WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Zhangqiang
Case No. D2018-1573
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Zhang Qiang of Hangzhou, China.
2. The Domain Name and Registrar
The disputed domain name <michelinvip.top> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 12, 2018. On July 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 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 July 16, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on July 17, 2018. The Respondent did not reply 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 of the Complaint, and the proceedings commenced on July 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified of the Respondent's default on August 16, 2018.
The Center appointed Joseph Simone as the sole panelist in this matter on August 22, 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, Michelin, is a French tire company headquartered in Clermont-Ferrand, and is one of the largest tire manufacturers in the world. Michelin set up its first representative office in mainland China in Beijing in 1989.
The Complainant owns numerous trademark registrations around the world. They include several registrations for MICHELIN in China, the earliest of which registered on April 5, 1980, covering goods in class 12 (see Chinese Trademark No. 136402).
In addition, the Complainant operates domain names reflecting its trademark including <michelin.com>.
The disputed domain name <michelinvip.top> was registered on January 29, 2018, by the Respondent Zhangqiang, of Hangzhou, China. It previously resolved to an inactive website. It now resolves to a Chinese-language webpage related to Chinese medicine.
On February 21, 2018, the Complainant sent a cease-and-desist letter to the Respondent, via registered letter and email, requesting that the Respondent transfer the disputed domain name to the Complainant free of charge, on the basis of the Complainant's trademark rights. As the Respondent did not reply, the Complainant commenced this proceeding.
5. Parties' Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark MICHELIN in which it has rights, based on the following:
(i) The Complainant owns numerous trademark registrations for MICHELIN around the world, including in China. In addition, the Complainant operates domain names reflecting its trademark including <michelin.com>.
(ii) The disputed domain name reproduces the Complainant's trademark MICHELIN in its entirety, which previous UDRP panels have considered as "well-known". Many UDRP decisions have considered that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered trademark. The addition of the acronym "vip" does not dispel the likelihood of confusion and the addition of the Top-Level Domain ("TLD") should be disregarded since it is a technical requirement of registration.
(iii) The Complainant has used the trademark MICHELIN in connection with a wide variety of products and services such that the public has come to perceive the goods and services offered under this trademark as being those of the Complainant. Therefore, the public may reasonably assume and is likely to be misled that the disputed domain name is owned by or at least related to the Complainant.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name based on the following:
(i) The Respondent is not affiliated with the Complainant and has not been authorized or licensed by the Complainant to use and register its trademark or to register any domain name incorporating that trademark. The Respondent has no prior rights, as registration of the MICHELIN trademarks precedes the registration of the disputed domain name by many years.
(ii) Initially the disputed domain name resolved to an inactive page. It was only after the Complainant sent a cease-and-desist letter that the disputed domain name started to resolve towards a page related to Chinese medicine. Hence, the Respondent did not make demonstrable preparations to use the disputed domain name and has failed to show any intention of non-commercial or fair use of the disputed domain name.
(iii) The Respondent did not reply to the Complainant's cease-and-desist letter, thereby failing to avail itself of its right to demonstrate a right or legitimate interest.
Registered and used in bad faith
The Complainant submits that the disputed domain name was registered and is being used in bad faith on the following grounds:
(i) Given the well-known status of the MICHELIN trademark and the ease with which the Complainant's rights could be ascertained, the Respondent likely knew of the Complainant's rights prior to registration. Previous Panels have established that knowledge of a complainant's rights at the time of registration can prove registration in bad faith. Moreover, the Respondent did not try to defend its rights nor state any arguments to justify registration of the disputed domain name.
(ii) The fact that the disputed domain name previously directed towards an inactive page and was thereby passively held does not preclude a finding of bad faith use. The disputed domain name now directs to a page in Chinese related to Chinese medicine, which was not authorized by the Complainant. In the absence of any license or permission to use such a widely known trademark, no bona fide or legitimate use of the disputed domain name can reasonably be claimed. It is more likely that the Respondent's primary motive was to capitalize on the Complainant's trademark rights through the creation of initial interest by confusion.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The Complainant filed the Complaint in English and requested that English be the language of the proceeding on the grounds that (i) the Complainant is located in France and has no knowledge of Chinese. Therefore, if required to submit all documents in Chinese, the proceeding would be unduly delayed and the Complainant would incur substantial expenses for translation; and (ii) the disputed domain name only includes Latin characters, which strongly suggests that the Respondent has knowledge of languages other than Chinese.
