The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Ligensheng of Beijing, China, self-represented. 2. The Domain Names and Registrars
The disputed domain name is registered with HiChina Zhicheng Technology Ltd.
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina
Both HiChina Zhicheng Technology Ltd. and Alibaba Cloud Computing Ltd. d/b/a HiChina are hereinafter referred as the “Registrars”. 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2017. On January 30, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 3, 2017, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 8, 2017.
On February 8, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 8, 2017, the Complainant confirmed its request that English be the language of the proceeding. On February 10, 2017, the Respondent requested for Chinese to be the language of the proceeding.
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, and the proceedings commenced on February 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2017. The Respondent sent an informal email to the Center on March 10, 2017.
The Center appointed Sok Ling MOI as the sole panelist in this matter on March 16, 2017. 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, headquartered in Clermont-Ferrand, France, is one of the leading tire companies in the world. Apart from manufacturing and marketing tires for nearly every type of vehicle, the Complainant also publishes travel guides, hotel and restaurant guides, maps and road atlases. The Complainant is present in more than 170 countries. It employs more than 100,000 employees worldwide and operates 68 production plants in 17 different countries.
The Complainant is also present in the Chinese market. It employs more than 5,000 employees in China and operates 2 production sites in China.
The Complainant is the proprietor of the trade mark MICHELIN and has registered the following trade mark in China:
Jurisdiction
Trade Mark
Registration No.
Registration Date
Class
China
MICHELIN
136402
April 5, 1980
12
China
MICHELIN
9156074
February 14, 2013
35
China
MICHELIN
6167649
January 7, 2010
12
China
MICHELIN
10574991
June 7, 2013
16
The Complainant is also the registered proprietor of the following domain names:
- registered on December 1, 1993
- registered on June 16, 2001
- registered on March 18, 2003
The disputed domain name and were registered on October 14, 2016 and October 16, 2016 respectively.
According to the evidence submitted by the Complainant and as of the date of this decision, the disputed domain names do not resolve to any active website and appear never to have done so in the past. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to its MICHELIN trade mark. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent sent two emails to the Center, one on February 10, 2017 and another on March 10, 2017. In its emails, the Respondent claimed that the word “michelin” may be “米车林” (transliterated to mean “rice, car, forest”) in the Chinese language. The Respondent further contends that as the disputed domain names do not resolve to any active websites, there can be no infringement of the Complainant’s trade mark rights in MICHELIN.
Although the due date for filing a response was March 8, 2017, the Panel is prepared to accept and consider the Respondent’s informal emails. 6. Discussion and Findings 6.1 Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and requested that English be the language of the proceeding. The Respondent requested for Chinese to be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names are registered in Latin characters, rather than Chinese script; and
(b) according to the evidence submitted by the Complainant, the Respondent has responded to the Complainant’s cease-and-desist letter which was drafted in English.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present its case in this proceeding; and
(b) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that it shall accept the Response in Chinese, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain names to be cancelled or transferred:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in MICHELIN by virtue of its use and registration of the same as a trade mark.
The disputed domain names each incorporates the Complainant’s trade mark MICHELIN in its entirety. The addition of the letter “e” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” or “.site” does not impact the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark while the disputed domain name is identical to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974).
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the MICHELIN trade mark or to seek registration of any domain name incorporating the MICHELIN trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the term “michelin”.
As the disputed domain names do not resolve to any active websites, there is no evidence to suggest that the Respondent is using or has made any preparations to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names. Since the Respondent has failed to offer any explanation for its registration of the disputed domain names, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the
registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel notes that, according to the evidence submitted by the Complainant and as of the date of this decision, the disputed domain names do not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2.
The Complainant and its trade mark MICHELIN enjoy a strong reputation worldwide. The Panel notes that the MICHELIN trade mark has been registered in China since 1979. There is no doubt that that the Respondent was aware of the Complainant and its trade marks when it registered the disputed domain names. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the MICHELIN trade mark and its extensive use by the Complainant. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.
The Respondent has not categorically denied the Complainant’s allegations of bad faith. Instead, the Respondent sought to legitimise its actions by pointing to the availability for registration of other domain names incorporating the term “michelin”. The Respondent claims that “michelin” may mean “rice, car, forest”. However, given the unnatural combination of the three characters, the Panel finds it improbable that the Respondent chose the disputed domain names without the Complainant’s mark in mind.
In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 names, and , be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: April 3, 2017
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