The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent is Whois Privacy Protection Service by onamae.com, Japan / GuangSheng Chen, ChenGuangSheng, 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 23, 2021. On June 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2021, 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 June 26, 2021 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 30, 2021. On June 26, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On June 30, 2021, 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 Japanese of the Complaint, and the proceedings commenced on July 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2021. The Center appointed Keiji Kondo as the sole panelist in this matter on September 2, 2021. 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. The Complainant is dedicated to enhancing its clients’ mobility, sustainably, designing and distributing the suitable tires, services and solutions for its clients’ needs, providing digital services, maps and guides to help enrich trips and travels and make them unique experiences, and developing high technology materials that serve the mobility industry. The tire sales business in Japan began in 1964. The first step for the Complainant in Japan is the adoption of steel radial tires on the new monorail between Hamamatsucho and Haneda Airport. The Complainant established Nihon Michelin Tire Co., Ltd. in 1975, and has steadily increased its presence in the Japanese market. The Complainant set up a sales company in Hong Kong, China in order to further strengthen the development of the Chinese market. In 1989, the Complainant set up a representative office in Beijing, the first representative office in mainland China, which was responsible for product promotion and preparation of distribution network. The Complainant is the owner of the following trademark registrations: - Japanese trademark MICHELIN No. 5620241, filed on June 29, 2011, registered on October 4, 2013, covering goods in classes 9, 35, 37, 38, 39, 41, 42 and 43; The disputed domain name The disputed domain name resolves towards a Chinese website with adult content, as well as with links to gambling pages. 5. Parties’ Contentions A. Complainant The disputed domain name is virtually identical, or at least confusingly similar to the Complainant’s trademark, MICHELIN. The disputed domain name reproduces the MICHELIN trademark in its entirety, which previous UDRP panels have considered to be “well known” or “famous” (Compagnie Générale des Etablissements Michelin v.World Industrial, LNQ,WIPO Case No. D2019-0553, Compagnie Générale des Etablissements Michelin v. Kanoksak Puangkham,WIPO Case No. D2018-2331, Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios, WIPO Case No. D2017-0234, Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu,WIPO Case No. D2014-1240,Compagnie Générale des Etablissements Michelin (Michelin) v. Zhichao Yang,WIPO Case No. D2013-1418, Compagnie Générale des Etablissements Michelin v. Milan Kovac/Privacy--Protect.org,WIPO Case No. D2012-0634, Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / Above.com Domain Privacy,WIPO Case No. D2012-0045, and Compagnie Générale des Etablissements Michelin v. Cameron David Jackson,WIPO Case No. D2015-1671). In many UDRP decisions, it is well established that “Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusinglysimilar to that mark” (L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang,WIPO Case No. D2011-1627, Rapidshare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059, and The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113). See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The disputed domain name reproduces the MICHELIN trademark with the addition of the numerical suffix “7”. The addition is insufficient to avoid any likelihood of confusion. Several previous UDRP panels have accepted that the numerical suffix does not have any impact on the overall impression of the domain name dominated by the trademark and have held that the domain name is therefore confusingly similar to the trademark (LEGO Juris A/S v. Yuewei wang,WIPO Case No. D2011-1920, Lancôme Parfums Et Beauté Et Compagnie v. Mai Jia Chang, Zhang Weilin, Yang Hao, Xu xu, She ru, Whois Privacy Protection Services Inc / fang fang,WIPO Case No. D2013-0021, Zippo Manufacturing Company v. PrivacyProtect.org, Domain Admin/jiangdaoqian,WIPO Case No. D2013-2240). Finally, the extension “.com” is not to be taken into consideration when examining the identity or confusing similarity between the Complainant’s trademark and the disputed domain names, as it is viewed as a standard registration requirement (see section 1.11 of the WIPO Overview 3.0.). Indeed, the mere adjunction of a generic Top-Level Domain (“gTLD”) such as “.com” is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (L’Oréal v Tina Smith, WIPO Case No. D2013-0820 and Alstom v. Itete Peru S.A.,WIPO Case No. D2009-0877). For all of the above-mentioned reasons, the disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN within the meaning of paragraph 4(a)(i) of the Policy. The Respondent is neither affiliated with the Complainant in any way nor has been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating the said trademark. Furthermore, the Respondent cannot claim prior rights or legitimate interests in the disputed domain name as the MICHELIN trademark precedes the registration