The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Fan Jian Xia of Quzhou, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on January 22, 2018. On January 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2018, 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 29, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on January 30, 2018. 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 February 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 27, 2018.
The Center appointed Rachel Tan as the sole panelist in this matter on March 9, 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 Complainant is a leading tyre company which also provides digital services, maps and guides for travel. Headquartered in France, the Complainant is present in 170 countries, operates 68 production facilities which together produced 187 million tyres in 2016. The Complainant set up a sales company in Hong Kong, China, quickly followed by a representative office in mainland China in 1989. Today, the Complainant operates 2 production sites and employs more than 5,000 employees in China.
The Complainant owns registrations for the MICHELIN trade mark around the world. In particular:
International Registration No. 348615, registered on July 24, 1968 in classes 1, 6, 7, 8, 9, 12, 16, 17 and 20, designating a large number of jurisdictions;
European Union Registration No. 001791243, registered on October 24, 2001 in classes 6, 7, 12, 17 and 28;
Chinese Registration No. 136402, registered on April 5, 1980, in class 12; and
Chinese Registration No. 6167649, registered on January 7, 2010, in class 12.
The Complainant is the registrant of various domain names, including registered on December 1, 1993 and registered on July 21, 2008.
The disputed domain name was registered by the Respondent on August 16, 2017. The disputed domain name currently does not resolve to any website, but previously purported to host a webpage retailing different types of tyres from various companies including those from the Complainant. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its prior registered MICHELIN trade mark which enjoys a worldwide reputation. The addition of the generic term "tyres" does not impact on the similarity assessment, but creates a connection to the Complainant.
The Complainant further contends that no authorization or permission has been given to the Respondent to register or use its MICHELIN trade mark. The Respondent is not in any way related to the Complainant's business. The Respondent's previous use of the disputed domain name to commercialise different types of tyres from various companies while displaying the Complainant's MICHELIN trade mark and logo does not represent a bona fide offering of services, but rather an intent to gain commercially from diverting consumers from the Complainant's official websites. The Respondent has not responded to the Complainant's cease and desist letter, but deactivated its website. Thus, the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant finally contends that the Respondent registered and used the disputed domain name in bad faith. The Respondent clearly had knowledge of the Complainant's MICHELIN trade mark. The previous use of the disputed domain name was not for a bona fide offering of goods and services. The current passive holding of the disputed domain name can satisfy the requirement of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of Proceeding
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party's submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding. The Complainant cites a number of UDRP decisions in which a panel has allowed the language of the proceeding to be in English rather than the language of the Registration Agreement.
The Respondent did not comment on the language of the proceeding. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a company from France. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) English is not the native language of either Party;
(c) The Respondent's choice of English word "tyres" for the disputed Domain Name and the ".top" generic Top-Level Domain ("gTLD"), indicates some familiarity with the English language;
(d) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant's request for English to be the language of the proceeding, but the Respondent did not protest against this request; and
(e) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English. 6.2. Analysis of the Complaint
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has adduced sufficient evidence to demonstrate its established rights in the MICHELIN trade mark claiming a broad range of goods, including tyres.
The Panel notes that the disputed domain name fully encompasses the Complainant's MICHELIN trade mark followed by the English word "tyres" commonly defined as "a rubber covering, typically inflated or surrounding an inflated inner tube, placed round a wheel to form a soft contact with the road". In this context, the word "tyres" takes on a generic meaning given that the Complainant is a manufacturer of tyres. The use of a hyphen is inconsequential to the assessment of identity or confusingly similarity. It is permissible for the Panel to ignore the generic Top-Level Domain suffix, in this case ".top". Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark.
Therefore, the Complainant has satisfied the first element under paragraph 4(a) of the Policy B. Rights or Legitimate Interests
The Complainant contends that the Respondent is not connected or affiliated to the Complainant nor authorized by it in any way to use or register the disputed domain name. There is no evidence of the Respondent having any prior rights or legitimate interests in the disputed domain name which was registered years after the registration of the Complainant's MICHELIN trade mark.
The disputed domain name currently resolves to an inactive page. The Complainant has submitted archived web pages demonstrating that the disputed domain name previously hosted a website retailing different types of tyres from various companies including those of the Complainant. Further, the Complainant's MICHELIN trade mark and logo are displayed on the webpages.
The Respondent has been provided ample opportunity to answer the Complaint but has chosen to remain silent. Consequently, the Panel has not found any evidence to suggest that the Respondent has any rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant's MICHELIN trade mark is widely and extensively registered and used around the world, including in China. The disputed domain name was registered well after the registration of the Complainant's MICHELIN trade mark, and more than two decades after it first entered the Chinese market. By 2017, the Complainant had substantial commercial operations in China and would have acquired a high degree of fame in the country. A simple Internet search would have yielded a considerable amount of information about the Complainant, the worldwide reputation of its brands, and its business activities. The decision to combine the MICHELIN trade mark with the English word "tyres" to form the disputed domain name, indicates that the Respondent was fully aware of the Complainant given its prominence in this industry.
Where the complainant's mark is so widely known that a respondent cannot credibly claim to have been unaware of the mark, panels have been prepared to hold that the domain name was registered in bad faith. See LEGO Juris A/S v. Domains by Proxy, Inc., DomainsByP / DBA David Inc.,WIPO Case No. D2011-1839 ( and ). In this case, the Panel can validly infer that the Respondent knew or should have known of the Complainant, its trade marks and business activities, at the time of the registration of the disputed domain name, so as to support a finding of bad faith.
The disputed domain name currently resolves to an inactive website. The "passive holding" of a domain name does not prevent a finding of bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (). However, the Panel notes that in the past, the disputed domain name resolved to a website retailing different types of tyres from various companies and on which appeared the Complainant's MICHELIN trade mark and logo. The choice of the disputed domain name, whose dominant element is identical to the Complainant's MICHELIN trade mark, which directed Internet users to a website unaffiliated with the Complainant, does not amount to a bona fide offering of goods.
The Respondent has failed to respond to the Complainant. There is no evidence of any actual or contemplated good faith use by the Respondent of the disputed domain name.
Taking into account all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the past use and by continuing to hold the disputed domain name, the Respondent has registered and is using the disputed domain name 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.
Rachel Tan
Sole Panelist
Date: March 26, 2018
Full & Egal Universal Law Academy