The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Yuanping Chen of Ganzhou, China. 2. The Domain Name and Registrar
The disputed domain name is registered with MAFF Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 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 October 12, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 15, 2018. The Respondent did not comment on 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 English and Chinese of the Complaint, and the proceedings commenced on October 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 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 Complainant is a leading tire company. It operates 68 production facilities in 17 countries, including two production facilities in China, located in Shanghai and Shenyang. It holds multiple trademark registrations for MICHELIN, including international trademark registration number 771031, registered on June 11, 2001, designating multiple jurisdictions, including China, and specifying goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42. The Complainant uses the domain names (registered on December 1, 1993) and (registered on June 16, 2001) in connection with its official websites, where it provides information about itself and its products.
The Respondent is an individual resident in Ganzhou, China. According to evidence provided by the Complainant, the Respondent’s name is associated with over 1,000 domain names, including , which was created on the same day as the disputed domain name.
The disputed domain name was created on June 2, 2018. At the time of the Complaint, it resolved to a betting website in Chinese with buttons for versions in other languages, including English. At the time of this decision, it no longer resolves to any active website. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s MICHELIN trademark. The disputed domain name reproduces that trademark in its entirety and associates it with the letters “cny”, which are an abbreviation for the Chinese currency.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said mark. The Respondent is not commonly known by the disputed domain name or the name “Michelin”. The Respondent’s use of the disputed domain name cannot be considered a bona fide offering of goods or services as the Respondent is taking unfair advantage of the Complainant’s goodwill and reputation for his own financial gain. The disputed domain name resolves to a website related to gambling activities from which the Respondent is undoubtedly obtaining financial gain.
The disputed domain name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. The Complainant is well-known throughout the world including China where the Respondent is located. The disputed domain name reproduces the Complainant’s trademark, which is inherently distinctive and well known in relation to tires. The Complainant’s trademark rights significantly predate the registration date of the disputed domain name. The Respondent’s use of the disputed domain name for commercial gain and with the purpose of capitalizing on the notoriety of the Complainant’s MICHELIN trademark cannot constitute good faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main argument is that translation of the Complaint into Chinese would create an unreasonable cost and unduly delay the proceeding.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. The website to which the disputed domain name resolves appears to include an English version, which tends to indicate that the Respondent is able to understand that language. In any case, despite having received email communications from the Center in English and Chinese, the Respondent has not expressed any interest in responding to the Complaint or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint would create an undue burden and unnecessary delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the MICHELIN trademark.
The disputed domain name wholly incorporates the Complainant’s MICHELIN trademark as its initial element. After that trademark, the disputed domain name includes the letters “cny” which are a currency abbreviation for Chinese yuan. These letters do not prevent confusing similarity between the disputed domain name and the Complainant’s trademark.
The only other element in the disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is generally incapable of preventing confusing similarity between a domain name and a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following 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 Respondent formerly used the disputed domain name in connection with a betting website. The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant informs the Panel that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said mark. Nothing on the website indicates any connection to “Michelin” other than an attempt to profit from the fame and reputation of that mark. These circumstances indicate that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. In any case, the disputed domain name no longer resolves to any active website. These circumstances do not fall within the terms of paragraph 4(c)(i) or (iii) of the Policy.
The Respondent’s name is “Yuanping Chen” and there is no evidence that he has been commonly known as “Michelincny” or even “Michelin”. Nothing else on the record indicates that the Respondent has any rights or legitimate interests in respect of the disputed domain name. This circumstance does not fall within the terms of paragraph 4(c)(ii) of the Policy.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(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 Respondent registered the disputed domain name in June 2018, many years after the Complainant obtained its earliest trademark registration, including in China, where the Respondent is resident. The disputed domain name wholly incorporates the Complainant’s MICHELIN trademark, which is not a dictionary word. The Respondent has acquired a considerable reputation in its trademark through use and promotion, including in China, where the Respondent is resident. The disputed domain name combines the Complainant’s MICHELIN trademark with the letters “cny”, which are an abbreviation for China’s currency, giving the impression that the disputed domain name was to be used in connection with a Chinese website associated with the Complainant. The Respondent registered the disputed domain name and the domain name , which also incorporates a third party trademark, on the same day. The Panel finds it implausible that this was a coincidence and is persuaded that the Complainant was aware of the Complainant’s trademark rights in MICHELIN at the time of registration of the disputed domain name. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.
The Respondent formerly used the disputed domain name in connection with a betting website. The Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website. The Panel notes that the use of the disputed domain name has changed since the Complaint was filed, and that it no longer resolves to any active website. This does not alter the Panel’s conclusion regarding use of the disputed domain name in bad faith, on the contrary, it may constitute further evidence of bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 name be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: November 26, 2018
Full & Egal Universal Law Academy