WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. zhouhaotian

Case No. D2015-1728

1. The Parties

The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.

The Respondent is zhouhaotian of Changsha, Hunan, China.

2. The Domain Name and Registrar

The disputed domain name <michelin.pub> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2015. On September 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 October 1, 2015, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On October 2, 2015, 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 October 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2015.

The Center appointed Jonathan Agmon as the sole panelist in this matter on November 5, 2015. 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 French tire company that manufactures and markets tires for vehicles, including airplanes, automobiles, bicycles/motorcycles, earthmovers, farm equipment and trucks. It also offers electronic mobility support services on “www.viamichelin.com” and publishes travel guides, hotel and restaurant guides, maps and road atlases. Headquartered in Clermont-Ferrand, France, the Complainant is present in more than 170 countries, has 112,300 employees and operates 68 production plants in 17 different countries.

The Complainant has the industry’s largest professional tire sales and service network in China. At the end of 2011, the Complainant had more than 6,400 cars and light truck tire retailers while 1,338 truck and bus tires were contracted retailers by the end of March 2012. The Complainant created the industry’s best-known professional tire sales and service brand, “Chi added”, and nearly 700 Chi-plus stores by the end of March 2012.

The Complainant owns the following MICHELIN trademark registrations in China:

- MICHELIN Trademark No. 6167649, dated of January 7, 2010, and covering goods in class 12;

- MICHELIN Trademark No. 10574991, dated of June 7, 2013, and covering goods in class 16;

- MICHELIN Trademark No. 9156074, dated of February 14, 2013, and covering goods in class 35.

In addition, the Complainant operates, among others, the following domain names reflecting its trademarks in order to promote its services:

- <michelin.com> registered on December 1, 1993;

- <michelin.com.cn> registered on June 16, 2001.

The disputed domain name <michelin.pub> was registered on May 12, 2015, long after the Complainant registered the trademarks MICHELIN worldwide.

On July 3, 2015, before starting the present proceeding, the Complainant sent a cease-and-desist letter to the Respondent via registered letter and email on the basis of its trademark rights. The cease-and-desist letter requested the Respondent to transfer the disputed domain name to the Complainant free of charge. The Respondent replied that he will not transfer the disputed domain name unless he is compensated for the transaction.

5. Parties’ Contentions

A. Complainant

The Complainant contends the disputed domain name is identical or at least confusingly similar to the Complainant’s trademark MICHELIN for the following reasons:

The disputed domain name substantially reproduces the Complainant’s trademark in its entirety which previous UDRP panels have considered to be “well-known” or “famous”.

The Complainant has used the trademark MICHELIN in connection with a wide variety of products and services around the world. Consequently, the public has learnt to perceive the goods and services offered under this mark as being those of the Complainant. Therefore, the public would reasonably assume that the disputed domain name would be owned by the Complainant or at least assume that it is related to the Complainant.

The addition of the generic Top-Level Domain (“gTLD”) “.pub” does not eliminate the confusing similarity between the Complainant’s registered MICHELIN mark and the disputed domain name <michelin.pub>. Even if the gTLD “.pub” were to be taken into consideration, it should be noted that it can only be perceived as an element increasing the likelihood of confusion due to the meaning of the term “pub”. Internet users are inter alia likely to wrongly identify the disputed domain name as the Complainant’s domain name registered for the Michelin Star Restaurants’ awarding system for restaurants and pubs while French Internet users may associate the disputed domain name to the Complainant’s advertising activities due to its meaning in French.

The Complainant contends that the Respondent has no rights or legitimate interests in respect to the disputed domain name for the following reasons:

(1) The Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said marks. Furthermore, the Respondent has no prior rights or legitimate interest in the disputed domain name. The registration of the MICHELIN trademark preceded the registration of the disputed domain name by years.

(2) In the absence of any license or permission from the Complainant to use such widely known trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.

(3) The disputed domain name is so identical to the famous MICHELIN trademark of the Complainant as well as its activities related to the Michelin Guide’s (Michelin Star) awarding system for restaurants and pubs, that the Respondent cannot reasonably pretend he was intending to develop a legitimate activity through the disputed domain name.

(4) The disputed domain name resolves to an inactive page. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. Consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain name. It is most likely to be believed that the Respondent has no rights or legitimate interests in the disputed domain name.

(5) A legitimate noncommercial or fair use of the disputed domain name as per paragraph 4(c)(iii) of the Policy cannot be inferred due to the Respondent’s clear intention for commercial gain. Indeed, considering the exchanges with the Respondent, it appears that the only reason why the Respondent has registered the disputed domain name is for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name.

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy for the following reasons:

(1) There is no doubt concerning the Respondent’s knowledge of the existence of the Complainant, its trademark and activities at the time of the registration of the disputed domain name <michelin.pub> as the Complainant is well known throughout the world including in China – the home country of the Respondent. Moreover, several UDRP panels have previously mentioned its worldwide reputation, making it unlikely that the Respondent was not aware of the Complainant’s proprietary rights in the trademark.