of the disputed domain name for years. The Respondent is not commonly known by the disputed domain name or the name “Michelin”, in accordance with paragraph 4(c)(ii) of the Policy. There is no evidence that the Respondent may be commonly known by the name “Michelin”. In previous UDRP decisions, panels found that in the absence of any license or permission from the Complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138). Moreover, the Respondent cannot assert that, before any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. The disputed domain name resolves to a webpage in Chinese relating to adult content, displaying links that redirect to gambling pages, which seems to be illegal in China. Such a use can be considered neither as a use of the disputed domain name in connection with a bona fide offering of goods and services, nor as a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. For all of the above-mentioned reasons, it is undoubtedly established that the Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy. Bad faith can be found where the Respondent “knew or should have known” of the Complainant’s trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interests (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320, The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). It is implausible that the Respondent was unaware of the Complainant’s trademark when it registered the disputed domain name. Firstly, the Complainant is well known throughout the world, including Japan and China. In this regard, many UDRP panels have previously acknowledged the Complainant’s reputation worldwide, making it unlikely that the Respondent was not aware of the Complainant’s rights in the said trademark (Compagnie Générale des Etablissements Michelin v. World Industrial LNQ,WIPO Case No. D2019-0553, Compagnie Générale des Etablissements Michelin v. Kanoksak Puangkham,WIPO Case No. D2018-2331, Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios,WIPO Case No. D2017-0234, Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu,WIPO Case No. D2014-1240, Compagnie Générale des Etablissements Michelin (Michelin) v. Zhichao Yang,WIPO Case No. D2013-1418, Compagnie Générale des Etablissements Michelin v. Milan Kovac/Privacy--Protect.org,WIPO Case No. D2012-0634, Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev, WIPO Case No. D2012-0384, Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / Above.com Domain Privacy,WIPO Case No. D2012-0045, and Compagnie Générale des Etablissements Michelin v. Cameron David Jackson,WIPO Case No. D2015-1671). Secondly, the composition of the disputed domain name Thirdly, the Complainant’s trademark registrations significantly predate the registration date of the disputed domain name. In this regard, previous UDRP panels have established that knowledge of the Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name prove bad faith registration (Alstom v. Domain Investments LLC,WIPO Case No. D2008-0287, NBC Universal Inc. v. Szk.com,WIPO Case No. D2007-0077). Under paragraph 2 of the Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. It means that it was the Respondent’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering the domain name (Compagnie Gervais Danone contre Gueorgui Dimitrov / NETART,WIPO Case No. D2009-0901, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806, Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397). A quick MICHELIN trademark search would have revealed to the Respondent the existence of the Complainant and its trademark. The Respondent’s failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226). Even supposing that the Respondent was not aware of the possibility of searching trademarks online before registering the domain name, a simple search via Google or any other search engine using the keyword “Michelin” demonstrates that all first results relate to the Complainant’s products or news. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. Taking into account the worldwide reputation of the Complainant and its trademark, as well as the high level of notoriety of the Complainant, it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademark at the time of registration of the disputed domain name. It is most likely that the Respondent registered the disputed domain name based on the notoriety and attractiveness of the Complainant’s trademark to divert Internet traffic to its website, which content is illegal in China, for commercial gain. Hence, in view of the above-mentioned circumstances, it is inconceivable that the Respondent did not have the Complainant’s trademark in mind at the time of registration of the disputed domain name. Consequently, it is established that the Respondent registered the disputed domain name in bad faith. Some elements may be put forward to support the finding that the Respondent also uses the disputed domain name in bad faith. It is submitted that the Respondent is using the disputed domain name to intentionally attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy. The direction of the disputed domain name towards a Chinese webpage relating to adult and gambling content, which is prohibited in China evidences an intent to misleadingly divert consumers by taking unfair advantage of the goodwill and reputation of the Complainant’s trademark. There is no doubt in this case that, at all times, the Respondent was aware that MICHELIN enjoyed a