The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.
The Respondent Is Chang Qing Liang, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2021, the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain name;
(b) the Respondent is listed as the registrant and providing the contact details; and
(c) the language of the registration agreement was English.
The Center verified that the 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 August 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2021
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 27, 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 BackgroundThe Complainant was first established in France in 1889. It is involved in manufacturing and marketing tyres for every type of vehicle, including aeroplanes, automobiles, bicycles/motorcycles, earthmovers, farm equipment, and trucks. It also offers electronic mobility support services on the website “www.viamichelin.com” and publishes travel guides, hotel and restaurant guides, maps, and road atlases. According to the Complaint in this proceeding, the Complainant has operations in more than 170 countries, has 124,000 employees, and 117 production sites in 26 countries. The Complainant also has 7,600 proprietary or franchised distribution centers in 30 countries.
The Complaint states that the Complainant first set up a sales company in Hong Kong, China. It opened a representative office in Beijing, China in 1989 and established a joint venture tyre manufacturing company, Michelin Shenyang Tire Co. Ltd, in 2003. As a result of the expansion of its activities, it now has 5,644 employees in its operations in China.
The 2020 edition of the Michelin Guide Taipei & Taichung listed 226 restaurants; 30 of which have been awarded at least one star. There has been a slight reduction 2021 as the 2021 edition lists one restaurant with three stars, six with two stars, and 19 with one Michelin star. In addition, the capital has 79 Michelin Plate restaurants and 11 Michelin Plate food stalls.
Amongst other things, the Complaint includes evidence that the Complainant is the owner of the following registered trademarks:
(a) International Registration No. 771031, MICHELIN, which was registered on June 11, 2001, in respect of a wide range of goods and services in International Classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, and 42 and which designates some 50 countries in which protection has been obtained. China is one of those countries.
(b) European Union Trademark No. 004836359, MICHELIN, which was registered on March 13, 2008, in respect of a wide range of goods and services in International Classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16,17, 18, 20, 21, 24, 25, 26, 28, 34, and 39.
(c) International Registration No. 1245891, MICHELIN, which was registered on December 10, 2014, in respect of a range of services in International Classes 35, 36, 39, 40, 41, 42, 44, and 45 and includes a number of countries which were not designated in International Registration No. 771031.
According to the Registrar, the disputed domain name was registered on June 5, 2021.
When the Complaint was filed, it had not resolved to an active website since its registration.
5. Discussion and FindingsNo response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
The Registrar has confirmed that the language of the registration agreement is English. Under paragraph 11 of the Rules, therefore, that is the language of the proceeding. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 4.5.
A. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for MICHELIN identified in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0, section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark and the term “-tw”. “tw” is the Alpha-2 code adopted by the International Standards Organisation (ISO) for Taiwan, Province of China. As the first requirement under the Policy is essentially a standing requirement, the addition of such descriptive or geographical terms does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The adoption and registration of the name and trademark MICHELIN by the Complainant preceded the Respondent’s registration of the disputed domain name by many years.
Further, the Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
In addition, the disputed domain name is plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
So far as the record in this proceeding shows, the Respondent is not using the disputed domain name in connection with the offer of any goods or services. Nor has evidence of any demonstrable preparations to commence such use been advanced.
As noted in section 4A above, “tw” is the two letter ISO code identifying Taiwan, Province of China. It has long been recognised under the Policy that combinations of a trademark with a geographic term are likely to suggest sponsorship or association with the trademark owner. See e.g. WIPO Overview 3.0, section 2.5.1.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad FaithUnder the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The trademark MICHELIN is very well known around the world. It is also an invented or coined term, not descriptive. Further, as considered in section 5B above, the term “michelin” does not appear to be associated with the Respondent in any way. In these circumstances, therefore, it appears that the Respondent has adopted the disputed domain name because of its trademark significance.
Moreover, for the reasons considered in section 5B, the composition of the disputed domain name is likely to carry with it a false suggestion of affiliation with or sponsorship or endorsement by the Complainant.
In these circumstances, it does not appear feasible that the Respondent could use the disputed domain name legitimately without infringing the Complainant’s rights or misrepresenting an association with the Complainant.
In circumstances where the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered it in bad faith. In these circumstances, as the Complainant points out, the passive holding of the disputed domain name in the face of a trademark as well-known as the MICHELIN trademark constitutes use in bad faith under the Policy. See e.g. Telstra Corporation Limited v Nuclear MarshmallowsWIPO Case No. D2000-0003.
Accordingly, the Complainant has established all three requirements under the Policy.
6. DecisionFor 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,
Warwick A. Rothnie
Sole Panelist
Date: October 11, 2021