Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
Respondent is 王先生 (Wang Xian Sheng), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 16, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on August 18, 2021.
On August 16, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 17, 2021, Complainant confirmed its request that English be the language of the proceeding. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on August 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 15, 2021.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 24, 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 BackgroundComplainant, Compagnie Générale des Etablissements Michelin, is a tire company headquartered in France. Complainant is present in 171 countries, including China, where Respondent operates and resides. In 1989, Complainant established a representative office in Beijing, China and in December 2001, Michelin (China) Investment Co., Ltd. was established and headquartered in Shanghai, China.
In addition, the Michelin Guide was first launched in 1920 in order to help motorists plan their trips – which assist with car sales and in turn, tire purchases. In 1926, the Guide began to award stars for fine dining establishments. The Michelin Guide now rates over 30,000 establishments in over 30 territories across three continents, and more than 30 million Michelin Guides have since been sold worldwide. In 2001, ViaMichelin was set up to develop digital services for travel assistance. Digital services were developed in the 2010’s, with the launch of the Michelin Restaurants website in 2012, and of the Michelin Mobility Apps in 2013.
Complainant owns numerous registered trademarks for MICHELIN worldwide, including:
- International Trademark No. 771031, registered on June 11, 2001, designating, among others, China;
- International Trademark No. 574577, registered on May 6, 1991, designating, among others, China;
- European Union Trademark No. 004836359, registered on March 13, 2008.
In addition, Complainant operates various domain names with its trademark, including:
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Prior to initiating the present proceeding, Complainant attempted to contact Respondent to resolve this matter amicably. Upon becoming aware of the Domain Name, Complainant sent a cease-and-desist letter to Respondent on April 25, 2021 via the Registrar of the Domain Name, and via an online contact form, setting forth Complainant’s trademark rights, and requesting Respondent to cease the use of the Domain Name and to transfer it to Complainant. Complainant also sent a notification to the Registrar, to request that the Domain Name be put on hold and be deactivated. Despite several reminders, no response was received. Complainant then initiated the current UDRP procedure against Respondent.
Respondent registered the Domain Name on February 1, 2021. At the time of filing of the Complaint, the Domain Name directed users to a website which displayed sports betting content in Chinese. At the time of the Decision, the Domain Name resolves to an error page.
5. Parties’ Contentions A. ComplainantComplainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the MICHELIN marks and own domain names incorporating the MICHELIN marks. Complainant contends that Respondent registered and is using the Domain Name to confuse Internet users looking for bona fide and well-known Michelin products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the ProceedingThe Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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.
Complainant submitted its original Complaint in English. In its Complaint, email communication to the Center on August 17, 2021, and amended Complaint, Complainant requests that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
Complainant contends that the Domain Name is comprised of Latin characters, which strongly suggests that Respondent has knowledge of languages other than Chinese. Complainant also contends that it is located in France and has no knowledge of Chinese. Thus, it would be unfairly burdensome for Complainant to translate and conduct the proceeding in Chinese. Complainant also notes that English is the primary language for international relations.
In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that the Center notified the Parties in both Chinese and English of the language of the proceeding as well as notify Respondent in both Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a Response. Further, the Panel notes that the Domain Name was registered using Latin characters.
The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese.
Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.2. Substantive IssuesUnder paragraph 4(a) of the Policy, to succeed, Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
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 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, although in this case Respondent has failed to respond to the Complaint, 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 SimilarOwnership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the MICHELIN marks, as noted above. Complainant has also submitted evidence, which supports that the MICHELIN marks are widely known trademarks and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the MICHELIN marks.
With Complainant’s rights in the MICHELIN mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s MICHELIN marks. These marks are recognizable in the Domain Name. The incorporation of the MICHELIN mark with the addition of the letters “dc”, after “michelin”, in the Domain Name
Thus, the Panel finds that Complainant has satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the MICHELIN marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the MICHELIN trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the MICHELIN marks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that at the time of filing of the Complaint, the Domain Name directed users to a website which displayed sports betting content in Chinese. At the time of the Decision, the Domain Name resolves to an error page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the MICHELIN marks long predate the registration of the Domain Name by Respondent, more specifically, the MICHELIN marks, have been registered since at least as early as 1991, well before Respondent registered the Domain Name on February 1, 2021. Complainant is also well established and known. Indeed, the record shows that Complainant’s MICHELIN marks and related services are widely known and recognized including in China. Therefore, Respondent knew or should have known Complainant and its MICHELIN marks at the time of registration of the disputed domain name. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org. / Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007.
Further, the evidence demonstrates that at the time of filing of the Complaint, the Domain Name directed users to a website which displayed sports betting content in Chinese. Therefore, Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, users to its website or other online location, by creating a likelihood of confusion with Complainant’s MICHELIN mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
At the time of the Decision, the Domain Name resolves to an error page. Here, the present circumstances, including the distinctiveness and reputation of the MICHELIN marks, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good faith use to which the Domain Name may be put, support a finding of bad faith. See section 3.3 of the WIPO Overview 3.0.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Kimberley Chen Nobles
Sole Panelist
Date: October 8, 2021