The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Nexperian Holding Limited of Hangzhou, China / Liu Yuan of Xuzhou, China.
The disputed domain names <michelinamericalatino.com>, <michelinamericlatina.com> are registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 12, 2018. On July 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 18, 2018, 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 on July 23, 2018.
On July 18, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on July 19, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 Chinese of the Complaint, and the proceedings commenced on July 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 17, 2018.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on August 28, 2018. 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 Compagnie Générale des Etablissements Michelin ("Michelin"). Michelin is a tire manufacturer headquartered in Clermont-Ferrand, France. Michelin maintains a presence in 170 countries including 111,700 employees and 68 production facilities in 17 different countries. Michelin offers a variety of travel-related goods and services under the MICHELIN brand, including tires and travel guides.
The Complainant is the owner of multiple trademark registrations for the MICHELIN mark.
|
Trademark |
Jurisdiction |
Reg. No. |
Reg. Date |
Classes |
|
MICHELIN |
International Registration |
348615 |
July 24, 1968 |
1, 6, 7, 8, 9, 12, 16, 17, 20 |
|
MICHELIN |
International Registration |
771031 |
June 11, 2001 |
5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, 42 |
|
MICHELIN |
European Union Registration |
004836359 |
March 13, 2008 |
1, 3, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 20, 21, 24, 25, 26, 28, 34, 39 |
Additionally, the Complainant holds registered domains incorporating the MICHELIN mark in order to promote its brand and services. The Complainant-held domain name <michelin.com> was registered on December 1, 1993. The Complainant-held domain name <michelinamericalatina.com> was registered on October 11, 2012.
The disputed domain names <michelinamericlatina.com> and <michelinamericalatino.com> were registered on March 18, 2018. Both disputed domain names resolve to a parking page as of the date of this decision, with the former displaying links in English related to the MICHELIN brand and associated products, and the latter displaying links in Spanish related to online movie services.
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant's MICHELIN mark. The Complainant has rights in the MICHELIN mark by virtue of its trademark registrations. When comparing the disputed domain names to the Complainant's trademark, the comparison should be made to the second-level portion of the disputed domain names only. The Top-Level Domain ("TLD") ".com" should not be considered. The first disputed domain name consists of the MICHELIN mark plus the geographical terms "americ", which is a misspelling of the geographical location "America", and "latina". The second disputed domain name consists of the MICHELIN mark plus the geographical terms "america" and "latino". The generic terms "americ" (sic), "america", "latina" and "latino" do not negate the confusing similarities. Additionally, the Respondent's use of the disputed domain names contributes to the confusion because the Respondent is using the disputed domain names to direct Internet users to parking pages advertising services similar to what the Complainant has to offer. This indicates that the Respondent intended the disputed domain names to be confusingly similar to the Complainant's trademarks.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not sponsored by or affiliated with the Complainant. The Complainant has not given the Respondent permission to use the Complainant's trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain names. The registration of the MICHELIN mark preceded the registration of the disputed domain name by years.
The Complainant submits that the Respondent has not demonstrated use of the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names direct users to a parking page with pay-per-click links, some of which are related to products and services the Complainant offers. The Complainant submits that this is not a legitimate noncommercial or fair use of the disputed domain names.
Finally, the Complainant alleges that the Respondent registered and is using the disputed domain names in bad faith. The Complainant's MICHELIN mark enjoys a substantial and widespread reputation and has been in use since 2005, well before the Respondent registered the disputed domain names. By registering domain names that incorporate the Complainant's MICHELIN mark in its entirety and omit or replace a single letter, the Respondent has created domain names that are typosquatting variants of the Complainant's official website "www.michelinamericalatina.com". At the time of the registration of the disputed domain names, the Respondent knew, or at least should have known, of the existence of the Complainant's trademark and that registration of domain names containing well-known trademarks constitutes bad faith per se.
Bad faith use can be established by evidence demonstrating that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by using the disputed domain names to create a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, products or services. The Respondent is creating a likelihood of confusion by using a slightly modified version of the Complainant's trademark in domain names where the mark is the main feature and attempting to profit from such confusion by using the disputed domain names to direct users to a parking page with pay-per-click links.
The Complainant requests that the disputed domain names be transferred to it.
