The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is cao wei of Shanghai, China, self-represented.
The disputed domain name <michelin.ren> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 8, 2016. On February 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 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 February 15, 2016, the Center sent an email communication 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, and the Respondent indicated that the disputed domain name did not infringe any rights of the Complainant without commenting on the language of the proceeding.
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 February 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2016. On March 8, 2016, the Respondent requested that the documents submitted by the Complainant in English be translated into Chinese. The Response was filed with the Center on March 11, 2016.
The Center appointed Sok Ling MOI as the sole panelist in this matter on March 18, 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.
The Complainant is a leading tire company headquartered in Clermont-Ferrand, France, present in more than 170 countries. It has over 100,000 employees and operates 68 production plants in 17 different countries. The Complainant and its trade mark MICHELIN enjoy a worldwide reputation.
The Complainant is the owner of numerous trade mark registrations around the world, including the following trade mark registrations in China:
|
Country |
Trade Mark |
Registration Number |
Classes |
Registration Date |
|
China |
MICHELIN |
136402 |
12 |
April 5, 1980 |
|
China |
MICHELIN |
6167649 |
12 |
January 7, 2010 |
|
China |
MICHELIN |
10574991 |
16 |
June 7, 2013 |
|
China |
MICHELIN |
9156074 |
35 |
February 14, 2013 |
The Complainant also owns the following domain name registrations:
- <michelin.com> registered on December 1, 1993;
- <michelin.cn> registered on March 18, 2003.
The disputed domain name <michelin.ren> was registered on October 17, 2015, long after the Complainant has registered the trade mark MICHELIN in China. As at the date of this decision, the disputed domain name does not resolve to any active website.
The Complainant has the industry's largest professional tire sales and service network in China. It set up its first representative office in mainland China in 1989 and has now established marketing offices in Beijing, Shanghai, Guangzhou, Chengdu, Shenyang and Xi'an. It currently employs 5,000 employees in China.
The Complainant's trade mark MICHELIN is a "well known mark" which is substantially reproduced in the disputed domain name. The disputed domain name is also virtually identical to the Complainant's domain name <michelin.com>.
The addition of the generic Top Level Domain ("gTLD") ".ren" does not eliminate the confusing similarity between the Complainant's trade mark and the disputed domain name.
The Respondent is not affiliated with the Complainant in any way. The Complainant has never licensed or otherwise authorized the Respondent to use and/or register its trade mark MICHELIN, or to register any domain name incorporating the said trade mark. The registration of the MICHELIN trade mark preceded the registration of the disputed domain name by years.
The disputed domain name is identical to the famous MICHELIN trade mark such that the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name.
As the disputed domain name resolves to an inactive page, the Respondent has failed to show that he is making legitimate noncommercial or fair use of the disputed domain name, or that he is using the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant is well known throughout the world including in China. It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. The Respondent must have had the Complainant and its trade mark MICHELIN in mind when he registered the disputed domain name.
The Respondent has registered around 3,000 domain names composed mostly of famous trade marks (such as VERSACE, PEPSICO and MONTAGUT) and the new gTLD ".ren". In fact, the Respondent was previously involved in a UDRP case where he was found by the panel to have registered the domain name <morganstanley.ren> in bad faith. See Morgan Stanley v. cao wei / cao wei, NAF Case No. FA1647575. This pattern of conduct suggests that the Respondent is involved in cybersquatting activities.
Reproducing a famous trade mark in a domain name in order to attract users to an inactive website cannot be regarded as fair use or use in good faith. It is likely the Respondent has registered the disputed domain name to prevent the Complainant from using its trade mark in the domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent filed a Response in Chinese, contending that:
(a) the term "michelin" is made up of three pinyin transliterations, namely "mi", "che" and "lin" which could have various meanings in Chinese such as "迷车林";
(b) the Respondent has registered the disputed domain name for the purpose of setting up a discussion forum in order to reflect his keen interest in cars since "miche" as pinyin may mean "an obsession with cars";
(c) the Respondent never intended to deal in any trade that overlaps with the Complainant's Michelin business, and is not a competitor to the Complainant; and
(d) the disputed domain name has to-date not been put to use, hence it cannot be said to have been put to bad faith use by the Respondent.
For all of the above reasons, the Respondent requests that the Complaint be denied.
