domain names was irrelevant when comparing it to the trademark YAHOO! because the word "yahoo" is the prominent feature of the trademark and had been completely incorporated into the disputed domain names). The term "Michelin" is the dominant component of the disputed domain name and the disputed domain name is confusingly similar to the Complainant's trademark. E. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in a disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The respondent's use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The disputed domain name previously resolved to a catering management company's website, but is currently inactive. There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant's MICHELIN mark is widely known, including in China, the location of the Respondent. In the absence of any evidence to the contrary, knowledge of the Complainant's rights in the MICHELIN mark may be imputed to the Respondent at the time of registration of the disputed domain name. The words "best michelin" bear no obvious relationship to the Respondent's activities in connection with the disputed domain name , suggesting the Respondent would not have chosen it unless seeking to create an impression of association with the Complainant. See Drexel University v. David Brouda,WIPO Case No. D2001-0067. In the present case, where there is no obvious connection between the Complainant's widely-known mark and the Respondent's activities, and the Complainant has not given the Respondent permission or license to use its trademarks, it can be concluded that the Respondent has no rights or legitimate interests in the disputed domain name. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Harvey Norman Retailing Pty Ltd. V. Pty Ltd,WIPO Case No. D2000-0945. F. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.
The Panel finds that the Respondent was aware of the Complainant and its marks at the time of registration of the disputed domain name. The Complainant is widely known, as are the MICHELIN marks. The Complainant owns many trademark registrations around the globe, including China, where the Respondent is located. The Complainant conducts significant operations in China. The Complainant's MICHELIN mark is associated with its widely-known Michelin Guide, which publishes annual reports providing restaurant ratings. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search, a simple Internet search for MICHELIN would have yielded many obvious references to the Complainant and the Complainant's use of MICHELIN marks, including the Complainant's Michelin Guide. The Panel finds it very unlikely that the Respondent was not aware of the Complainant and its interests in the MICHELIN marks. Where the Respondent knows that the disputed domain is identical or confusingly similar to the registered marks of the Complainant, and the Respondent has no rights or legitimate interests in the disputed domain name, such facts support a finding that the disputed domain name was registered in bad faith. See Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055. The Respondent's use of a privacy shield service to register the disputed domain name further indicates and supports a finding of bad faith registration in the present circumstances.
A finding that the disputed domain name was registered in bad faith is not sufficient to require cancellation or transfer of the disputed domain name. The Panel must also find that the disputed domain name is being used in bad faith. Given the inclusion of the Complainant's widely-known mark, the Panel finds that the Respondent must have been aware that Internet users may reasonably believe that the disputed domain name and resolving website would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206.This is additionally supported by the fact that the disputed domain name directed to a catering management business, which corresponds to the Complainant's field of activities, specifically its annually published restaurant ratings, which the Panel considers an affirmative attempt to confuse consumers into believing the disputed domain name and the corresponding website are controlled by, approved by, rated by, or otherwise associated with the Complainant, which is false. In the absence of any explanation from the Respondent, the Panel can only conclude that such use of the disputed domain name was meant to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion as to endorsement by or affiliation with the Complainant of the Respondent's services as contemplated by paragraph 4(b)(iv) of the Policy.
The disputed domain name's current inactivity does not preclude a finding of use in bad faith. See MasterCard International Incorporated ("MasterCard") v. Wavepass AS,WIPO Case No. D2012-1765. The Panel finds that in light of the totality of the circumstances in this case, the Respondent has acted in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. As noted, the Respondent has taken active steps to conceal its identity by using a privacy shield service. It is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off or infringing upon the Complainant's trademark rights. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Taking into consideration all of the circumstances of the Respondent's use, the Respondent's current passive holding of the disputed domain name amounts to bad faith use. Based upon these findings, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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 transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: July 4, 2016
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