The Respondent did not reply to the Complainant's contentions.
The Complaint was filed in English, while the language of the registration agreement is Chinese. Paragraph 11(a) of the Rules provides that "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."
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. For the purpose to determine the language of the proceeding, the Panel notes the following circumstances in this case:
(1) the disputed domain names both consist of Latin letters, and the websites to which one disputed domain name resolves to is in English, from which it is reasonable to infer that the Respondent has a certain knowledge of English;
(2) the Complainant is the only active party in this proceeding;
(3) the Center sent all the case related communications in English and Chinese, and the Respondent didn't comment on the language of the proceeding or submit any reply; and
(4) to require the Complainant to translate all the documents to Chinese will cause unnessasery burden to the Complainant and undue delay to the proceeding.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding be English.
The Policy provides for transfer or cancellation of the disputed domain name(s) if the complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(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 Complainant has rights to the MICHELIN mark. The Complainant has established that it is the registered owner of trademark registrations of the MICHELIN mark.
The disputed domain name <michelinamericlatina.com> contains the elements "michelin", "americ" (sic), "latina", and the TLD ".com". As a technical part of the domain name, the ".com" TLD may be disregarded in determining confusing similarity. Alienware Corporation v. Truther, WIPO Case No. DCO2012-0027; Belo Corp. v. George Latimer, WIPO Case No. D2002-0329. The "michelin" portion of the disputed domain name is identical to the MICHELIN mark in which the Complainant has rights. The addition of the terms "americ" (sic) and "latina" do not avoid confusing similarity. See Compagnie Generale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, WIPO Case No. D2000-1414. Further, the use of the term "americ" (sic) instead of "america" results in a domain name identical except for the omission of the letter "a" to a domain name the Complainant uses to conduct business. This presents a classic case of "typosquatting", wherein a registrant registers a domain name with an intentional misspelling of an existing mark or domain name with the expectation of receiving traffic from users who misspell the intended mark or domain name. The general WIPO UDRP view is that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element (see Section 1.9 of WIPO Overview 3.0).
The disputed domain name <michelinamericalatino.com> contains the elements "michelin", "America", "latino", and the TLD ".com". As a technical part of the domain name, the ".com" TLD may be disregarded in determining confusing similarity. Alienware Corporation v. Truther, supra; Belo Corp. v. George Latimer, supra. The "michelin" portion of the disputed domain name is identical to the MICHELIN mark in which the Complainant has rights. The addition of the terms "america" and "latino" do not avoid confusing similarity. See Compagnie Generale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, supra. Further, while the term "latino" is a masculine gender variation of the term "latina" and inherently confusable with the term "latina". See Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark.
As noted above, the Complainant has provided evidence of its prior rights in the MICHELIN mark. These rights precede the creation of the disputed domain names.
The disputed domain names <michelinamericlatina.com> and <michelinamericalatino.com> incorporate the Complainant's trademark in its entirety. There is no evidence indicating that the Respondent is licensed to use the Complainant's MICHELIN mark, that the Respondent is associated or affiliated with the Complainant, or that the Respondent has any other rights or legitimate interests in the string "michelinamericalatino" or variants thereupon. As such, the Complainant has made out its prima facie case, which the Respondent has not rebutted.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name(s) in bad faith:
(i) Circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 such website or location or of a product or service on such website or location.
The present case falls squarely within that contemplated by paragraph 4(b)(iv) of the Policy.
The Respondent has registered domain names that incorporate the Complainant's trademark MICHELIN in its entirety, and are virtually identical to the Complainant's domain name <michelinamericlatina.com>, except for the omission of the letter "a" in <michelinamericlatina.com> and the exchange of the term "latina" for "latino" in <michelinamericalatino.com>. This form of typosquatting is in itself evidence of bad faith, as by committing typosquatting the Respondent demonstrates both intent to register a confusingly similar domain name and intent to draw Internet traffic from users based on the confusion. See Barnes & Noble College Bookstores, Inc. v. Oleg Techino, WIPO Case No. D2006-1537; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444.
For this reason, the Panel finds that the Respondent's registration and use of the disputed domain names is in bad faith.
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 <michelinamericalatino.com>, <michelinamericlatina.com> be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: September 11, 2018