WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. GMO-Z.com RUNSYSTEM, GMO-Z.com RUNSYSTEM JSC / Hoang Hai

Case No. D2018-1511

1. The Parties

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

The Respondent is GMO-Z.com RUNSYSTEM, GMO-Z.com RUNSYSTEM JSC of Hanoi, Viet Nam / Hoang Hai of Hanoi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <lopxemichelin.shop> is registered with GMO Internet, Inc. d/b/a Discount‑Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2018. On July 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 10, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 13, 2018.

On July 10, 2018, the Center sent an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on July 12, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the amended 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 Japanese of the Complaint, and the proceedings commenced on July 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2018.

The Center appointed Keiji Kondo as the sole panelist in this matter on August 14, 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.

4. Factual Background

The Complainant is a French corporation designing and distributing tires, headquartered in Clermont‑Ferrand, France. The Complainant is present in 170 countries, has 111,700 employees and operates 68 production facilities in 17 countries, which together produced 187 million tires in 2016.

The Complainant is the owner of the following trademark registrations:

- International Trademark No. 492879, MICHELIN, registered on May 10, 1985, (duly renewed) covering goods in class 12; and

- International Trademark No. 771031, MICHELIN, registered on June 11, 2001, covering goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39 and 42.

The disputed domain name was registered on March 6, 2018 and resolves to a Vietnamese website selling products under the trademarks of the Complainant and its competitors.

5. Parties’ Contentions

A. Complainant

The disputed domain name <lopxemichelin.shop> is identical or at least confusingly similar to the Complainant’s trademark MICHELIN. People easily associate the disputed domain name <lopxemichelin.shop> with the Complainant’s trademark MICHELIN. The generic term “lopxe” only means “tires” in Vietnamese.

Moreover, the extension “.shop” is not to be taken into consideration when examining the identity or confusing similarity between the Complainant’s trademark and the disputed domain name. The generic Top-Level Domain (“gTLD”) “.shop” should be disregarded in comparison as it is merely a requirement when registering a domain name.

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.

For all of the above-mentioned reasons, the disputed domain name is identical or confusingly similar to the Complainant’s trademark MICHELIN. Therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

The Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the Complainant’s trademarks, or to seek registration of any domain name incorporating said mark. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the trademark MICHELIN preceded the registration of the disputed domain name by years.

In addition, the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name redirects to the Vietnamese website “www.lopxehaibanh.com” which sells tires and various automotive products, notably those of the Complainant and its competitors.

Additionally, the Respondent never answered to the Complainant’s letter sent prior to filing the Complaint despite the Complainant’s reminders.

For all of the above-cited reasons, it is undoubtedly established that the Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.

The Respondent registered and used the disputed domain name in bad faith.

Firstly, the Complainant is well known throughout the world.

Secondly, 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 MICHELIN.

Thirdly, the composition of the disputed domain name <lopxemichelin.shop> reproducing the Complainant’s trademark MICHELIN with the association of the generic term “lopxe” (meaning tires in Vietnamese) and the content of the Respondent’s website clearly demonstrate that the Respondent registered the disputed domain name based on the attractiveness of the Complainant’s mark to divert Internet traffic to its website.

As mentioned above, the disputed domain name redirects to the Vietnamese website “www.lopxehaibanh.com” which sells tires and various automotive products, notably those of the Complainant and its competitors. The Respondent is using the disputed domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the services offered on the Respondent’s website. Hence, the Respondent’s use of the disputed domain name for commercial gain and with the purpose of capitalizing on the notoriety of the Complainant’s trademark MICHELIN cannot constitute good faith.

Finally, it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name.

Consequently, it is established that the Respondent both registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

B. Respondent

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

6. Discussion and Findings

6.1 Language of proceedings

The Panel, exercising his authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding, considering the following circumstances:

- The Complaint was filed in English;

- The language of the Registration Agreement was not known to the Complainant, but the Registrar, located in Japan, notified the Center that the language of the Registration Agreement was Japanese; and

- The Center formally notified the Respondent in English and Japanese of the Complaint, and has given the Respondent an opportunity to comment on the language of the proceeding by sending an email in English and Japanese, but the Respondent has not responded. As the Respondent, who has been duly notified of this proceeding, has elected not to participate in any way, the Panel considers that to order the translation of the Complaint would only result in extra delay and cost for the Complainant.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The disputed domain name consists of “lopxe”, “michelin” and “.shop”. The part “michelin” is identical to the Complainant’s trademark MICHELIN.

The addition of “lopxe”, which means “tires” in Vietnamese, does not avoid the finding of confusing similarity. Addition of the gTLD, “.shop” does not affect the conclusion in this analysis.

Accordingly, the disputed domain name is identical or confusingly similar to the Complainant’s trademark MICHELIN within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The name of the Respondent has no similarity to the disputed domain name. This fact, together with the fact that the Respondent never answered to the Complainant’s cease-and-desist letter despite the Complainant’s reminders, and that the Respondent did not reply to the Complaint, leads to the conclusion that the Respondent has never been commonly known by the disputed domain name.

The Respondent uses the disputed domain name to redirect Internet users to the Vietnamese website “www.lopxehaibanh.com”, which sells tires and various automotive products. The Respondent is neither affiliated with the Complainant in any way nor have they been authorized by the Complainant to use or register domain names containing the Complainant’s trademark MICHELIN. As discussed in the “Bad Faith” analysis below, the Respondent is using the disputed domain name to intentionally attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark MICHELIN. The Respondent’s use of the disputed domain name is neither for a bona fide offering of goods or services, nor is it for legitimate noncommercial or fair purposes.

Accordingly, the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

A main line of business of the Complainant is designing and distributing tires. The Complainant’s trademark MICHELIN is associated with the tires that the Complainant distributes worldwide. The Respondent is obviously doing business in the tire-related industry, which clearly precludes the finding that the Respondent was unaware of the Complainant’s trademark MICHELIN at the time of registration of the disputed domain name.

The Respondent uses the disputed domain name to redirect Internet users to the Vietnamese website “www.lopxehaibanh.com”, which sells tires and various automotive products including those of the Complainant’s competitors. The Respondent’s use of the disputed domain name in this manner would lead Internet users to confusion that goods or services offered at the Respondent’s website are related to the Complainant, and such confusion would give the Respondent commercial gain. The addition of the word “lopxe” (“tires in Vietnamese) to the Complainant’s trademark in the disputed domain name may in fact strengthen confusion among Internet users.

Therefore, the Panel concludes that the Respondent registered and has been using the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark MICHELIN as to the source, sponsorship, affiliation, or endorsement of tires offered at the Respondent’s website. Accordingly, the Respondent registered and has been using the disputed domain name in bad faith within the meaning of 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 <lopxemichelin.shop> be transferred to the Complainant.

Keiji Kondo
Sole Panelist
Date: August 20, 2018