The Complainants are Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, and EURODRIVE Services and Distribution N.V. of Amsterdam, Netherlands, represented by Dreyfus & associés, France.
The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Liu Yuan of Xuzhou, Jiangsu, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , and (the “Disputed Domain Names”) are 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 May 11, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on May 15, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. On the same day, the Center sent an email to the Parties in both English and Chinese regarding the language of the proceeding.
On May 18, 2018, the Complainants requested to suspend the proceeding. Accordingly, on May 22, 2018, the Center informed the Parties that the proceeding was suspended until June 21, 2018. On June 20, 2018, the Complainants requested to reinstitute the proceeding and submitted an amended Complaint in which it requested 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 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 in English and Chinese of the Complaint, and the proceedings commenced on June 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2018.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on July 20, 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 Complainants are companies belonging to the same group of companies, which is headquartered in France and offers tire sales and related services around the world. The Complainants are the owners of the following trademark registrations:
(1) BFGOODRICH, Chinese trademark, Registration No. 292648, registered on July 10, 1987.
(2) EUROMASTER, French trademark, Registration No. 1624667, registered on July 25, 1990.
(3) EUROMASTER, French trademark, Registration No. 3413193, registered on February 23, 2006.
(4) EUROMASTER, Spanish trademark, Registration No. M1613599(7), registered on January 24, 1991.
(5) EUROMASTER, United Kingdom of Great Britain and Northern Ireland (“UK”) trademark, Registration No. UK00001455074, registered on July 25, 1993.
(6) EUROMASTER, Polish trademark, Registration No. R.085708, registered on June 16, 1995.
(7) EUROMASTER, Dutch trademark, Registration No. 30612135, registered on May 2, 2006.
According to the WhoIs data and Registrar’s verification response, the Disputed Domain Names registered by the Respondent are as follows:
(1) registered on June 20, 2017.
(2) registered on November 6, 2017.
(3) registered on November 6, 2017.
(4) registered on October 29, 2017.
(5) registered on October 29, 2017.
(6) registered on October 29, 2017.
(7) registered on October 29, 2017.
The Disputed Domain Names resolve to websites with pay-per-click links. 5. Parties’ Contentions A. Complainants
The Complainants request that the Disputed Domain Names be transferred to the Complainants based on the following grounds:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
The Disputed Domain Names incorporate the Complainants’ EUROMASTER and BFGOODRICH trademarks in their entirety, and merely add the generic terms such as “grup”, “tires”, “xtremerewards”, “extremereward” and “extremerewards”, which do not influence the similarity between the Disputed Domain Names and the Complainants’ trademarks. Some of the Disputed Domain Names replicate the BFGOODRICH trademark with the deletion of random letters “d”, “h” and “o”, which is a form of typosquatting. Moreover, the generic Top-Level Domain (“gTLD”) “.com” does not cause the Disputed Domain Names to be distinguishable from the Complainants’ trademarks. Thus, the Disputed Domain Names are confusingly similar to the Complainants’ trademarks.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainants assert that they have not licensed nor granted permission to the Respondent to use the EUROMASTER and BFGOODRICH trademarks in any form, including use of these trademarks in the Disputed Domain Names. The Respondent does not have any prior rights or legitimate interests in the Disputed Domain Names since they were registered by the Respondent some years after the Complainants first registered and used their trademarks. Furthermore, the Disputed Domain Names direct Internet users to parking pages with pay-per-clicks links which are likely to generate revenues. Thus, the Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Names.
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
The Complainants’ EUROMASTER and BFGOODRICH trademarks were registered long before registration of the Disputed Doman Names and therefore the Respondent could not be unaware of the existence of the Complainants’ well-known trademarks. Furthermore, the Respondent is using the Disputed Domain Names to direct Internet users to webpages for commercial gains by creating a likelihood of confusion with the Complainants’ EUROMASTER and BFGOODRICH trademark. Finally, the Respondent registered the Disputed Domain Names to prevent the Complainants from using their trademarks. Therefore, the Disputed Domain Names were registered and are being used in bad faith. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Preliminary Procedural Issues A. Complaint against multiple Disputed Domain Names
Paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.
The Complainants filed the Complaint against several Disputed Domain Names. Hence, the Panel has to review the facts and determine whether filing of the Complaint complies with the Policy and the Rules.
The Disputed Domain Names, , , , , , and are all registered by the same domain-name holder Liu Yuan. Therefore, the Panel finds that the Complaint against the seven Disputed Domain Names is in compliance with the Policy and the Rules and will include all seven Disputed Domain Names in the same proceeding. B. 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 Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, 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 other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293). The language finally decided by the panel for the proceeding should not be 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).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states: “[P]anels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii)trade the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (See section 4.5 of WIPO Overview 3.0).
