The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is zhu zheng yuan of Dongguan, Guangdong, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2017. On May 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2017, 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 May 23, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be 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 in both Chinese and English of the Complaint, and the proceedings commenced on May 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2017. The Response in Chinese was filed with the Center on June 20, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on June 23, 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 is headquartered in Clermont-Ferrand, France, and is present in more than 170 countries, with about 112,300 employees. It is a leading tire company, manufacturing for every type of vehicle including airplanes, bicycles, earthmovers, farm equipment and trucks. The Complainant operates in China, with about 5,000 employees. Its first representative office in China was established in 1989. Since then, it has many marketing offices in various cities across China.
The Complainant is the registered owner of trade mark registrations for MICHELIN in many countries around the world, including in China. The Complainant has International registrations designating China from 1991, and Chinese trade mark registrations dating from 1980. Its domain name was registered on December 1, 1993 and was registered on July 21, 2008.
The disputed domain name was registered on January 14, 2017 and does not resolve to any active website. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is identical or confusingly similar to the Complainant’s MICHELIN trade mark. The disputed domain name reproduces the entire MICHELIN trade mark, which is a well-known or famous mark. The strong reputation of the MICHELIN trade mark has been recognized by previous UDRP panels, e.g., Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu,WIPO Case No. D2014-1240, Compagnie Générale des Etablissements Michelin (Michelin) v. Zhichao Yang,WIPO Case No. D2013-1418 and Compagnie Générale des Etablissements Michelin v.Milan Kovac / Privacy – P,WIPO Case No. D2012-0634. The addition of the generic Top-Level Domain (“gTLD”) “.wang” does not eliminate the confusing similarity with the Complainant’s MICHELIN trade mark.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant, nor has he been authorized by the Complainant to use and register its trade marks, or to register a domain name incorporating the MICHELIN trade mark. The Respondent has no prior rights in the disputed domain name. The registration of the MICHELIN trade mark long preceded the registration of the disputed domain name. In the absence of any permission from the Complainant to use its widely-known MICHELIN trade mark, no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed. The Respondent has not made any demonstrable preparations to use the disputed domain name. The inactivity of use of the disputed domain name and the Respondent’s conduct suggests bad faith behind the registration.
(iii) The disputed domain name was registered and is being used in bad faith. It is not plausible that the Respondent was unware of the Complainant when he registered the disputed domain name since the Complainant and its MICHELIN trade mark are well known throughout the world including in China where the Respondent is apparently located. A finding of bad faith can be made where a domain name is so obviously connected with a well-known trade mark that its use by someone with no connection to the trade mark suggests opportunistic bad faith. A trademark search or Internet search for “Michelin” would have revealed to the Respondent the existence of the Complainant and its trade mark. The Respondent’s failure to provide correct contact details when he registered the disputed domain name is also indicative of bad faith. The inactivity of use of the disputed domain name does not mean that the disputed domain name is used in good faith. Passive holding can also be considered to be use in bad faith where the trade mark concerned has a strong reputation and widely known, the respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name, the respondent has taken active steps to conceal its true identity, and if the respondent has actively provided or failed to correct false contact details, in breach of the registration agreement. Reproducing famous marks in a domain name to attract Internet users to an inactive website cannot be regarded as use in good faith. B. Respondent
The Respondent filed a Response in Chinese on June 20, 2017. He said that, inter alia, that there was no bad faith or infringement of trade mark in the registration of the disputed domain name. The disputed domain name was not used in commerce, but was registered for personal use. The disputed domain name comprises the Hanyupinyin term “mi che lin” (觅车赁) which, respectively, means “seek, car, rent”. As a term, it would signify to Chinese speakers “seeking for car rental”. The “.wang” domain name is intended for Chinese speakers around the world, and therefore “michelin” in the disputed domain name would bear that significance to them, rather than a singular English term. Hanyupinyin is widely used in China, and this fact has to be considered. Moreover, the Hanyupinyin for the Complainant’s mark as used in China in advertisements is “mi qi lin” (米其林). This is distinguishable from the Hanyupinyin term in the disputed domain name. The fact that the Complainant has trade mark registrations for MICHELIN does not mean it has a total monopoly over the use of the name in all domain name extensions. The Complainant failed during the three years to register the disputed domain name. The Respondent did not offer to sell or rent to the Complainant the disputed domain name or otherwise profit from the disputed domain name in an unfair manner. “Michelin” is a common English surname. The Respondent also asserted that Michelin could also be a name for Chinese people, for example, Mi (family name) and Chelin (given name) or Miche (given name) and Lin (family name). Hence, there was no bad faith in the registration. 6. Discussion and Findings 6.1 Preliminary Procedural Issue: Language of the Proceeding
The language of the Registration Agreement is Chinese. The Complainant requested that English be adopted as the language of the administrative proceeding as the Complainant does not read or understand Chinese, and the Respondent chose a domain name which comprises letters from the Latin alphabet. Furthermore, it would be very costly in terms of time and money to have to translate the entire Complaint and annexes into Chinese.
Paragraph 11(a) of the Rules stipulates that: “[u]nless 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.”
Paragraph 10(c) of the Rules stipulates that “The Panel shall ensure that the administrative proceeding takes place with due expedition”.
