The Complainant is Michelin Recherche et Technique S.A. of Granges-Paccot, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Wang of Huai’an, Jiangsu, China. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with Hangzhou AiMing Network Co., LTD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2016. On January 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On January 15, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On January 15, 2016, the Center sent an email communication to the parties in both Chinese and English 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 by the specified due date.
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 in both Chinese and English, and the proceeding commenced on January 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2016.
The Center appointed Kar Liang Soh as the sole panelist in this matter on February 16, 2016. 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 manufacturer based in Switzerland and is part of the Michelin Group. The Michelin Group established its first joint venture in China in 1995 and now has offices in various cities in China including Beijing, Shanghai, Guangzhou, Chengdu, Shenyang and Xi’an.
The Michelin Group acquired the American tire company, BFGoodrich Corporation together with its trademark BFGOODRICH. The trademark registrations for BFGOODRICH are held by the Complainant, including China trademark registration number 292648 registered from July 10, 1987.
Previous UDRP Panels have found the trademark BFGOODRICH to be well-known (Michelin Recherche et Technique S.A. v. EAC International CO., Limited,WIPO Case No. D2013-1210; Michelin Recherche et Technique S.A. v. PrivacyP / DH5740243, DH5740243,WIPO Case No. D2013-1209; Michelin Recherche et Technique S.A. v. A Domain Privacy / Transure Enterprise Ltd, Host Master,WIPO Case No. D2013-0430; Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S.A. v. Eijiobara Obara,WIPO Case No. D2012-0047).
The Complainant is also the registrant of the domain names and which were created on August 15, 1996 and June 19, 1997 respectively. These domain names resolve to websites operated by the Complainant which display the trademark BFGOODRICH prominently in relation to tires for motor vehicles.
Based on the WhoIs information and the contract details tendered by the Registrar relating to the Disputed Domain Names, the Respondent appears to be an individual based in China. Beyond these two sources, little information about the Respondent is known. Attempts to deliver the notice of commencement of this proceeding to the Respondent by both courier and facsimile failed.
On December 4, 2015, the Complainant sent a cease-and-desist letter in English to the Respondent by email demanding transfer of the Disputed Domain Names free of charge. The Respondent responded via email on December 6, 2015 with a single English statement “only 1990 USD for the domain names” which the Complainant refused.
The Disputed Domain Names were both registered on September 4, 2015. Neither resolved to any website as of the date of the Complaint. In the Respondent’s reply to the Complainant on December 6, 2015, the Respondent did not use an email address associated with the Disputed Domain Names. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
a) The Disputed Domain Names are confusingly similar to the trademark BFGOODRICH in which the Complainant has rights. The Disputed Domain Names incorporate the trademark BFGOODRICH in its entirety. The addition of the word “tires” in the Disputed Domain Name increases the level of confusion as “tires” is a generic and descriptive term that directly relates to the Complainant’s economic field of activity. The Disputed Domain Names are thus identical or at least confusingly similar to the Complainant’s trademark BFGOODRICH.
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The registration of the Complainant’s trademark BFGOODRICH preceded the registration of the Disputed Domain Names by years. The Respondent is also not affiliated with the Complainant in any way, and has not been authorized to use, register or seek registration of any domain names incorporating the trademark BFGOODRICH. The Complainant has also not licensed or authorized the Respondent to use the trademark. As the Disputed Domain Names are so identical to the trademark, the Respondent cannot intend to develop a legitimate activity through the use of the Disputed Domain Names. As the Disputed Domain Names do not resolve into websites, thus the Respondent cannot show any intention of legitimate noncommercial or fair use of the Disputed Domain Names.
