The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Hong Wei Wang, Bei Jing Jutonline techinfo Co., Ltd of Beijing, China.
The disputed domain name <michelinaolvera.top> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2018. On September 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 2018, 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, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On October 3, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment 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, in English and Chinese, of the Complaint, and the proceedings commenced on October 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2018.
The Center appointed Sok Ling MOI as the sole panelist in this matter on November 8, 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, founded in 1889 and headquartered in France, is one of the world’s leading tire companies. The Complainant is present in 170 countries, operates 68 production facilities in 17 countries (two of which are in China’s Shanghai and Shenyang), and employs over 100,000 employees worldwide (including over 5,000 in China). Apart from tires, the Complainant also provides travel and driving guides under the brand name “Michelin”, with more than 30 million MICHELIN guides sold worldwide since its launch in the 1920s.
The Complainant owns numerous trade mark registrations for MICHELIN in several jurisdictions around the world, including the following registrations in China:
|
Jurisdiction |
Mark |
Registration Number |
Registration Date |
|
China |
MICHELIN |
136402 |
April 5, 1980 |
|
China |
MICHELIN |
6167649 |
January 7, 2010 |
|
China |
MICHELIN |
776333 |
January 21, 1995 |
|
China |
MICHELIN |
9155692 |
April 7, 2012 |
|
China |
MICHELIN |
14122988 |
April 14, 2015 |
|
China |
MICHELIN |
5149519 |
May 28, 2009 |
|
China |
MICHELIN |
10574991 |
June 7, 2013 |
The Complainant also owns, and operates websites through, the following domain name registrations reflecting its registered trade marks to promote its goods and services:
- <michelin.com> registered on December 1, 1993;
- <michelin.com.cn> registered on June 16, 2001.
The disputed domain name <michelinaolvera.top> was registered on April 23, 2018, long after the Complainant has used and registered its trade mark MICHELIN. According to the evidence submitted by the Complainant and as of the date of this decision, the disputed domain name does not resolve to any active website and appears never to have done so in the past.
The Complainant contends that the disputed domain name consists of its well-known trade mark MICHELIN and the geographical term “Olvera” and is therefore confusingly similar to its trade mark.
The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the disputed domain name has been registered and used to create confusion and mislead Internet users into believing that the Respondent’s website is in some way connected with or endorsed by the Complainant. The Complainant therefore contends that the Respondent has registered and is using the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
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.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably 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. The Respondent did not comment on the language of the proceeding.
Although the Respondent appears to be a Chinese company, 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 is registered in Latin characters, rather than Chinese script; and
(b) based on a reverse WhoIs search independently conducted by the Panel using the registrant’s email, it appears the Respondent has registered other domain names comprising English words/names, such as <travisgoldman.top>, <virgiesilverman.top>, <annicecornwell.top>, <cassidyhamel.top>, and <kurtishorn.top>.
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; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that 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 its 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 would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the respondent 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 evidence introduced by the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in MICHELIN by virtue of its use and registration of the same as a trade mark.
The disputed domain name effectively incorporates the Complainant’s trade mark MICHELIN in its entirety. The addition of the letter “a” and the geographical term “Olvera” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trade mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The addition of the generic Top-Level-Domain (gTLD) “.top” does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case.
Consequently, the Panel finds that the disputed domain name is confusingly similar to 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, a 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) of the Policy, 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 Complainant has confirmed that the Respondent is not in any way 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 MICHELIN trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “michelin”.
As the disputed domain name does not resolve to any active website, there is no evidence to suggest that the Respondent is using or has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.
Furthermore, the Respondent has failed to answer the Complainant’s cease and desist letter which suggests the Respondent is unable to provide a justification for its choice of the disputed domain name.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to offer any explanation for its registration of the disputed domain name, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks 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 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel notes that, according to the evidence submitted by the Complainant and 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 a respondent is acting in bad faith. See WIPO Overview 3.0, section 3.3.
The MICHELIN trade mark has been used and registered by the Complainant for more than a hundred years while its domain name <michelin.com.cn> has been registered since 2001. The Panel accepts that the Complainant and its distinctive trade mark MICHELIN enjoy a strong reputation worldwide and a significant Internet presence. A cursory Internet search would have disclosed the MICHELIN trade mark and its extensive use by the Complainant. A strong presumption therefore arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain name. Registration of a domain name that incorporates a complainant’s well-known trade mark by someone with no connection with the trade mark suggests opportunistic bad faith.
The Panel accepts that the addition of the geographical term “Olvera” may confuse Internet users into believing that the disputed domain name will resolve to a website that is owned or controlled by the Complainant, promoting a trip to Olvera, one of the travel destinations appearing in the MICHELIN guide.
The Respondent has not replied to, let alone denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances of this case, the Panel concludes that the Respondent has registered and is using 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 <michelinaolvera.top> be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: December 1, 2018