The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is He lao shi of Jin Hua Yi Wu, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name () is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2016. On July 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2016, 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.
On July 28, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On July 28, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint in Chinese and English, and the proceeding commenced on August 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 1, 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, Michelin, is a French tire company that manufactures and markets tires for vehicles, including airplanes, automobiles, bicycles/motorcycles, earthmovers, farm equipment and trucks. It also offers electronic mobility support services on ViaM and publishes travel guides, hotel and restaurant guides, maps and road atlases. Headquartered in Clermont-Ferrand, France, the Complainant is present in more than 170 countries, has 112,300 employees and operates 68 production plants in 17 different countries.
The Complainant has the industry’s largest professional tire sales and service network in China. At the end of 2011, the Complainant had more than 6,400 cars and light truck tire retailers while 1,338 truck and bus tires were contracted retailers by the end of March 2012. The Complainant created the professional tire sales and service brand, “Chi added”, and nearly 700 Chi-plus stores in the end of March 2012.
The Complainant owns the following MICHELIN trademark registrations in China: MICHELIN, Trademark No. 6167649, dated July 16, 2007, and covering goods in class 12; MICHELIN, Trademark No. 10574991, dated March 6, 2012 and covering goods in class 16; MICHELIN, Trademark No. 9156074, dated February 28, 2011 and covering goods in class 35.
In addition, the Complainant operates, among others, the following domain names reflecting its trademarks in order to promote its services: registered on December 1, 1993 and registered on June 16, 2001.
The disputed domain name was registered on January 5, 2016 long after the Complainant registered the trademarks MICHELIN worldwide.
On April 4, 2016, before starting the present proceeding, the Complainant sent a cease-and-desist letter to the Respondent via registered letter and email on the basis of its trademark rights. The cease-and-desist letter requested the Respondent to transfer the disputed domain name to the Complainant free of charge. The Respondent did not reply. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or at least confusingly similar to the Complainant’s trademark MICHELIN.
The Complainant further argues that the public would reasonably assume that the disputed domain name would be owned by the Complainant or at least assume that it is related to the Complainant.
The Complainant further argues that even if the generic Top-Level Domain (“gTLD”) “.世界” meaning “world” in English were to be taken into consideration, it should be noted that it can only be perceived as an element increasing the likelihood of confusion due to the meaning of the term “world”.
The Complainant further argues that the Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said mark.
The Complainant further argues that the Respondent has no prior rights or legitimate interests in the disputed domain name.
The Complainant further argues that the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant further argues that the disputed domain name directs Internet users to a parking page with pay-per-click (PPC) which is likely to generate revenues. Hence, as a matter of fact, it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of disputed domain name.
The Complainant further argues that it is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name.
The Complainant further argues that the Respondent has already been condemned by a prior UDRP panel and his bad faith was duly revealed and that the Respondent is engaged in a cybersquatting activity. Indeed, he has around 115 domain names registered under his name.
The Complainant further argues that the Respondent has used the disputed domain name to direct Internet users to a webpage displaying commercial links related to cartographic and/or automotive products and/or services, including maps as well as tires and notably those of the Complainant and its competitors, which is additional proof of bad faith.
The Complainant further argues that it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the said domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement is Chinese as confirmed by the Registrar.
The Complainant requested that the language of the proceeding should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case”. Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004.
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The second level of the disputed domain name consists of Latin-script letters, rather than Chinese characters;
b) The Respondent did not respond or object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English.
Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant presented evidence that it owns numerous worldwide trademark registrations for the mark MICHELIN including in China, where the Respondent is located. For example: Chinese Trademark No. 6167649, with the registration date of January 7, 2010, and covering goods in class 12; Chinese Trademark No. 10574991, with the registration date of June 7, 2013 and covering goods in class 16; Chinese Trademark No. 9156074, with the registration date of February 14, 2013 and covering goods in class 35; Chinese Trademark No. 136402, with the registration date of April 5, 1980 and covering goods in class 12.
The Complainant also provided evidence showing that it owns and uses domain names consisting of the trademark MICHELIN, for example, registered on December 1, 1993 and registered on June 16, 2001.
The disputed domain name incorporates the Complainant’s registered trademark MICHELIN in its entirety.
Previous UDRP panels have ruled that “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
Moreover, the addition of the gTLD “.世界”, being a technical requirement, to the disputed domain name does not avoid a finding of confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the MICHELIN trademark, or a variation thereof.
The Respondent has not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides non-exhaustive circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the MICHELIN trademark in China since at least the year 1980. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name. Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735.
The Complainant provided evidence to demonstrate its trademark’s vast goodwill. “It is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark Swarovski or that the Domain Names at issue might be of some type of economic advantage”. See Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080. It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Furthermore, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.
In addition, the evidence shows that the Respondent has been using the disputed domain name as a sponsored PPC parking webpage. This is evidence of bad faith registration and use in accordance with paragraph 4(b)(iv) of the Policy.
The Complainant has provided sufficient evidence to show that its MICHELIN trademark has a strong reputation. The record also shows that the Respondent did not respond to the Complaint nor the Complainant’s cease-and-desist letters which is further evidence of the Respondent’s bad faith.
The Panel also notes the Respondent’s involvement in a previous UDRP case, where his bad faith was revealed, supports the Complainant claim that the Respondent is engaging in a cybersquatting activity. Hugo Boss Trade Mark Management Gmbh & Co. Kg, Hugo Boss AG v. He Lao Shi, He Lao Shi,WIPO Case No. D2016-0141.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the similarity between the Complainant’s trademark and the disputed domain name, the failure of the Respondent to respond to the Complaint and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: September 15, 2016
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