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.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name <michelin.ren> is registered in Latin characters, rather than Chinese script;
(b) according to the WhoIs information relating to the disputed domain name registration, the Respondent's email address is "flytigeremail@[…].com", comprising entirely of common English words, namely, "fly", "tiger" and "email";
(c) in his Response, the Respondent stated his address as "Apt […] Building […] No. […] Jinglian Road, Changning District Shanghai 222300 China";
(d) according to the evidence submitted by the Complainant, the Respondent has registered several other domain names comprising Latin characters, e.g., <montagut.ren>, <allianz.ren>, <pike.ren>, <flipped.ren>, <isseymiyake.ren>, <montblanc.ren>, <guess.ren> and <pepsico.ren>, based on a reverse WhoIs search using the Respondent's email address (flytigeremail@[…].com).
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but failed to do so before the deadline of February 20, 2016;
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese, and had provided the Respondent with the Model Response in Chinese; and
(d) the Respondent appeared to be able to understand the contents of the Complaint and had accordingly filed a Response.
Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that: (i) it shall accept the Complaint and all supporting materials as filed in English; (ii) it shall accept the Response and all supporting materials as filed in Chinese; and (iii) English shall be the language of the proceeding and the decision will be rendered in English.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
On the basis of the arguments and evidence introduced by the parties, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in MICHELIN by virtue of its use and registration worldwide of the same as a trade mark. The disputed domain name incorporates the Complainant's trade mark MICHELIN in its entirety. The addition of the gTLD ".ren" does not serve to distinguish the disputed domain name from the Complainant's trade mark in this instance, and should generally be disregarded for the purpose of the confusing similarity assessment.
Consequently, the Panel finds that the disputed domain name is identical with the Complainant's trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974).
The Panel is satisfied that the Complainant has made out a prima facie caseshowing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has confirmed that the Respondent is not in any way related to or affiliated with the Complainant or otherwise authorized or licensed to use the MICHELIN trade mark or to seek registration of any domain name incorporating the trade mark. The Respondent is also not commonly known by the name "Michelin".
The Panel notes that Respondent has also registered several other domain names comprising famous marks, such as <montagut.ren>, <allianz.ren>, <isseymiyake.ren>, <montblanc.ren>, <guess.ren> and <pepsico.ren>. In the Panel's opinion, this is sufficiently evocative of a pattern of cybersquatting to require the Respondent to come forward with evidence to rebut the presumption.
The disputed domain name does not resolve to any active website. The Respondent has failed to provide any evidence to establish his rights or legitimate interests in the disputed domain name, apart from a bare assertion of an intention to use the disputed domain name as an online discussion forum relating to cars. The Panel is also not convinced by the Respondent's explanation for his choice of the disputed domain name, namely that "miche" means "an obsession with cars" and is intended to reflect his keen interest in cars. The explanation does not address the Respondent's choice of the suffix "lin" which could mean "forest" in Chinese. The Respondent also did not explain why he did not instead register for <迷车林.ren> to accurately reflect his intended Chinese meaning.
The Panel therefore finds that the Respondent has failed to establish his rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or 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 trade mark or service mark or to a competitor of the 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 trade mark 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 websites or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or location or of a product.
The Panel notes that as of the date of this decision, the disputed domain name does not resolve to any active website. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2).
The Complainant and its trade mark MICHELIN enjoy a worldwide reputation. A cursory Internet search would have disclosed the MICHELIN trade mark and its extensive use by the Complainant. Thus a presumption arises that the Respondent was aware of the Complainant's MICHELIN trade marks and related domain names when it registered the disputed domain name. Registration of a domain name that incorporates the Complainant's long-established and well-known trade marks suggests opportunistic bad faith.
In view of the finding in paragraph 6.2B above, namely that the Respondent is likely engaging in a pattern of cybersquatting conduct and does not have rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its trade mark in a corresponding domain name. The Panel therefore determines that the Respondent had registered the disputed domain name in bad faith, and that the circumstances referred to in paragraph 4(b)(ii) of the Policy are applicable to the present case.
The Respondent has provided no evidence whatsoever of actual or contemplated bona fide use of the disputed domain name. Given the similarity between the disputed domain name <michelin.ren> and the Complainant's domain names <michelin.com> and <michelin.cn>, there is a strong possibility that the Respondent intends to take advantage of the fame of the Complainant's trade mark to attract, for commercial gain, Internet users to the Respondent's website.
Taking into account all other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under 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.ren> be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: April 4, 2016