The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Registrant of domain (何正明) of Beijing, China.
The disputed domain name <scmichelin.com> (the "Domain Name") is registered with Xin Net Technology Corp. (the "Registrar").
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2017. On July 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 26, 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 July 26, 2017, the Center transmitted in English and Chinese to the Parties an email regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on July 27, 2017. 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 in English and Chinese of the Complaint, and the proceedings commenced on August 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 25, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on September 6, 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, headquartered in France, is the global leading tire manufacturer, producing tires for a range of vehicles including (but not limited to) airplanes, automobiles, motorcycles and trucks. The Complainant is present in more than 170 countries with 112,300 employees and operates 68 production plants in 17 different countries across Europe, North America and Asia. The Complainant also publishes travel guides, hotel and restaurant guides, maps and road atlases.
The Complainant is an established company in the Chinese market where it employs 5,000 employees. The Complainant has operated in Shenyang since 1996 and set up its first representative office in mainland China in 1989. Since then the Complainant has established marketing offices in Beijing, Shanghai, Guangzhou, Chengdu, Shenyang and Xi'an.
The Complainant products and services are sold and marketed under the trade mark MICHELIN. Through its extensive use of the trade mark, it enjoys a worldwide reputation under the name MICHELIN. The Complainant owns numerous registered trade marks for MICHELIN around the world including in China, where the Respondent is located. Below is a selection of the trade mark registrations owned by the Complainant in China (individually and collectively referred to as the "Trade Mark"):
|
Trade Mark No. |
Jurisdiction |
Mark |
Registration Date |
Class(es) |
|
771031 |
International (designating China) |
MICHELIN |
June 11, 2001 |
05, 07, 08, 09, 10, 11, 12, 16, 17, 18 20, 21, 24, 25, 39, 42 |
|
136402 |
China |
MICHELIN |
April 5, 1980 |
12 |
|
6167649 |
China |
MICHELIN |
January 7, 2010 |
12 |
|
10574991 |
China |
MICHELIN |
June 7, 2013 |
16 |
|
9156074 |
China |
MICHELIN |
February 14, 2013 |
35 |
The Complainant also owns and operates domain names reflecting the Trade Mark including <michelin.com>.
The Complainant is proposing to introduce a range of scooter tyres called "Power Pure SC". The Complainant therefore noted that the Domain Name was registered by the Respondent which includes the Complainant's Trade Mark prefaced by the letters "sc".
The Respondent is located in Beijing, China. The Domain Name was registered on March 14, 2017. The website connected to the Domain Name leads to an inactive page. An email server has also been configured under the Domain Name.
The Complainant sent several cease and desist letters to the Respondent via registered letter and email but despite several reminders no response was received from the Respondent.
The Complainant contents that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in Paragraph IV of the Complaint and confirmed in an email of July 27, 2017 that the language of the proceeding should be English. The Complainant contends that it is located in France and has no knowledge of Chinese. The cost of translation services and the inconvenience of having to conduct the proceeding in Chines impose a disproportionate burden on the Complainant. It would also cause undue delay. The Domain Name is in Latin characters indicating knowledge of the English language. English is also the language of international relations.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. There is therefore no question of the Respondent not being able to understand the Complaint. The Respondent chose not to respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding.
The Panel accepts that the Complainant has registered and unregistered rights to the Trade Mark which predate the Domain Name.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Name contains the Complainant's distinctive trade mark MICHELIN in its entirety and the the preceding letters "sc". The addition of these letters does nothing to avoid the confusing similarity.
As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element".
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD") as it is viewed as a standard registration requirement.
The Panel finds therefore that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. The Complainant has established this element of the case.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trademark
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.
The Respondent is not affiliated with the Complainant in any way and has produced no evidence to show that it has any rights or legitimate interests in the Domain Name. No permission or license has been offered by the Complainant to the Respondent for use of the Trade Mark in the Domain Name. Due to the well-known nature of the Trade Mark, no actual or contemplated bona fide legitimate use of the Domain Name could be reasonably assumed.
In addition the Domain Name resolves to an inactive page, thus giving no assurance to the Complainant that the Respondent has its own legitimate use under the Domain Name. The Respondent has also made no effort through repeated enquiries via correspondence to demonstrate that the Domain Name was registered for some other legitimate noncommercial or fair use. The Respondent did not respond to any cease and desist letters from the Complainant to assert its own legitimate uses to the Domain Name despite several reminders.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
To succeed under the Policy, the Complainant must show that the Domain Name has been registered and used in bad faith.
The Panel is satisfied that the Respondent must have been aware of the Complainant's well known MICHELIN trade mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name. The Complainant is well known through the world
including in China. The primary significance of the meaning of the word is its reference to the Complainant's Trade Mark and company name. In the WIPO Overview 3.0, section 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
The use of "sc" does not hold any obvious intrinsic meaning when read alone or in conjunction with the Trade Mark. Instead, the use of the "sc" heightens the confusion between the Trade Mark and the Domain Name by providing a clear similarity to the Complainant's new scooter tire.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent's choice of the domain name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Domain Name directs to an inactive page. WIPO Overview 3.0 states that:
"from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or 'coming soon' page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put".
In this case, the Complainant's trade mark is well known, the Respondent has failed to respond to the cease and desist letter, reminders and file a Response. The Respondent has also established an email server under the Domain Name. In the absence of any argument to the contrary, could legitimately be interpreted to be for sinister goals, such as the establishing of email phishing schemes. It is implausible that there can be any good faith use to which the Domain Name may be put. Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith. Accordingly, the Complaint has satisfied the third element of the UDRP, i.e., the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name <scmichelin.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: September 20, 2017