The Panel determines in this case that it would be appropriate for English to be applied as the language of the proceeding. The Respondent appears to have a sufficient level of understanding of the English language. Although the Respondent replied in Chinese and understandably would prefer to correspond in Chinese, the fact remains that he understood the substance of the Complaint.
The Panel does not see that the Respondent would be prejudiced if English were adopted as the language of the proceeding. The Respondent received communications from the Center in both Chinese and English, and the Panel accepts the Response which was filed in Chinese. On the other hand, there would be a significant delay in the proceeding if the Complaint and supporting documents had to be translated into Chinese.
In the circumstances, the Panel finds that it would be appropriate for English to be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar
The Panel finds that the Complainant has established that it has rights in the MICHELIN trade mark. The mark has been incorporated in its entirety in the disputed domain name without any addition or differentiation. The gTLD has no relevance to the issue of identity or confusing similarity, since it is a technical requirement of domain name registrations. Hence, the Panel finds the disputed domain name to be identical to the trade mark MICHELIN in which the Complainant has rights.
The first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy indicates how a respondent can demonstrate its rights or legitimate interests to a domain name in dispute, namely by establishing any of the following (non-exhaustive) circumstances:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Although a complainant is required, per the Policy, to establish all three elements of paragraph 4(a) of the Policy, the general consensus view of UDRP panels is that a complainant is only required, in relation to paragraph 4(a)(ii) of the Policy, to establish a prima facie case. The burden thereafter shifts to the respondent to establish, with evidence, showing that it has rights or legitimate interests in the domain name in dispute. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel is of the view that the Complainant established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is no relationship between the Complainant and the Respondent and no evidence that the Respondent has been commonly known by the disputed domain name. The Respondent was not licensed or permitted by the Complainant to register the disputed domain name or to use the MICHELIN trade mark.
The Panel has considered the arguments made by the Respondent. On the issue of the Respondent’s rights or legitimate interests, the Panel finds that the Respondent has failed to establish that he has rights or legitimate interests in the disputed domain name. The primary argument made by the Respondent is that the disputed domain name comprises Hanyupinyin terms – “mi che lin” and “wang”. Whilst this argument seems valid on the face of it (especially since many Chinese words sound the same although they contain different meanings represented by different Chinese characters), the Panel doubts that this argument is a genuine one but, rather, one created to lend legitimacy to the Respondent’s registration of what otherwise comprises the Complainant’s well-known trade mark. Notably, the Respondent did not provide any evidence that he was in the business, or was contemplating or making preparations for entering into the business, of offering car rental services, or to provide a portal or facility for Chinese-speaking Internet users looking to rent cars. If indeed there was some evidence of a car rental business or the like, there could then perhaps be a basis for accepting an assertion of rights or legitimate interests in the disputed domain name; and in such a case there might have been by pure coincidence a situation where the disputed domain name, intended to signify “觅车赁” (mi che lin, “seek car rental”), happened to bear the same letters forming the well-known trade mark of the Complainant. However, there was no evidence of such contemplated use of the disputed domain name by the Respondent.
The Respondent failed to provide any other evidence to support a claim of rights or legitimate interests in the disputed domain name.
In the circumstances, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exhaustive circumstances, any of which and “without limitations”, if found by the Panel, would constitute evidence of registration and use of a domain name in bad faith. Paragraph 4(b)(iv) of the Policy refers to circumstances indicating the use of the disputed domain name with the intention to attract, for commercial gain, Internet users to the 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 website or location.
The MICHELIN trade mark is a distinctive and well-known trade mark of the Complainant. There is no connection between the Respondent and the name “Michelin”, nor is one obviously conceivable since the Respondent is from China. Whilst the Respondent has offered his explanation of how “michelin” in the disputed domain name was derived, namely from the Hanyupinyin term for “seek car rental”, the Panel finds that the Respondent’s registration of the disputed domain name incorporating the exact same term as the Complainant’s trade mark was not coincidental but deliberate, with full awareness of the Complainant and its MICHELIN trade mark. The only probable reason why the disputed domain name was selected and registered by the Respondent was for the purpose of attracting and/or misleadingly divert Internet users to the Respondent’s website (albeit none was created as yet) for commercial gain. Internet users seeking information on the Complainant would naturally expect to find, via the disputed domain name, information on the Complainant and its goods or services, with a specific focus on China, since the “.wang” gTLD is ultimately targeted primarily to the Chinese market. Internet users would be misled into thinking that the disputed domain name related to the Complainant’s offering of goods and/or services to Chinese-based customers. The Panel is satisfied that there is no actual or contemplated use of the disputed domain name by the Respondent which would not, in all likelihood, amount to bad faith use within the meaning of the Policy. Whilst there was no active use of the disputed domain name in this case, the passive holding of a domain name does not mean that registration and use may not be considered to have been in bad faith. The incorporation of a well-known mark can constitute bad faith use and registration even if there is no active use of the domain name at issue. (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.)
In the circumstances and in view of the Respondent’s failure to show he has rights or legitimate interests in the disputed domain name, the Panel concludes that the registration and use of the disputed domain name have been in bad faith.
The Panel finds that the Complainant has satisfied the requirement 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.
Francine Tan
Sole Panelist
Date: June 26, 2017
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