WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Xu Jing, Domain Whois Protection Service
Case No. D2014-0815
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Xu Jing of Wuxi, Jiangsu, China, Domain Whois Protection Service of Hangzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <michelinchina.com> ("the Domain Name") is registered with Hangzhou AiMing Network Co., LTD (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2014. On May 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 19, 2014, 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 May 19, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On May 20, 2014, the Complainant confirmed its request that English be the language of the proceeding. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceedings commenced on June 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 24, 2014.
The Center appointed Karen Fong as the sole panelist in this matter on July 7, 2014. 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 well known in the automotive industry and French and international gastronomy in connection with the mark MICHELIN. The Michelin Guide awards Michelin stars for excellence of selected restaurants and chefs. The Michelin Guide was created by the Michelin brothers in 1900. The Guide has since evolved and today is available in 14 editions covering 20 countries and sold in nearly 90 countries. The Complainant established a representative office in Beijing, China in 1989 and in December 2001, a subsidiary was established in Shanghai. It now has marketing offices as well as a training center in China.
The MICHELIN trade mark is registered in many countries in the world including China. The Complainant also owns a number of domain names including <michelin.com> and <michelin.com.cn>.
The Respondent registered the Domain Name on August 9, 2013. Prior to the Complaint being filed, the Domain Name resolved to a Chinese website ("the Website") which purported to be an official website of the Complainant. It displayed information about Michelin star chefs and restaurants. The Website does not appear to be active at the moment.
Before filing the Complaint, the Complainant's legal representatives sent a cease and desist letter to the Respondent on December 10, 2013 to request that he ceases use of the Domain Name and transfer it to the Complainant. Several reminders were sent but no response was received.
The Domain Name was previously the subject of a successful UDRP complaint by the Complainant when it was owned by another party – Compagnie Générale des Etablissements Michelin (Michelin) v. Rosa Chen, WIPO Case No. D2011-1326. The Domain Name was cancelled.
5. Parties' Contentions
The Complainant contends 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 is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
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.
B. Preliminary Procedural Issue – Language of the Proceeding
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 proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in Section IV of the Complaint that the language of the proceeding should be English. The Complainant contends amongst other things that it is located in France and has no knowledge of Chinese. Conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having this Complaint translated into Chinese. English is the primary language for international relations. Further the Domain Name is in the English language.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Complainant tried to resolve the matter with the Respondent but he failed to reply. It would be unfair to put the Complainant through the expense of translating all the documents only for the Respondent to fail to file a Response which is the case here. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding email communication by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the name "Michelin" through extensive use and registration that pre date the Domain Name.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. The Domain Name integrates the Complainant's registered trade mark "Michelin", the geographical term, "china" and generic Top-Level Domain ".com" suffix. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. Further, the addition of the geographical term "china" does not negate the confusing similarity encouraged by the Respondent's complete integration of the "Michelin" trade mark in the Domain Name. E.g. N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant alleges that it is not licensed or affiliated in any manner with the Respondent and has not authorized the Respondent to use its well-known MICHELIN trade mark in the Domain Name or any other manner. The Respondent is not commonly known by the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name as the Website is purporting to be a Michelin official website.
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.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant's well-known trade mark when it registered the Domain Name. The reference to Michelin star restaurants and chefs on the Website is further proof of this. The Complainant has provided sufficient evidence that the registration of the Domain Name post dates the registration and extensive use of the Complainant's MICHELIN trade mark.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Names was in bad faith. The Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the website connected to the Domain Name is somehow authorised or endorsed by the Complainant.
The Panel therefore concludes that 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, <michelinchina.com>, be transferred to the Complainant.
Date: July 21, 2014