(2) As the composition of the disputed domain name entirely reproduces the Complainant’s trademark MICHELIN while the new gTLD refers to the Complainant’s activities related to its star-awarding system for restaurants and pubs, it is impossible that the Respondent was not aware of the Complainant’s trademark and company name while registering the disputed domain name.

(3) It was the Respondent’s duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registering said domain name. A quick MICHELIN trademark search would have revealed to the Respondent the existence of the Complainant and its trademark. The Respondent’s failure to do so is a contributory factor to its bad faith.

(4) The Respondent’s offer to sell the disputed domain name despite having being summoned to transfer the disputed domain name to the Complainant free of charge through a cease-and-desist letter, without giving any reasons why he had registered the disputed domain name or without contesting the Complainant’s trademark, are clear indications that he was aware of the Complainant’s trademark when he registered the disputed domain name and a clear evidence of registration and use in bad faith.

(5) In the absence of any license or permission from the Complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed.

(6) As the disputed domain name is confusingly similar to the Complainant’s trademark, “a likelihood of confusion is presumed”.

(7) The disputed domain name <michelin.pub> is currently inactive. The Respondent’s passive holding of the disputed domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the disputed domain name is being used in bad faith by the Respondent because: (1) the Complainant’s trademark has a strong reputation and was widely known; (2) the Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name; (3) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) the Respondent has actively provided, and failed to correct, false contact details, in breach of his registration agreement.

(8) It is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name. This type of conduct constitutes evidence of the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

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.”

The language of the Registration Agreement could not be found. The Registrar’s website is in Chinese.

The Complainant requested that the language of the proceeding should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

a) The disputed domain name <michelin.pub.com> consists of Latin-script letters, rather than Chinese characters;

b) Although the Respondent responded to the cease and desist letter in Chinese, it showed that he could understand the cease and desist letter drafted in English. This indicates that the Respondent has knowledge of the English language and would not be prejudiced if this proceeding is conducted in English.

c) The Respondent did not respond or object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant presented evidence that it owns numerous worldwide trademark registrations for the mark MICHELIN including in China, where the Respondent is located. For example:

- MICHELIN Trademark No. 6167649, dated of January 7, 2010, and covering goods in class 12;

- MICHELIN Trademark No. 10574991, dated of June 7, 2013 and covering goods in class 16;

- MICHELIN Trademark No. 9156074, dated of February 14, 2013 and covering goods in class 35.

The Complainant also provided evidence showing that it owns and uses domain names consisting of the trademark MICHELIN. For example:

- <michelin.com> registered on December 1, 1993;

- <michelin.com.cn> registered on June 16, 2001.

The disputed domain name <michelin.pub> is identical to the registered trademark MICHELIN. Consequently, the Panel finds that the disputed domain name is identical or at least confusingly similar to the Complainant’s MICHELIN trademark.

Previous UDRP panels have ruled that “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

Furthermore, as the Complainant presented evidence showing that it is famous for its Michelin Star Restaurants’ awarding system for restaurants and pubs, the addition of the gTLD “.pub” does not serve to distinguish the disputed domain name from the Complainant’s MICHELIN trademark.

Consequently, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the MICHELIN trademark, or a variation thereof.

The Respondent has not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the MICHELIN trademark in China since at least the year 2010. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant provided evidence to demonstrate its trademark’s vast goodwill. “It is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark Swarovski or that the Domain Names at issue might be of some type of economic advantage” (see Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

In addition, the evidence shows that the Respondent has not been using the disputed domain name. Evidence of passive holding of a domain name has been held under some circumstances to constitute use in bad faith. Failure to meet paragraph 4(a)(iii) of the Policy while holding a domain name passively would be regarded as evidence of bad faith use. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In the instant case, the Complainant has provided sufficient evidence to show that its MICHELIN trademark has strong reputation. The record also shows that the Respondent provided no evidence of use of the disputed domain name and did not respond to the Complaint. The Respondent’s passive use of the disputed domain name also indicates in this case bad faith registration and use of the disputed domain name: “The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept.” See Cho Yong Pil v. Kee Dooseok, WIPO Case No. D2000-0754. See also: “The significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” (Telstra Corporation Limited v. Nuclear Marshmallow, supra).

The Respondent’s response to the cease-and-desist letter which offered to sell the disputed domain name is another clear indication of the Respondent’s registration and use of the disputed domain name in bad faith. This is also true when the Respondent fails to provide reasons for his registration and use of the disputed domain name in view of the clear trademark rights shown by the Complainant. The Respondent’s failure to respond to the Complainant’s allegations in the Complaint leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the similarity between the Complainant’s trademark and the disputed domain name, the Respondent’s offer to sell the disputed domain name, the failure of the Respondent to respond to the Complaint and Respondent’s passive use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 name <michelin.pub> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: November 20, 2015