The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is dfdfddan wei, Mi Mi Xiao Wang of Beijing, China, self-represented.
The disputed domain name <michelin.xyz> (the “Disputed Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2017. On May 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 31, 2017, 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 May 31, 2017, an email was received by the Center from a third party under the name of “冰淇淋” (pronounced “bing qi ling”, meaning “ice cream” in Chinese), which is not the Respondent’s name as reflected in the WhoIs information of the Disputed Domain Name. The email claimed that the Disputed Domain Name was registered for personal use and enquired on its lock status.
On June 1, 2017, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Center received an email reply in Chinese from “冰淇淋” on the same day consulting how to proceed, but did not comment on the language of the proceeding by the specified due date. The Complainant confirmed its request that English be the language of the proceeding on June 2, 2017.
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 in English and Chinese of the Complaint, and the proceedings commenced on June 8, 2017. It is noted that the Written Notice could not be delivered to the Respondent via the facsimile number provided in the WhoIs information of the Disputed Domain Name as the number was invalid. Similarly, the delivery of the Written Notice to the address of the Respondent provided in the WhoIs information of the Disputed Domain Name could not be effected due to the address being incomplete or wrong. Email communication addressed to the postmaster email address based on the Disputed Domain Name was returned with remote server errors, however the Notification of Complaint was delivered to the email address of the Respondent on record.
In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2017. The Center notified the Parties of the commencement of panel appointment process on June 29, 2017. On June 29, 2017, an informal response in Chinese was received by the Center from the party “冰淇淋”.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 7, 2017. 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.
The Complainant is a leading company in the tire industry, manufacturing tires for vehicles ranging from airplanes, automobiles, bicycles, motorcycles to farm equipment and trucks. The Complainant also offers travel guides, hotel and restaurant guides, maps and road atlases.
The Complainant is headquartered in France and is present in over 170 countries with 68 production plants and about 112,300 employees. In particular, the Complainant has a large professional tire sales and service network in China with about 5,000 employees. The Complainant set up its first representative office in China in 1989 and has been operating in China since 1996. The Complainant has offices in Beijing, Shanghai, Guangzhou, Chengdu, Shenyang and Xi’an.
The Complainant’s name incorporates the trademark MICHELIN and the Complainant owns many registrations for the trademark MICHELIN including the following:
|
Jurisdiction |
Trademark No. |
Registration Date |
|
International |
771031 |
June 11, 2001 |
|
China |
136402 |
April 5, 1980 |
|
China |
6167649 |
January 7, 2010 |
The trademark MICHELIN has been the subject of prior domain name disputes. Prior UDRP panels have found the trademark MICHELIN to be a well-known trademark (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; Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios, WIPO Case No. D2017-0234).
The Complainant also holds many domain name registrations incorporating the trademark MICHELIN including <michelin.com> and <michelin.fr>, with the former dating as far back as December 1, 1993.
The Disputed Domain Name was registered on October 7, 2016 and does not resolve to any webpage on or before the date of filing of the Complaint.
There is little information available about the Respondent in this proceeding. A reverse WhoIs search highlighted 209 domain name registrations under the Respondent’s name. The Complainant had sent a cease and desist letter to the Respondent on January 31, 2017. Prior to that, the registrant on record was another individual, to whom the Complainant had also sent a cease and desist letter on January 16, 2017. Neither the Respondent nor the prior registrant responded to the respective cease and desist letters and reminders.
The Complainant contends that:
a) The Disputed Domain Name is identical or confusingly similar to the trademark MICHELIN. The extension “.xyz” should not be taken into consideration when assessing the confusing similarity between the Disputed Domain Name and the trademark;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not affiliated with the Complainant or has been authorized by the Complainant to use and register its trademarks or seek registration of any domain name incorporating the trademark MICHELIN. The Respondent has not made any reasonable and demonstrable preparations to use the Disputed Domain Name and has failed to show any intention of noncommercial or fair use of the Disputed Domain Name; and
c) 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 the Disputed Domain Name was registered. The Complainant is well known. The Disputed Domain Name entirely reproduces the trademark MICHELIN. A quick Google search would have revealed to the Respondent the existence of the Complainant and its trademark. The Disputed Domain Name is currently inactive. Passive holding does not preclude bad faith. Reproducing famous trademarks in a domain name to attract Internet users to an inactive website cannot be regarded as fair use or good faith.
The Respondent did not submit a Response. For the purpose of this proceeding, the Panel shall take the informal email of “冰淇淋” on June 29, 2017 as the Response. It contends that:
1) The Disputed Domain Name was purchased without intention for commercial use and the Disputed Domain Name was derived from the pronunciation of the Chinese characters “米车林” (pronounced “mi che lin”) which is not related to “米其林” (pronounced “mi qi lin”). The Complainant failed to register the Disputed Domain Name despite the Top-Level Domain (“TLD”) “.xyz” having been available for 3 years;
2) The Disputed Domain Name does not resolve to a website and is not used in bad faith. The Complainant is a large commercial organization. Allowing the Complainant to deprive the Respondent of the Disputed Domain Name is unfair competition and unreasonable; and
3) When the Disputed Domain Name was registered and transacted, no special circumstances were notified by the Registry for “.xyz”.
