The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Cheng Jin Cheng (程进城), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2020. 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 June 15, 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 the same day 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 in English on June 16, 2020. On June 15, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, the Complainant confirmed its request 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 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2020. The Center appointed Matthew Kennedy as the sole panelist in this matter on July 31, 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 The Complainant is a leading tire company. It also offers electronic mobility support services on “www.viamichelin.com” and publishes travel guides, hotel and restaurant guides, maps and road atlases. The Complainant has been present in mainland China for over 30 years: it opened a representative office in Beijing in 1989 and established a joint venture called “Michelin Shenyang Tire Co., Ltd” in 2003. The Complainant owns multiple trademark registrations for MICHELIN including Chinese trademark registration number 136402, registered on April 5, 1980, specifying tires and other goods in class 12; Chinese trademark registration number 6167649, registered on January 7, 2010, specifying land, air, water or rail carriers and other goods in class 12; and Chinese trademark registration number 10574991, registered on June 7, 2013, specifying maps, guidebooks and other goods in class 16. All those trademark registrations remain current. The Complainant also registered the domain name The Respondent is an individual resident in China. The disputed domain name was created on January 18, 2020. There is no evidence that it has ever resolved to an active website; rather, it is passively held. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or at least confusingly similar to the Complainant’s trademark MICHELIN. Indeed, the disputed domain name substantially reproduces the Complainant’s trademark in its entirety. It adds only “cn”, which is the two-letter country code corresponding to China. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not 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 trademarks. There is no indication that the Respondent is using, or intending to use, the disputed domain name, in a legitimate noncommercial or fair use manner. 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. The composition of the disputed domain name entirely reproduces the Complainant’s trademark MICHELIN. Passive holding of a domain name does not preclude a finding of use in bad faith. Reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in 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 arguments are that it has no knowledge of Chinese and that translation of the Complaint into Chinese would incur undue delay and substantial expense. Paragraphs 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 and amended Complaint in this dispute were filed in English. Despite the Center having sent the emails of notification of the Complaint and the language of the proceeding in both Chinese and English to the Respondent, the Respondent has not expressed any interest in responding to the Complaint, commenting on the language of the proceeding or otherwise participating in this proceeding. In these circumstances, the Panel considers that requiring the Complainant to translate the amended Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding will not unfairly prejudice either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name: (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 mark. The disputed domain name wholly incorporates the MICHELIN mark in its entirety as its initial and only distinctive element. The disputed domain name also includes the element “-cn”, which comprises a hyphen and the two-letter country code for China. As a mere geographic element, that is unable to dispel the confusing similarity between the disputed domain name and the trademark. See, for example, Incase Designs Corp. v. Zhou Bing Cun, Shen Zhen Shi A Rui Si Jing Mao You Xian Gong Si,WIPO Case No. D2019-0700. The only additional element is a generic Top-Level Domain (“gTLD”) suffix, (“.com”). As a technical requirement of registration, a gTLD suffix is disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case in this case. 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 a 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. As regards the first and third circumstances set out above, the disputed domain name does not resolve to any active website. That is not a use of the disputed domain name in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy. Nor is it a legitimate noncommercial or fair use of the disputed domain name within the circumstances of paragraph 4(c)(iii) of the Policy. As regards the second circumstance set out above, the Respondent’s name is listed in the Registrar’s verification email as “Cheng Jin Cheng (程进城)”. The administrative contact for the disputed domain name, who may be the same person, is named “Jason Cheng”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy. In summary, 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 prima facie case because he did not respond to the amended 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 shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive. With respect to registration, the disputed domain name was registered in 2020, many years after the registration of the Complainant’s MICHELIN trademark, including in China, where the Respondent is resident. Besides a hyphen, the country code for China and a gTLD suffix, the disputed domain name consists of the exact trademark MICHELIN. The Complainant has acquired a considerable reputation in its MICHELIN mark through its long-standing use and extensive promotion of that mark, including in China, where the Respondent is resident. The Complainant and its goods and services are the top results of a search for “Michelin” in the Baidu search engine. Accordingly, the Panel does not consider it a coincidence that the disputed domain name wholly incorporates that mark. Rather, the Panel considers it likely that the Respondent knew of the Complainant’s mark at the time of registration of the disputed domain name and that he registered the disputed domain name in bad faith. With respect to use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present dispute, the disputed domain name wholly incorporates the MICHELIN trademark as its initial element, combined with only a hyphen, the country code for China and a gTLD suffix. The Complainant has acquired a considerable reputation in its MICHELIN mark through its long-standing use and extensive promotion of that mark. The disputed domain name rearranges the elements of the domain name 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 Matthew Kennedy
Sole Panelist
Date: August 14, 2020
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