WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Shen Zhong Chao
Case No. D2016-0408
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Shen Zhong Chao of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <michelin-fives.com> (“the Domain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2016. On March 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 2, 2016, 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 March 4, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 4, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on April 13, 2016. 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 leading tyre company, manufacturing and marketing tyres for all types of vehicles including airplanes, automobiles,, bicycles, motorcycles, earthmovers, farm equipment and trucks. In addition, it also offers electronic mobility services and publishes travel guides, hotel and restaurant guides, maps and road atlases. Headquartered in France, the Complainant is locates in 170 countries, employs 112,300 people and operates 68 production plants in 17 countries.
The Complainant set up its first representative office in China in 1989. It currently employs 500 employees in China. Michelin has the largest tyre sales and service network in China with marketing offices in Beijing, Shanghai, Guangzhou, Chengdu, Shenyang and Xi’an.
The Complainant trades under the name MICHELIN. MICHELIN is a registered trade mark in many countries including China where it is registered in a number of classes. The earliest trade mark registration in China No 136402 in Class 12 dates back to 1979. The Complainant also has a number of domain names registered to reflect its trade marks and promote its goods and services. These include <michelin.com> and <michelin.cn>. The Complaint also has extensive reputation in the name Michelin.
In September 2015, the Complainant’s group and Fives, a global machinery equipment and production systems company entered into a joint venture to develop and market metal 3D printing equipment and services. The name of the venture is FIVES MICHELIN ADDITIVE SOLUTIONS. This was announced in many media channels.
The Domain Name was registered by the Respondent on September 23, 2015. It is not connected to an active website.
The Complainant’s lawyers sent a cease and desist letter to the Respondent on December 14, 2015, requesting for the transfer of the Domain Name. The Respondent replied on December 17, 2015, saying that he would transfer the Domain Name for USD 1,000. The Complainant’s legal representatives responded on December 21, 2015, explaining why he should transfer the Domain Name for no charge. The Respondent replied on December 26, 2015 lowering the offer to USD 900. The postal version of the cease and desist letter was returned marked undelivered due to insufficient address detail.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the trade mark MICHELIN, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and 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 being used in bad faith.
6.2. 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 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 March 2, 2016 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 Chinese 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. Further, the Respondent’s pre-action correspondence with the Complainant’s lawyers was in English which is further evidence of his 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 and is satisfied that the Respondent appears to understand the English language. 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 is the language of the proceeding.
6.3. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the MICHELIN trade mark.
The Domain Name contains the Complainant’s distinctive trade mark MICHELIN in its entirety and also incorporate the name FIVES which is the name of the Complainant’s business partner with a hyphen in between. Prior UDRP panels have consistently found that the Respondent’s inclusion of a third party’s trademark in its domain name does not eliminate the visual impression that the disputed domain name is associated with the Complainant’s trade mark. See to this effect, inter alia, Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 and Hofmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793. Likewise, the insertion of the hyphens between the words does not alter the fact that the Domain Name is confusingly similar to the Complainant’s trade mark. The inclusion of the generic Top-Level Domain (“gTLD”) denomination “.com” shall be disregarded for the purpose of this proceeding.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s registered trade mark and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
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 non- commercial 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The standard of proof required under the UDRP is “on balance”. An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Respondent is not affiliated to the Complainant in any way nor has he been authorised by the Complainant to register and use the Domain Name. It has no independent right to the Domain Name. MICHELIN is the well-known trade mark of the Complainant and it would be impossible for the Respondent to develop a legitimate activity in connection with the Domain Name without authorisation. The Respondent has also not shown that he is making legitimate noncommercial or fair use of the Domain Name.
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.
C. Registered and Used in Bad Faith
To succeed under the Policy, a 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 must have been aware of the Complainant’s MICHELIN trade mark and new joint venture with Fives when he registered the Domain Name. There can be no other explanation for combining the Complainant’s business partner’s name, FIVES, and the Complainant’s well known trade mark, MICHELIN. This is clear evidence that the registration of the Domain Name was in bad faith.
In addition to the circumstances of registration referred to above, the Respondent’s asking the Complainant to pay USD 1,000 and then a reduction to USD 900 to transfer the Domain Name demonstrates that the Domain Name has been used in bad faith. The offer to transfer the Domain Name for sums exceeding the reasonable cost of registration and maintenance falls squarely within the circumstances in paragraph 4(b)(i) of the Policy which is evidence of bad faith. Further, the lack of a proper address in the WhoIs is also another indication of bad faith. The Respondent has not raised any substantive points to challenge these allegations. 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.
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, <michelin-fives.com>, be transferred to the Complainant.
Date: April 27, 2016