The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Yongkun Wang of Shanghai, China, self-represented. 2. The Domain Names and Registrar
The disputed domain names and are 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 October 5, 2018. On October 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 8, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent of the disputed domain name is listed as the registrant and providing the contact details, and disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 17, 2018.
On October 12, 2018, the Center sent an email in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and the Respondent requested that Chinese be the language of the proceeding on October 16, 2018.
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 October 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2018. The Respondent did not submit any substantive Response. On November 9, 2018, the Center notified the Parties that it would proceed with panel appointment process.
The Center appointed Sok Ling Moi as the sole panelist in this matter on November 14, 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, founded in 1889 and headquartered in France, is one of the world’s leading tire companies. The Complainant is present in 170 countries, operates 68 production facilities in 17 countries (two of which are in China) and employs over 100,000 employees worldwide (including over 5,000 in China).
The Complainant owns numerous trade mark registrations for MICHELIN in several jurisdictions around the world, including the following registrations in China:
Jurisdiction
Mark
Registration Number
Registration Date
China
MICHELIN
136402
April 5, 1980
China
MICHELIN
6167649
January 7, 2010
China
MICHELIN
10574991
June 7, 2013
China
MICHELIN
9156074
February 14, 2013
The Complainant also owns, and operates websites through, the following domain name registrations reflecting its registered trade marks to promote its goods and services:
- registered on December 1, 1993;
- registered on June 16, 2001.
The disputed domain names and were registered on November 11, 2017, long after the Complainant has used and registered its trade mark MICHELIN. According to the evidence submitted by the Complainant, the disputed domain names redirect to identical holding pages offering the disputed domain names for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the each of the disputed domain names reproduces its well-known trade mark MICHELIN in its entirety without adornment and is therefore identical or at least confusingly similar to its trade mark.
The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, or to seek registration of any domain names incorporating its trade mark.
The Complainant contends that the Respondent has registered the disputed domain names primarily for the purpose of selling or otherwise transferring the same to the Complainant for valuable consideration, and also for the purpose of preventing the Complainant from reflecting its trade mark in corresponding domain names. The Complainant also contends that the Respondent has a history of cybersquatting, and is using the disputed domain names to confuse Internet users into believing that the Respondent’s websites are in some way connected with or endorsed by the Complainant, so as to attract Internet users to its websites for commercial gain. The Complainant therefore contends that the Respondent has registered and is using the disputed domain names in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain names to the Complainant. B. Respondent
The Respondent requested that Chinese be the language of the proceeding, but did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Issue: Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding.
Although the Respondent appears to be a Chinese individual, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names comprise Latin characters;
(b) the Respondent’s email address (namely, “rare…@”) comprises English words;
(c) the Respondent corresponded with the Center in fluent English (via email of October 16, 2018);
(d) based on a reverse WhoIs search independently conducted by the Panel using the registrant’s email, it appears the Respondent has registered several other domain names comprising English words, such as , , , and ; and
(e) the holding pages to which the disputed domain names redirect have contents in English (such as “the domain is for sale”).
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2. Substantive Issues
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(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.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in MICHELIN by virtue of its use and registration of the same as a trade mark.
Each of the disputed domain names effectively incorporates the Complainant’s trade mark MICHELIN in its entirety. The addition of the generic Top-Level-Domain (“gTLD”) “.在线” and “.fun” does not impact on the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark in this case.
Consequently, the Panel finds that each of the disputed domain names is identical to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974.
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the MICHELIN trade mark or to seek registration of any domain name incorporating the MICHELIN trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the term “michelin”.
As each of the disputed domain names redirects to a passive holding page, there is no evidence to suggest that the Respondent is using or has made any preparations to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.
In fact, the disputed domain names are being offered for sale on the holding pages, and such use of the disputed domain names can neither be considered fair nor legitimate.
Furthermore, the Respondent has failed to answer the Complainant’s cease-and-desist letter which suggests the Respondent is unable to provide a justification for its choice of the disputed domain names.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names. Since the Respondent has failed to offer any explanation for its registration of the disputed domain names, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(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 Panel notes, according to the evidence submitted by the Complainant, that the disputed domain names redirect to identical holding pages and are being passively held. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3.
The MICHELIN trade mark has been used and registered by the Complainant for more than a hundred years while its domain name has been registered since 2001. The Panel accepts that the Complainant and its distinctive trade mark MICHELIN enjoy a strong reputation worldwide and a significant Internet presence. A cursory Internet search would have disclosed the MICHELIN trade mark and its extensive use by the Complainant. A strong presumption therefore arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain names. Registration of a domain name that incorporates a complainant’s well-known trade mark by someone with no connection with the trade mark suggests opportunistic bad faith.
Given that the disputed domain names do not resolve to active websites in connection with a bona fide offering of goods or services, but are instead offered for sale, the Panel accepts that the Respondent may have registered the disputed domain names for the purpose of selling or otherwise transferring the same to the Complainant or one of its competitors for valuable consideration. The Panel notes, according to the evidence submitted by the Complainant, that the Respondent was previously involved in at least three domain name disputes involving domain names that incorporate well-known trade marks (see Compagnie Générale des Etablissements Michelin v. Yongkun Wang,WIPO Case No. D2018-1529; Accenture Global Services Limited v. Yongkun Wang, W.KING / 王永坤,WIPO Case No. D2017-2324; ArcelorMittal S.A. v. Yongkun Wang / 王永坤,WIPO Case No. D2017-2269) which suggests that the Respondent is engaged in a pattern of cybersquatting. The Panel therefore accepts that the Respondent may also have registered the disputed domain names for the purpose of preventing the Complainant from reflecting its trade mark in corresponding domain names. The circumstances referred to in paragraph 4(b)(i) and (ii) of the Policy are applicable.
The Respondent has not categorically denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain names, and taking into account all the circumstances of this case, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under 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 names and be transferred to the Complainant.
Sok Ling Moi
Sole Panelist
Date: December 1, 2018
Full & Egal Universal Law Academy