The default language of the proceeding is Chinese as the Registration Agreement was in Chinese. The Complainant has requested that English be adopted instead as the language of the proceeding. Having considered the circumstances, the Panel grants the Complainant’s request, in particular taking into consideration the following:
1) The Complainant is French and has no knowledge of Chinese;
2) Should translation be required, a burden in the form of significant costs potentially higher than the overall cost of the proceeding may be imposed on the Complainant;
3) The Respondent did not object to the Complainant’s request for English to be adopted as the language of the proceeding instead;
4) The Complaint has already been filed in English and the Respondent did not submit a Response despite the availability of assistance from the Center;
5) The Panel is bilingual and is able to handle communication in both English and Chinese; and
6) No discernible benefit to the proceeding may be achieved by requiring that the proceeding now proceed in Chinese.
To succeed, the Complainant must establish all three limbs of paragraph 4(a) of the Policy.
The trademark registrations submitted by the Complainant establish the Complainant’s trademark rights in the trademark MICHELIN. It is the consensus practice of past UDRP panels that TLDs, in this case “.xyz”, should be disregarded when comparing domain names with trademarks. There is no reason to depart from this practice in the present case. Regardless of the Respondent’s intention or derivation of the Disputed Domain Name, it incorporates the trademark MICHELIN in its entirety. The Panel finds that the Disputed Domain Name is identical or confusingly similar to the trademark MICHELIN and holds that the first limb of paragraph 4(a) of the Policy is established.
The Complainant has asserted, as the holder of trademark rights in MICHELIN in China (and elsewhere), that the Complainant has not authorized the Respondent to use the trademark MICHELIN or to incorporate it in any domain name registration. The Complainant has also asserted that the Respondent is not affiliated to the Complainant. The Respondent’s name does not suggest any association with the word “Michelin” and there is no evidence before this Panel that the Respondent is commonly known by the Disputed Domain Name. The Panel finds the attempt by “冰淇淋” at justifying the selection of the Disputed Domain Name on the basis of the pronunciation and transliteration of the Chinese characters “米车林” unconvincing. Having accepted the extensive presence of the trademark MICHELIN in China, the Respondent must clearly be aware that the pronunciation and transliteration of “米车林” is identical to the trademark MICHELIN.
The Disputed Domain Name does not resolve to any website. The Panel finds the bare statement by that the Disputed Domain Name is not intended for commercial use to be vague and uncorroborated. No meaningful details are provided on the noncommercial use for which the Disputed Domain Name is intended, including what the Respondent has done in furtherance of such intention. The reasonable conclusion is that the Respondent has not made any reasonable and demonstrable preparations to use the Disputed Domain Name in a noncommercial or fair use manner, or any manner at all.
The Panel finds that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name which has not been rebutted by any evidence available in this proceeding. Accordingly, it is held that the second limb of paragraph 4(a) of the Policy is also established.
The Panel has noted the evidence of the Complainant’s fame as well as the fame in the trademark MICHELIN. The Panel agrees with the past UDRP panels which found that the trademark MICHELIN is well known. In view of this and the extensive presence of the trademark MICHELIN in China, the Panel finds that the Respondent was clearly aware of the same.
The Disputed Domain Name does not appear to be put to use, whether to direct web or email traffic. Such passive holding of a domain name incorporating a well-known mark has been considered by many past UDRP panels. Bad faith registration and use of a domain name by passive holding has been recognized by past UDRP panels, by the oft-quoted decision of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The circumstances which point to bad faith registration and use by passive holding are:
1) The complainant has a well-known trademark which is incorporated in the domain name;
2) There is no evidence of actual or contemplated good faith use of a domain name;
3) The respondent has taken steps to conceal his identity by operating under a name that is not a registered business name;
4) The respondent has actively provided false contact details which he fails to correct;
5) There is no plausible actual or contemplated active use of the domain name that would not be illegitimate.
The Panel is of the view that the present circumstances are consistent with the above. It has already been established that the trademark MICHELIN is well known. The Disputed Domain Name incorporates the trademark in its entirety. There is no evidence of actual or contemplated good faith use of the Disputed Domain Name. The Respondent’s registration of the Disputed Domain Name on the justification that the Complainant failed to timely register the same is not justifiable. The Respondent has obviously taken steps to conceal his identity and provided false contact details. The Respondent’s name in the WhoIs information, whether “Mi Mi Xiao Wang” or “dfdfddan wei”, does not appear to be a real name. The facsimile number and address in the WhoIs information are demonstrably invalid. The informal Response was submitted under the suspiciously fictitious name of “冰淇淋”. In view of the Complainant’s rights in the trademark MICHELIN, it is not foreseeable that the Respondent could legitimately use the Disputed Domain Name.
The Panel is not persuaded by the argument in the informal Response that allowing the Complainant to deprive the Respondent of the Disputed Domain Name would be unfair competition and unreasonable. It has already been established that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Respondent could not have legitimately used the Disputed Domain Name in the face of Complainant’s trademark rights. Allowing the Respondent to continue as the registrant of the Disputed Domain Name would be unfair and unreasonable.
Having considered the circumstances, the Panel determines that the Respondent has registered and is using the Disputed Domain Name in bad faith under the third limb of paragraph 4(a) of the Policy.
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, <michelin.xyz>, be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: August 8, 2017