The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is YangXue Wei of Zhanjiang, Guangdong, China, self represented.
The disputed domain name <michelinmall.com> is registered with eName Technology Co., Ltd. (the "Registrar").
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2016. On March 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 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 April 1, 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. On April 4, 2016, the Respondent requested that Chinese be 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 April 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2016. Per the Respondent's request dated April 27, 2016, the Respondent was granted a four calendar day extension for submission of a Response under paragraph 5(b) of the Rules. The due date for Response was extended to May 2, 2016. The Response was filed with the Center on May 2, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on May 10, 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, a leading tire company, is headquartered in France, with global offices in more than 170 countries. It manufactures tires for every type of vehicle, 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. The Complainant has 112,300 employees and operates 68 production plants in 17 different countries. The Michelin Group has a Technology Center in charge of research, development and process engineering, with operations in Europe, North America and Asia.
The Complainant has the industry's largest professional tire sales and service network in China. It set up its first representative office in China in 1989. The Michelin Group has about 5,000 employees in China, with marketing offices in Beijing, Shanghai, Guangzhou, Chengdu, Shenyang and Xi'an.
The Complainant's MICHELIN trade mark has been registered in many countries around the world including in China. The Complainant's trade mark registrations in China date from as early as April 5, 1980.
The Complainant also owns the domain names <michelin.com> (registered on December 1, 1993) and <michelin.com.cn> (registered on June 16, 2001).
The Complainant became aware of the Respondent's registration of the disputed domain name which resolves to an inactive page. The disputed domain name was registered on August 11, 2015. On December 7, 2015, the Complainant's representative sent a cease-and-desist letter to the Respondent in which it requested the Respondent to cancel the disputed domain name. On December 15, 2015, the Respondent replied by way of an email in English stating that it understands what the Complainant means, that the Respondent intends to use the disputed domain name which will not cause confusion or mislead Internet users into thinking that the Complainant has a relationship with the Respondent's website. The Complainant reiterated its request for cancellation of the disputed domain name. The Respondent did not respond further.
(1) The disputed domain name is identical and/or confusingly similar to the Complainant's trade mark, MICHELIN. It reproduces the Complainant's trade mark in its entirety, and the MICHELIN trade mark has been recognized by previous UDRP panels to be well known or famous (e.g., Compagnie Générale des Etablissements Michelin v. Isaac Goldstein, Hulmiho Ukolen, Poste restante/Domain Admin, Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2015-1787; 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).
The addition of the generic term "mall" is insufficient to avoid any likelihood of confusion. The Complainant cited the cases of Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and Above.com Domain Privacy, WIPO Case No. D2012-1453; Swarovski Aktiengesellschaft v. Luo Li, WIPO Case No. D2012-1604;and Compagnie Générale des Etablissements Michelin v. isman to, WIPO Case No. D2012-0739 in support.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the Complainant's MICHELIN trade mark, or to seek the registration of any domain name incorporating the Complainant's said trade mark. The Respondent has no prior rights or legitimate interests in the disputed domain name; the registration of the MICHELIN trade mark preceded the registration of the disputed domain name by many years. No actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed in this case since the MICHELIN trade mark is so famous.
The Respondent has not shown any intention of noncommercial or fair use of the disputed domain name.
(3) The disputed domain name was registered and has been used in bad faith. It is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. Bad faith can be found where a respondent "knew or should have known" of the complainant's trade mark rights but nevertheless registered a domain name in which it had no rights or legitimate interests. Since the disputed domain name entirely reproduces the Complainant's trade mark, MICHELIN, it is not possible that the Respondent did not have the Complainant's trade mark and company name in mind when registering the disputed domain name. A quick trade mark search would have revealed to the Respondent the existence of the Complainant and its trade mark. The Respondent's failure to do so is a "contributory factor to its bad faith". Even if the Respondent were not aware of the possibility of searching trade marks online before registering a domain name, a simple search via Google or any other search engine using the keyword "Michelin" would have surfaced first results relating to the Complainant's products or news.
The disputed domain name does not resolve to an active website. This state of inactivity does not mean that the disputed domain name is used in good faith. In earlier UDRP cases, panels have held that the passive holding of a domain name can still meet the requirements of paragraph 4(a)(iii) of the Policy. The reproducing of a famous trade mark in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith.
The Respondent submitted a formal Response, in Chinese, on May 2, 2016. It submitted that China is a vast country and the level of economic development is not evenly distributed. It is therefore not realistic for the reputation of certain names to be enjoyed uniformly across China. Whilst the Complainant has claimed that the MICHELIN trade mark is very well known, the Respondent has not associated itself to the Complainant nor registered the disputed domain name with a malicious intent. The Respondent has not done anything that has goes against the interests of the Complainant. When it registered the disputed domain name, it was not told that it would infringe the trade mark MICHELIN. Moreover, the disputed domain name is not the Complainant's trade mark. The registration of domain names operates on a first come, first served basis.
The language of the Registration Agreement in respect of the disputed domain name is Chinese. The Complainant requested that English be adopted as the language of the proceeding. The reasons were as follows:
(i) The Complainant is located in France and has no knowledge of Chinese. To proceed in Chinese, the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost for the administrative proceeding. The use of a language other than English in the proceeding would impose a burden on the Complainant which would be significant in view of the cost for the administrative proceeding.
(ii) The Respondent is able to communicate perfectly in English. It replied to the Complainant's Cease-and-desist letter in English.
(iii) English is the primary language for international relations and it is one of the working languages of the Center.
(iv) The disputed domain name comprises only Latin characters, which shows that the Respondent has knowledge of English language.