The Registration Agreements for the Disputed Domain Names are in Chinese. The Complainants request the language of the proceeding to be English. The Respondent and the Registrar are located in China. However, given the following factors, the Panel decides that the language of the proceeding shall be English.
(1) The websites to which the Disputed Domain Names resolve contain English language content, which suggests that the websites are designed to attract Internet users from around the world rather than only Chinese users (Dolce & Gabbana S.r.l. v. Shuangzhi Lee,WIPO Case No. D2013-1103).
(2) The Panel finds that the Complainants are not in a position to conduct this proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(3) The Center’s communication to the Respondent uses both English and Chinese and has given the Respondent an opportunity to object to the Complainants’ request. The Respondent did not reply to the Center.
Given these facts, the Panel finds that it is more likely than not that the Respondent has sufficient familiarity with English. Therefore, in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel decides, under paragraph 11 of the Rules, that English shall be the language of the proceeding in this case. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainants have established that they are the owners of the EUROMASTER and BFGOODRICH trademarks.
The Disputed Domain Names, , , and , incorporate the EUROMASTER and BFGOODRICH trademarks in their entirety, with the combination of terms “grup”, “extremereward”, “extremrewards” and “xtremerewards”, and the gTLD “.com”. The additions of the gTLD and other terms, whether descriptive, meaningless, or misspelling, do not distinguish the Disputed Domain Names from the Complainants’ trademarks (See section 1.8, 1.9 and 1.11 of WIPO Overview 3.0). The only distinctive parts of the Disputed Domain Names are “euromaster” and “bfgoodrich”, which are identical to the Complainants’ trademarks.
The Disputed Domain Names, , and , eliminate the letters “o”, “h” and “d” from the BFGOODRICH trademark, with the combination of terms “extremerewards” and “tires”, and the gTLD “.com”. The deletion of letters from the trademark is certainly not sufficient to distinguish the Disputed Domain Names from the Complainants’ trademarks. Also, the addition of descriptive terms and gTLD do not distinguish the Disputed Domain Names from the Complainants’ trademarks.
The Panel concludes that the Disputed Domain Names are confusingly similar to the Complainants’ EUROMASTER and BFGOODRICH trademarks. The condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent 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 (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if the respondent has acquired no trademark 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 trademark or service mark at issue.
The Complainants have established that they are the owners of the EUROMASTER and BFGOODRICH trademarks and confirmed that they have no connection or affiliation with the Respondent. The Complainants also state that they are not aware of any trademarks in which the Respondent may have rights that are identical or similar to the Disputed Domain Names.
The Panel finds that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names.
According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Names have any connection with the Respondent’s name or the Respondent is otherwise commonly known by the Disputed Domain Names.
The Respondent did not submit any evidence or allegation to show that it has rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy in respect of the Disputed Domain Names. The Respondent did not disclose any relationship with the Complainants. Therefore, the Respondent has not claimed that it has rights or legitimate interests in the Disputed Domain Names.
“Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising [pay-per-click] links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users….In cases involving a website that is not predominantly a “typical” parked or PPC site (e.g., a blog, forum, or other informational page), where other clear, non-pretextual indicia of respondent rights or legitimate interests are present, some panels have been prepared to accept the incidental limited presence of PPC links as not inconsistent with respondent rights or legitimate interests.” (See section 2.9 of WIPO Overview 3.0)
The evidence provided by the Complainants demonstrates that the sole purpose of the Disputed Domain Names is to resolve to pay-per-click advertising websites and collect click-through revenue from advertising links. Such use demonstrates that the Respondent has used the Disputed Domain Names to derive a commercial benefit. The Respondent appears to be riding on the goodwill of the Complainant. Therefore, the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
Having considered the above, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”
The Complainants’ EUROMASTER and BFGOODRICH trademarks have been registered in many jurisdictions in the world and the Respondent chose to use their trademarks as the distinctive part of the Disputed Domain Names. No allegation or evidence suggests that the Respondent selected the EUROMASTER and BFGOODRICH trademarks as used in the Disputed Domain Names for any reason other than the reputation of the Complainants’ trademarks. Therefore, the Panel finds that the Disputed Domain Names were registered in bad faith.
According to the evidence filed by the Complainants, the Disputed Domain Names direct Internet users to parking pages with pay-per-clicks links. It seems that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to other website by creating a likelihood of confusion with the Complainants’ trademarks. The Panel concludes that the Disputed Domain Names were used in bad faith.
Having considered the above, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith, and thus the condition of paragraph 4(a)(iii) of the Policy has been fulfilled. 8. 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 Compagnie Générale des Etablissements Michelin, and the Disputed Domain Name be transferred to the Complaint EURODRIVE Services and Distribution N.V.
Peter J. Dernbach
Sole Panelist
Date: August 1, 2018
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