c) The Disputed Domain Names were registered and are being used in bad faith. As the Complainant’s mark is well known worldwide, the Respondent knew or should have known of the Complainant’s rights in its trademark. Thus, the reproduction of the trademark in its entirety in the Disputed Domain Names is proof of an opportunistic registration in bad faith by the Respondent. As the Respondent does not have a license or any permission from the Complainant to use the trademark, there can also be no actual or contemplated bona fide or legitimate use of the Disputed Domain Names. Also, the Respondent’s offer to sell the Disputed Domain Names in excess of out-of-pocket costs despite being summoned to transfer them free of charge through the cease-and-desist letter are clear indications of use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
As the language of the Registration Agreement for the Disputed Domain Names is Chinese, the default language of this proceeding is Chinese. The Complainant has requested that English be the language of the proceeding. Having considered the circumstances, the Panel allows the Complainant’s request, having taken into account the following factors:
a) The Respondent demonstrated a working understanding of English in replying to the Complainant’s cease-and-desist letter in English;
b) The Respondent did not respond to the Complaint;
c) The Respondent, did not respond to or comment on the Complainant’s request that English be adopted as the language of the proceeding; and
d) Requiring the Complaint be translated into Chinese would lead to an unnecessary delay in the proceeding and place and unnecessary burden on the Complainant. 6.2. Discussion
In order to succeed in this proceeding, the following limbs of paragraph 4(a) of the Policy must be established:
a) The Disputed Domain Names are identical or confusingly similar to the Complainant’s trademark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
c) The Disputed Domain Names were registered and are being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted in the Complaint, the Panel is satisfied that the Complainant owns rights in the trademark BFGOODRICH. Both Disputed Domain Names wholly reproduce the Complainant’s trademark BFGOODRICH.
In accordance with the consensus view of prior UDRP panels as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2, the country code Top-Level Domain (“ccTLD”) may be disregarded when comparing a domain name with a trademark. Bearing this in mind, the Disputed Domain Name is identical to the trademark BFGOODRICH. The Disputed Domain Name differs from the trademark BFGOODRICH by the addition of the suffix “tires”, which is descriptive of the Complainant’s products and commercial activity. The consensus view outlined in WIPO Overview 2.0, paragraph 1.9 is that descriptive words of such nature cannot serve to dispel any confusion between a domain name that incorporates a trademark in its entirety.
In the circumstances, the Panel holds that the Disputed Domain Name is identical to the trademark BFGOODRICH and the Disputed Domain Name is confusingly similar to the trademark BFGOODRICH. The first limb of paragraph 4(a) of the Policy is accordingly established. B. Rights or Legitimate Interests
The Complainant is only required to establish a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Names. The burden then shifts to the Respondent to produce appropriate evidence to demonstrate otherwise.
The Complainant has confirmed that it did not give any license or authorization to the Respondent to use the trademark BFGOODRICH, or to apply for or use any domain names that incorporate the trademark BFGOODRICH. The Complainant also maintained that the Respondent is not affiliated with the Complainant in any way. The Panel finds no indication in the evidence submitted that the Respondent is commonly known by any of the Disputed Domain Names or that the Respondent had used the Disputed Domain Names for a bona fide offering of goods or services. The Respondent’s email offer to sell the Disputed Domain Names for USD 1,990 is clearly not a “bona fide offering of goods and services” or a “legitimate noncommercial or fair use” of the Disputed Domain Names. The Panel accepts that the Complainant has established a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Names.
As the Respondent has not filed a Response, the Complainant’s assertions remain unchallenged by the Respondent. In the absence of any evidence or explanation to the contrary, the prima facie case was not rebutted and the Panel finds for the Complainant under the second limb of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists, without limitation, four circumstances that amount to registration and use of the domain name in bad faith. In particular, paragraph 4(b)(i) states:
“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.”
The Respondent’s offer of USD 1,990 to the Complainant to buy over the Disputed Domain Names seems extraordinarily high compared to the likely out-of-pocket costs related to registering and maintaining two domain names. There is direct evidence of the purpose for which the Disputed Domain Names were registered. The evidence indicates that the Disputed Domain Names are not associated with any particular websites, which is a most common use of domain names. However, upon being contacted by the Complainant, the immediate direct response is to offer the Disputed Domain Names for sale. Not surprisingly, the Complainant raised a serious allegation that the Respondent was aware of the trademark BFGOODRICH and the Respondent had hoped to sell the Disputed Domain Names to the Complainant in excess of out-of-pocket costs.
A reasonable Respondent who disagrees with such a serious allegation would have responded with strong denials. It is not the case here. The Respondent neither denied the allegation nor tried to provide any explanation. Instead, the Respondent simply offered a high price. The circumstances are such that the Panel is drawn to the inescapable inference that the Respondent registered the Disputed Domain Names primarily for the purpose of transferring them for valuable consideration in excess of documented out-of-pocket costs. Therefore, the Panel determines that the circumstances fall under the situation of bad faith registration and use described in paragraph 4(b)(i) of the Policy, thereby establishing the third limb of 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 Names and be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: March 14, 2016
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