Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
Respondent is zhou yuan kun, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2020. On May 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2020, the Registrar transmitted by email to the Center its verification response 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 May 26, 2020 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 May 26, 2020. 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 of the Complaint, and the proceedings commenced on June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on June 29, 2020. 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 Complainant is a multinational company headquartered in France that has been manufacturing and selling tires for automobiles under the MICHELIN trademark since the year 1889. It has a commercial presence in 171 countries, employs over 114,000 employees and operates 69 major manufacturing facilities in 17 countries. It has had a commercial presence in China since 1988 and currently employs more than 6,000 people in the country. Complainant owns Chinese trademark registration numbers 14122988 (registered in April 14, 2015) and 6167649 (registered on January 7, 2010) for its MICHELIN trademark (“Complainant’s Mark”). It also owns and operates the websites located at the Respondent registered the disputed domain name Complainant asserts that the disputed domain name is confusingly similar to its MICHELIN mark because it incorporates the MICHELIN trademark entirely. Complainant argues that the inclusion of the term “post” is insufficient to distinguish the disputed domain name since “post” is a generic term. Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent cannot claim to be making any legitimate noncommercial or fair use of the disputed domain name because Complainant’s use and registration of its MICHELIN mark precede the disputed domain name’s registration and the disputed domain name misleadingly diverts consumers to a website containing adult content for commercial gain, which also tarnishes Complainant’s Mark. Complainant further argues that Respondent cannot claim to be using, or show any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods because the adult-oriented content to which the disputed domain name directed “seems to be illegal in China”. Lastly, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had constructive or actual knowledge of Complainant’s rights in the MICHELIN mark given its worldwide notoriety, the existence of Chinese trademark registrations for the MICHELIN mark at the time the disputed domain name was registered, and the complete incorporation of the MICHELIN mark within the disputed domain name. Furthermore, Complainant argues that there can be no conceivable good faith use to which the disputed domain name could be put. Respondent’s primary motive, according to Complainant, is to capitalize on or otherwise take advantage of Complainant’s trademark rights, through the creation of initial interest of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website relating to adult content. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 1. UDRP Elements Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided ample evidence that it has rights in the MICHELIN trademark through its Chinese trademark registrations. With Complainant’s rights in the MICHELIN mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. It is also well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Here, Complainant’s MICHELIN mark is fully incorporated in the disputed domain name. The inclusion of the dictionary term “post” does nothing to prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s MICHELIN mark. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As expressed in previous UDRP decisions, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards, (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. WIPO Overview 3.0, section 2.2. In this case, the Panel finds that Complainant has made out a prima facie case. Complainant has established that it has rights in the MICHELIN mark that long predate the disputed domain name’s registration and Complainant has asserted that it has never authorized Respondent to use Complainant’s Mark or any variation thereof. Further, Respondent’s offering of adult-oriented content under a trademark that Respondent was not authorized, licensed or permitted to use cannot be considered a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. A finding to the contrary would run against the intent of paragraph 4(c)(i) of the Policy. See American Eyewear, Inc. v. Thralow, Inc.,WIPO Case No. D2001-0991 (Stating “[a]lthough use in connection with the sale of goods and services, is apparent, our inquiry must go further since not all such use qualifies as bona fide use. ‘To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.’ (quoting Ciccone v. Parisi,WIPO Case No. D2000-0847)”. Respondent is also not making legitimate noncommercial or fair use of the disputed domain name. There is no indication that Respondent is making any criticism, parody or other protectable expression through the use and registration of the disputed domain name. Respondent’s unauthorized use of Complainant’s Mark in connection with a website containing adult content cannot be considered a legitimate noncommercial or fair use. See V&V Supremo Foods, Inc. v. pxlchk1@gmail.com,WIPO Case No. D2006-1373, citing Qwest Communications International, Inc. v. DefaultData.com a/k/a Brian Wick,WIPO Case No. D2003-0002. There is also no evidence on record suggesting that Respondent is commonly known by the disputed domain name. Respondent has also failed to rebut any of Complainant’s allegations or evidence. Accordingly, the Panel concludes that Respondent does not have rights or a legitimate interest in the disputed domain names within the meaning of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(a) (iii) of the Policy requires that a domain name was registered and used in bad faith. Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. WIPO Overview 3.0, section 3.4. Paragraph 4(b) of the Policy provides a non-exhaustive list of scenarios which constitute evidence of a respondent’s bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark 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 domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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. Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden under paragraph 4(a)(iii) of the Policy. WIPO Overview 3.0, section 3.4. In this case, bad faith can be found in the registration of the disputed domain name. Complainant provided ample evidence showing widespread use of the MICHELIN mark that long predates Respondent’s registration of the disputed domain name. Complainant also provided evidence of Chinese trademark registrations it owns for the MICHELIN mark that were in force at the moment the disputed domain name was registered. Therefore, Respondent was likely aware of Complainant’s Marks when it registered the disputed domain name, or knew or should have known that they were identical or confusingly similar to Complainant’s Marks. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Furthermore, UDRP panels have also consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Since the disputed domain name incorporates Complainant’s Mark fully and is merely accompanied by the term “post”, bad faith registration of the disputed domain name can be presumed. The disputed domain name was also used in bad faith. Even though Complainant’s evidence does not necessarily support the literal or verbatim application of one of the scenarios listed in paragraph 4(b) of the Policy, it does support the conclusion that Respondent engaged in behavior detrimental to the Complainant’s Mark. WIPO UDRP panelists have consistently found that unauthorized use of a complainant’s mark in a domain name that leads consumers to websites containing adult content is evidence of bad faith. See Helmut Lang S.a.r.l. v. Mr. Stanley Filoramo,WIPO Case No. D2003-0822 (“[t]he fact that the disputed domain name is redirected to a pornographic website is an indication that the domain name has been registered and used in bad faith.”); Ty, Inc., v. O.Z. Names (WIPO Case No. D2000-0370), (finding that, absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022 (“the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); America Online, Inc. v. Viper,WIPO Case No. D2000-1198 (use of the complainant’s mark as part of domain name offering pornographic goods and services tarnishes mark and is evidence of bad faith). For these reasons, this Panel finds that Complainant has satisfied its burden of showing that Respondent’s registration and use of the disputed domain name were in bad faith in accordance with 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 name Brian J. Winterfeldt
Sole Panelist
Date: July 13, 2020
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