The Respondent requested that Chinese be adopted as the language of the proceeding for the reasons that it does not understand English, and having the proceeding in English would pose difficulties for the Respondent. The Panel notes that the Responded ended its email to the Center on this issue (which was written in Chinese) with the following words in English: "Should use Chinese!".
Paragraph 11(a) of the Rules provides that: "[u]nless 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(c) of the Rules stipulates that "[t]he Panel shall ensure that the administrative proceeding takes place with due expedition."
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.3, states the consensus view of UDRP panels on this issue as follows:
"Recognizing the practical need which may arise for a preliminary determination of the language of proceeding prior to their appointment, panels have found that, in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement. "
Notwithstanding the Respondent's claim that it does not understand English, the contrary appears to be the case, as evidenced from its responses to the Complainant's cease-and-desist communications. The Panel is not persuaded that the Respondent would be prejudiced if English were to be adopted as the language of the proceeding. The Respondent filed its Response, albeit in the Chinese language, but appears for all intents and purposes to have understood the contents of the Complaint. Requiring the Complaint to be translated into Chinese would pose as a stumbling block to an expeditious resolution of the UDRP dispute.
In the light of the aforesaid, and with a view to achieving the aim of the administrative proceeding taking place with due expedition, the Panel determines that it would be appropriate in this case for English to be the language of the proceeding.
The Complainant has provided evidence of its trade mark registration for the mark MICHELIN. In this regard, the Panel also determines that the mark is famous, as has been found in earlier UDRP panel decisions.
The Panel agrees that the addition of the generic term "mall" does not serve to remove the confusing similarity with the Complainant's MICHELIN mark. Further, the addition of the generic Top-Level Domain ("gTLD") ".com" does not eliminate the confusing similarity between the Complainant's MICHELIN mark and the disputed domain name since the applicable gTLD (i.e., ".com") is typically disregarded under the confusing similarity test as it is a technical requirement of registration.
The Complainant has therefore established that the disputed domain name is confusingly similar to the mark MICHELIN in which it has rights.
Paragraph 4(a)(i) of the Policy has been satisfied.
The Panel is of the view that it is pertinent to state the relevant principles which apply in relation to the above-referenced issue.
Firstly, paragraph 4(c) of the Policy provides, for the purposes of paragraph 4(a)(ii) of the Policy that:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent's] rights or legitimate interests to the domain name […]:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the Respondent has] acquired no trade mark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
Secondly, on the issue of the burden of proof in relation to paragraph 4(a)(ii) of the Policy, a consensus view of UDRP panels has been expressed in paragraph 2.1 of the WIPO Overview 2.0:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name."
The Complainant has satisfactorily established that the MICHELIN is a long-established and famous trade mark. The Panel is also satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests. Consequently, the Respondent has the burden of showing forth evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Panel has noted the arguments of the Respondent. However, the Respondent has failed to put forward any of the types of evidence set out in in paragraph 4(c) of the Policy from which the Panel may confidently conclude that the Respondent has rights or legitimate interests in the disputed domain name. In a situation as this one in which a well-known trade mark is incorporated in a domain name and clearly identifiable as such (unlike a situation which involves simply an ordinary dictionary word without trade mark significance and which is used in connection with a purpose relating to its generic meaning), the Respondent has all the more a higher threshold to meet, to show it has rights or legitimate interests in the disputed domain name. Registrars are not bound to nor do they have the responsibility to inform a domain name registrant if a domain name consists of or contains a trade mark. The domain name registrant would typically be taken, by the terms of the registration agreement, to represent to the registrar that the domain name applied for does not infringe a registered trade mark or is not identical or confusingly similar to a registered trade mark. Further, whilst domain name registrations operate, generally speaking, on a first come, first served basis, this does not exclude all considerations of the legitimate rights and interests of third parties, namely in trade marks.
The concept of well-known marks exists under Chinese trade mark law and marks have previously been recognized by China's courts to be well known and deserving of protection. That does not, however, mean that the relevant marks have been proven by its owners to be well known in every province or district in China. What is of relevance is that the Respondent, notably, did not deny knowledge of the Complainant and of its trade mark. Neither has it explained its choice of the disputed domain name nor proffered anything that would provide a basis for its claim of rights or legitimate interests therein.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
The Panel finds that the disputed domain name was registered and is being used in bad faith, notwithstanding the passive use thereof.
The Complainant and its MICHELIN trade mark are well known across the world. The Respondent must have been aware of the Complainant and its trade mark when it registered the disputed domain name. In the absence of any rights or legitimate interests in the disputed domain name and the absence of contrary evidence, the incorporation of the widely-known trade mark in the disputed domain name suggests opportunistic bad faith. The Panel agrees with the Complainant's submission that in certain fact situations, the inaction by a respondent in relation to a domain name can constitute bad faith use (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In this case, the Panel finds that the disputed domain name has been registered and used in bad faith, considering:
(i) the Respondent has not provided evidence of any actual or contemplated good faith use of the disputed domain name. The Panel notes that in its Response, the Respondent remained vague or silent as to its contemplated or actual use of the disputed domain name;
(ii) the widely-known nature of the Complainant's trade mark and its widespread and international use; and
(iii) that it is not possible to conceive of a plausible, actual or contemplated active use of the disputed domain name by the Respondent that could be legitimate. In this regard, the Respondent has not presented any evidence or statement which provides a basis for a different view.
The Complainant cited, inter alia, the cases of LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091, and LANCOME PARFUMS ET BEAUTE & CIE, L'ORÉAL v. 10 Selling, WIPO Case No. D2008-0226, in support of its contention that "bad faith can be found where a domain name is so obviously connected with a well-known trade mark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. " As stated in the case of Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325, "it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products."
The Panel agrees that bad faith registration and use can be inferred in this case.
The Panel accordingly concludes that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <michelinmall.com> be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: May 11, 2016