The Complainants are Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France; and Eurodrive Services and Distribution N.V of Drunen, Netherlands, represented by Dreyfus & associés, France.
The Respondent is Xu Zi Yi of Suzhou, Jiangsu, China. 2. The Domain Names and Registrar
The disputed domain names and is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2017. On December 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 26, 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 January 2, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants confirmed its request that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 English and Chinese of the Complaint, and the proceedings commenced on January 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2018.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 27, 2018. 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 first Complainant, Compagnie Générale des Etablissements Michelin (hereafter: Michelin), is a multinational company that focuses on designing and distributing of tires, services and solutions for its clients’ needs; providing digital services, maps and guides to help enrich trips and travels; and developing high-technology materials that serve the mobility industry.
Michelin is present in 170 countries, has 111,700 employees and operates 68 production facilities in 17 countries which together produced 187 million tires in 2016. Michelin is also present in the region of Asia and commercializes several of its products in China. Michelin has more than 5,000 employees in China. Michelin set up a sales company in Hong Kong, China. To further strengthen its presence in the Chinese market, the first representative office in mainland China was established in 1989 in Beijing to promote products and prepare distribution networks. Michelin Shenyang Tire Co., Ltd. was established as Michelin Group’s first joint venture in China. Michelin has set up different business units in the Chinese region according to the Group’s product line division.
The Second Complainant, Eurodrive Services and Distribution N.V (hereafter: Euromaster), is a wholly-owned subsidiary of Michelin. The Euromaster Group, which uses the Euromaster brand, has the largest European network with more than 2,300 light vehicles and industrial vehicles maintenance centers in 17 countries, including Austria, Denmark, Romania, Germany, United Kingdom of Great Britain and Norther Ireland, Sweden, Switzerland.
Euromaster Group is one of Europe’s leading service providers for car, van and truck fleets, selling over 10,000,000 tyres each year (that’s over 37,000 tyres being fitted each day). As a whole, there are over 2,600 mobile service vans across the network to ensure our customer’s convenience and mobility.
Euromaster, operates in two markets: the general public (tourism, light truck, 4x4) and professionals (car fleets, heavy goods vehicles, agrarian fleets, handling, civil engineering). Euromaster now offers multiple routine maintenance services, in addition to pneumatic products and services.
The Complainants are the owners of the following trademark registrations:
- International Trademark MICHELIN No. 348615, registered on July 24, 1968, duly renewed and covering goods in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20;
- Chinese Trademark MICHELIN No. 6167649, registered on January 7, 2010, and covering goods in class 12;
- Chinese Trademark MICHELIN No. 10574991, registered on June 7, 2013 and covering goods in class 16;
- Chinese Trademark MICHELIN No. 9156074, registered on February 14, 2013 and covering goods in class 35;
- Chinese Trademark MICHELIN No. 136402, registered on April 5, 1980, covering goods in class 12;
- Benelux trademark EUROMASTER No. 0495020, registered on January 15, 1991, covering goods and services in classes 12 and 37;
- Benelux trademark EUROMASTER No. 0798204, dated of March 7, 2006 and covering services in class 39;
- French trademark EUROMASTER No. 1624667, dated July 25, 1990, covering goods and services in classes 12 and 37.
In addition, the Complainants and their affiliates operate the following domain names to promote their goods and services:
- registered on December 1, 1993;
- registered on March 18, 2003;
- registered on March 29, 1996.
The disputed domain name was registered on October 11, 2016.
The disputed domain name was registered on September 25, 2016.
The disputed domain names are currently inactive. 5. Parties’ Contentions A. Complainant
The Complainants argue that the disputed domain names are confusingly similar to the Complainants’ famous and registered marks MICHELIN and EUROMASTER because they contain these marks in their entirety.
The Complainants further argue that the Respondent is not known under the disputed domain names and is not authorized by the Complainants to use the disputed domain names, which are associated with the Complainants. It is further alleged that the Respondent has never used and does not intend to use the marks MICHELIN and EUROMASTER in connection with a bona fide offering of goods or services or in any other legitimate commercial or noncommercial way. Therefore, the Complainants argue that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainants further argue that the Respondent registered and used the disputed domain names in bad faith. It is further alleged that the Respondent is a professional domain dealer and is trying to make a profit by registering domain names which are connected to the Complainants’ well-known trademarks.
For all of the above reasons, the Complainants request the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) 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 Agreements for the disputed domain names is Chinese.
The Complainants requested that the language of the proceeding be English.
The Respondent did not respond.
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:
(i) The disputed domain names consist of Latin letters, rather than Chinese characters;
(ii) The Complainants may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;
(iii) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2. Substantive Issues A. 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 Coca Cola company v. PrivacyP / Acosta Jose Julian,WIPO Case No. D2010-0335; RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059; and ACCOR v. Lee Dong Youn,WIPO Case No. D2008-0705.