substantial reputation worldwide. In light of this knowledge, the Respondent has used the disputed domain name to direct Internet users and generate more traffic on a Chinese webpage displaying adult content and gambling links. This situation is extremely prejudicial to the Complainant. Finally, given the Complainant’s goodwill and renown worldwide, and the nature of the disputed domain name, which is confusingly similar to the Complainant’s trademark, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the disputed domain name, as it would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights. All aforementioned circumstances confirm that the disputed domain name is being used in bad faith. Consequently, it is established that the Respondent has both registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding The Registrar has confirmed that the language of the Registration Agreement is Japanese, but the Complaint has been submitted in English. On June 26, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On June 30, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding: - the Complainant identifies Whois Privacy Protection Service by onamae.com from Japan and GuangSheng Chen, ChenGuangSheng from China as the Respondent; The Complainant owns international and Japanese trademark registrations for MICHELIN. The disputed domain name consists of “michelin”, “7” and a gTLD, “.com”. The disputed domain name entirely incorporates the Complainant’s trademark MICHELIN. In the disputed domain name, the part “michelin” is clearly recognizable, and it naturally attracts attention of Internet users. Moreover, the addition of “7” does not prevent a finding of confusing similarity. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The disputed domain name resolves to a webpage in Chinese relating to adult content and displaying links that redirect to gambling pages. Such use can be considered neither as a use of the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor as legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. The Respondent having actual interest in the disputed domain name is, as mentioned above, GuangSheng Chen, ChenGuangSheng, whose name has no similarity to the Complainant’s trademark MICHELIN. Therefore, the Panel finds that the Respondent has never been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.. Accordingly, the Panel finds 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, which has not been rebutted by the Respondent. Therefore, the Complaint has satisfied the requirements within the meaning of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered on February 21, 2021, long after International Trademark Registration No. 771031 for MICHELIN which was registered on June 11, 2001. Considering the presence of the Complainant in Japan and China even before the trademark registration, it is inconceivable that the Respondent was not aware of the Complainant and its trademark at the time of the disputed domain name registration. Other than the corporate name and the trademark of the Complainant, “Michelin” does not appear to have any meaning in Japanese, Chinese, or English. Therefore, the Panel concludes that the Respondent intentionally chose the disputed domain name to attract attention of Internet users, getting a free-ride on the famousness of the Complainant. The Panel finds that the disputed domain name was registered in bad faith. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. The Respondent uses the disputed domain name to direct Internet users to a Chinese website with adult content and links to gambling pages. Such use naturally creates a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s website. In addition, the situation is extremely prejudicial to the Complainant because it could tarnish the reputation of the Complainant. Further, it may also disrupt the business of the Complainant. Therefore, the Panel finds that the disputed domain name is being used in bad faith. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of 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 Keiji Kondo
- International trademark MICHELIN No. 1245891, registered on December 10, 2014, designating inter alia Australia, Japan, the Russian Federation, and covering services in classes 35, 36, 39, 40, 41, 42, 44 and 45;
- International trademark MICHELIN No. 771031, registered on June 11, 2001, covering goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42 and designating among others China.
- the Registrar has confirmed that “Whois Privacy Protection Service by onamae.com” is the name of a privacy registration service provided by the Registrar’s reseller, and the actual party having interest in the disputed domain name is GuangSheng Chen, ChenGuangSheng;
- the Complaint was filed in English;
- the Complainant is a French entity, and represented by a French law firm;
- the address of GuangSheng Chen, ChenGuangSheng is in China, and the website at the disputed domain name displays commercial messages in Chinese;
- the Respondent did not comment on the language of the proceeding;
- the Respondent did not reply to the Complainant’s contentions in any way; and
- ordering the translation of the Complaint would only result in extra delay of the proceeding and additional cost for the Complainant. 6.2. Substantive Issues A. Identical or Confusingly Similar
Sole Panelist
Date: September 14, 2021
Full & Egal Universal Law Academy