In accordance with paragraph 11 of the Rules:
"…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."
Therefore, prima facie, the language of the proceeding shall be Chinese. However, noting the aim of conducting proceedings with due expedition while also ensuring that the parties are given a fair opportunity to present its case, section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") provides for certain scenarios which may warrant proceeding in a language other than that of the registration agreement. These include (i) evidence that the Respondent understands the language of the complaint and (ii) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint.
In the Panel's view, a disputed domain name containing English terms does not alone indicate the necessary familiarity with the English language. As the content of the website to which the disputed domain name resolves is almost solely in Chinese, it cannot be said with any certainty that the Respondent understands English. However, the Respondent was notified in both English and Chinese regarding the nature of the proceeding and issue of language, and failed to express a language preference or submit a formal response, therefore the Panel believes there will be no prejudice caused by proceeding in English. In contrast, requiring the Complainant to translate the Complaint to Chinese would cause undue delay and expense. In keeping with the Policy's aim of facilitating a time-and-cost-efficient procedure for the resolution of domain name disputes, the Panel accordingly determines that it would be appropriate for English to be the language of the proceeding.
6.2 Substantive Issues
A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. In this case, the Complainant has given evidence of its numerous trademark registrations for MICHELIN. The Complainant had also demonstrated unregistered rights by virtue of using the mark MICHELIN in connection with tires around the world.
A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).
When comparing the domain name with the trademark, the general Top-Level Domain ".top" may be disregarded (section 1.11 of WIPO Overview 3.0; F. Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).
In this case, the disputed domain name <michelinvip.top> incorporates the entirety of the Complainant's trademark MICHELIN. After removing the ".top" suffix, the element that remains is the generic term "vip" and it is well established that the addition of a merely descriptive term to a trademark does not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0; VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269; Pfizer inc. v. Blue Viagra, WIPO Case No. D2004-0732).
Therefore, the Panel is satisfied the disputed domain names are confusingly similar to the Complainant's mark and the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent's rights or legitimate interests in the disputed domain name.
Taking these into account, the Panel is satisfied the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests.
(i) There is no relationship between the Respondent and the Complainant that would give rise to any license, permission or authorization for the Respondent to use or register the disputed domain name.
(ii) The Respondent has not made a fair or legitimate use of the disputed domain name. Prior to notice of the dispute, there were no demonstrable preparations to make any use of the website, which was inactive. Now it resolves to a Chinese-language webpage on Chinese medicine, principally offering information on how to improve one's sex life. There is nothing to suggest any link to the term "michelin" or justification for incorporating the term into the disputed domain name. As such, the use of the website cannot confer any rights or legitimate interests on the Respondent.
The burden of production then shifts to the Respondent (section 2.1 of WIPO Overview 3.0). As the Respondent failed to respond to both the cease-and-desist letter and the Complaint, it has failed to provide any evidence to the contrary. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under the third element of the Policy, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
Given that MICHELIN is not a dictionary word and that the disputed domain name wholly incorporates the trademark, which is inherently distinctive and well-known in relation to tires, the Panel accepts that the Respondent likely knew of the Complainant's trademark when it registered the disputed domain name. This is a strong inference for bad faith, particularly where the trademark is "so obviously connected with such a well-known name and products" (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel does not find that the current case neatly fits one of these scenarios; however even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant's trademark may also satisfy the complainant's burden (section 3.1 of WIPO Overview 3.0). By incorporating the trademark MICHELIN in the disputed domain name with no plausible explanation, the Panel believes the Respondent intended to divert Internet users to its website by creating a likelihood of confusion with the Complainant's mark. This cannot be considered good faith use. The previously inactive status of the disputed domain name does not alter this conclusion, as it is well-established that passive holding can support a finding of bad faith given other circumstances (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Respondent's failure to submit a response stating otherwise reinforces this conclusion.
Accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith and the third requirement of the UDRP is 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 <michelinvip.top> be transferred to the Complainant.
Date: September 5, 2018