The Complainants are the owners of numerous trademark registrations for the marks, including International Trademark MICHELIN No. 348615, registered on July 24, 1968 in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20, and Benelux trademark EUROMASTER No. 0495020, registered on January 15, 1991 and duly renewed, covering goods and services in classes 12 and 37; and more.
The disputed domain name integrates the Complainants’ MICHELIN trademark in its entirety. The disputed domain name and the Complainants’ trademark differ in the addition of the word “club”. The word “club” is a dictionary term insufficient to avoid any confusing similarity. Numerous UDRP decisions have established that adding a descriptive term to the Complainant mark does not influence the similarity between a trademark and a domain name (Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and A Domain Privacy,WIPO Case No. D2012-1453; Swarovski Aktiengesellschaft v. Luo Li,WIPO Case No. D2012-1604; Compagnie Générale des Etablissements Michelin v. isman to,WIPO Case No. D2012-0739).
The disputed domain name integrates the Complainants’ EUROSTAR trademark in its entirety. The disputed domain name and the Complainants’ trademark differ in the addition of the letters “chn”, which is an acronym for China. The addition acronym “chn” does not serve to sufficiently distinguish the disputed domain name and avoid confusing similarity to the EUROSTAR mark. UDRP panels have found that the use of acronym does not confer any distinctiveness to the domain name.
Both disputed domain names contain hyphens. Panels have come to the conclusion that hyphenation in domain names is “insufficient to distinguish the Respondent’s domain names from the Complainant’s mark because the dominant portion of each domain name is the Complainant’s [trademark]”. Hence, paragraph 4(a)(i) of the Policy is satisfied (Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768 and TREDNET, Direct Distribution International Ltd (“DDI”) v. WhoisGuard Namecheap / BODYPOWER,WIPO Case No. D2012-2001.
The disputed domain names contain the addition of the generic Top-Level Domain (“gTLD”) “.com” and “.net”, this addition does not avoid 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). The gTLDs “.com” and “.net” arewithout significance in the present case since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainants have shown that the disputed domain names are confusingly similar to trademarks in which the Complainants have rights. B. 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, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, the Complainants have demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainants have established a prima facie case in this regard, inter alia, due to the fact that they have not licensed or otherwise permitted the Respondent to use the their trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services and holds no trademark registrations for the MICHELIN and EUROMASTER marks.
Besides, the disputed domain names resolve to inactive pages. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain names. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain names. It is most likely to be believed that Respondent has no rights or legitimate interests in the disputed domain names.
Additionally, upon receiving the Complainants’ cease-and-desist letter, the Respondent promptly changed its name and postal address on the WhoIs records. It appears that the Respondent changed his address to confuse the Complainants regarding the ownership of the disputed domain names. Such conduct implies that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
As the Complainants evidenced, Reverse WhoIs searches revealed that Respondent has registered more than 300,000 domain names. Thus, it can be inferred that the Respondent is not making legitimate use of the disputed domain names or has any rights in them.
The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain names to rebut the Complainants’ prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
Under Section 2 of the Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. This means that it was the Respondent’s duty to verify that the registration of the disputed domain names would not infringe the rights of any third party before registering the disputed domain names (Compagnie Gervais Danone contre Gueorgui Dimitrov / NETART,WIPO Case No. D2009-0901; Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397; Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806).
As the Complainants evidenced, simple searches for the MICHELIN and EUROMASTER trademarks would have revealed the existence of the Complainants and their trademarks. This is a contributory factor to establish the Respondent’s bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226). In addition, the Panel notes that the acronym “chn” in the disputed domain name leads the public into believing that the Respondent is offering services linked to the acronym with the approval of the Complainant (La Francaise des Jeux v. Malveau Serge,WIPO Case No. D2008-1928).
As the Complainants evidenced, they sent the Respondent a cease-and-desist letter regarding the disputed domain name . The Respondent claimed in his response letter to have registered the disputed domain name through legal means. However, the Respondent neither tried to defend his rights nor stated any valid arguments to justify the registration of the disputed domain name in response to the Complainant’s cease-and-desist letter. As indicated in another UDRP case, “it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products” (Bouygues v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325).
Moreover, after his response, the Respondent changed his contact details in the WhoIs records which further indicates that he has registered the disputed domain names in bad faith.
The Respondent has registered more than 300,000 domain names. These numerus registrations also infer that he registered the disputed domain names in bad faith. Previous UDRP panels have held that respondents involved in cybersquatting behavior and who made multiple registrations targeting third party trademarks are circumstances that may evidence bad faith (Compagnie Générale des Etablissements Michelin, Michelin Recherche et Technique S.A. v. Rajeev Sankaran,WIPO Case No. D2012-0730).
The lack of use of the disputed domain names does not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainants have met their 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 names and be transferred to the Complainants.
Jonathan Agmon
Sole Panelist
Date: March 13, 2018
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