WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Tang Tao
Case No. D2016-0576
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Tang Tao of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <michelin.tech> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2016. On March 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 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 29, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. On March 30 and 31, 2016, respectively, the Respondent requested that Chinese be the language of the proceeding and that the Complaint be translated into Chinese.
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 in Chinese and English, and the proceeding commenced on April 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2016. The Response was filed with the Center on April 2, 2016. On April 6, 2016, the Respondent confirmed that the Response of April 2, 2016 was his final Response.
The Center appointed Matthew Kennedy as the sole panelist in this matter on April 19, 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, headquartered in France, manufactures and markets tires around the world. It also offers electronic mobility support services and publishes travel guides, hotel and restaurant guides, maps and road atlases. The Complainant established a representative office in China in 1989. It produces tires at factories in China and operates the largest professional tire sales and service network in China. It has marketing offices in Beijing, Shanghai, Guangzhou, Chengdu, Shenyang and Xi'an.
The Complainant has registered its MICHELIN trademark in China, where it owns registration no. 136402 in class 12, registration no. 6167649 in class 12, registration no. 10574991 in class 16 and registration no. 9156074 in class 35. These trademarks were registered in 1980, 2010, 2013 and 2013, respectively, and they remain in effect. The Complainant also operates websites at "www.michelin.com" and "www.michelin.com.cn".
The Respondent is an individual in Xiamen, Fujian, China. The disputed domain name was created on November 1, 2015. The Respondent is also the registrant of the following 34 domain names, which were all created on the same day as the disputed domain name: <adidas.tech>, <boeing.tech>, <cofco.tech>, <dupont.tech>, <durex.tech>, <eads.tech>, <exor.tech>, <fedex.tech>, <goldman.tech>, <kuwo.tech>, <meitu.tech>, <nec.tech>, <netapp.tech>, <ourpalm.tech>, <panasonic.tech>, <pepsico.tech>, <qihu.tech>, <qunar.tech>, <renault.tech>, <sandisk.tech>, <seagate.tech>, <sougou.tech>, <souhu.tech>, <zend.tech>, <cctv.studio>, <chen.studio>, <coder.studio>, <deen.studio>, <fans.studio>, <marry.studio>, <seeed.studio>, <tang.studio>, <toei.studio> and <zend.studio>.
Prior to the commencement of this proceeding, the Complainant's representative sent a cease-and-desist email to the Respondent dated January 12, 2016. The Respondent replied in an email dated January 14, 2016 as follows: "Come on! If there is a reasonable price, I am willing to transfer the domain name. If there is no reasonable price, I am willing to accept the prosecution." The Respondent sent a follow-up email the same day with words to the effect of "Don't indulge in wishful thinking, cheat!"
5. Parties' Contentions
The disputed domain name is identical or at least confusingly similar to the Complainant's MICHELIN trademark as it substantially reproduces the Complainant's trademark in its entirety. Previous UDRP panels have considered the trademark to be "well-known" or "famous".
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with Complainant in any way nor has he been authorised by Complainant to use and register its trademark or to seek registration of any domain name incorporating said mark. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name. Considering the exchanges with the Respondent prior to the proceeding, it appears that the only reason why the Respondent has registered the disputed domain name is for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name.
The disputed domain name was registered and is being used in bad faith. It is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name because the Complainant is well known throughout the world, including in China. The Respondent has registered 35 domain names composed of several famous trademarks and the new generic Top-Level Domain ("gTLD") ".tech". The disputed domain name is confusingly similar to the Complainant's trademark and is currently inactive. The Respondent responded to the Complainant's cease-and-desist letter by offering to sell the disputed domain name for "a reasonable price", and his follow up message threatened the Complainant to comply with his instructions, all of which is a strong indicator of bad faith.
The Respondent set out his initial position in an email of March 30, 2016 as follows. The disputed domain name does not infringe the Complainant's legal rights. The Respondent has not used the disputed domain name to establish a website with content related to the Complainant or related products. The Respondent has not used the disputed domain name to establish any website at all. He had purchased the disputed domain name according to its Pinyin meaning in Chinese. In Chinese there are many words that can be written as "Michelin" such as "米车林", "迷车林", "觅车林", "芈彻林", etc. The similarity between the disputed domain name and the Complainant's MICHELIN name was coincidental.
The Respondent's final position was expressed in the Response of April 2, 2016 as follows. The disputed domain name is not confusingly similar to the Complainant's MICHELIN trademark. The disputed domain name means "seek rent car technology". "Michelin" is the Pinyin transliteration of the generic Chinese words "觅"，"车" and "赁". The Complainant's trademark is registered in respect of tires. Michelin is not so famous in China because the Complainant advertises as 米其林 (pronounced "Miqilin") rather than "Michelin". Chinese readers' first impression of "Michelin" is that it is composed of three words in Pinyin which can mean many things in Chinese. The Complainant has not registered "michelin" in every gTLD and it is not entitled to register every Michelin domain name.
The Respondent has legitimate interests in respect of the disputed domain name. "Michelin" is composed of generic Pinyin words that everyone has the right to use. The Complainant cannot have exclusive rights to all Michelin domain names just because it owns the Michelin trademark. The Respondent chose the name "觅车赁.科技" because he has encountered problems when renting cars while travelling and wanted to set up a noncommercial website to share some general knowledge and legal knowledge about that subject. The website's logo is displayed in Pinyin to distinguish it from the MICHELIN trademark. The site is a noncommercial site for the dissemination of knowledge and information, which is unlike the Complainant or its products. The Respondent registered the disputed domain name in November 2015 but he did not actively begin to create the website until after he filed with the Chinese Ministry of Industry and Information Technology in December 2015 and then only in a state visible only to the administrator. The website is now public and publishes articles.
The disputed domain name was not registered or used in bad faith. The Respondent has had disputes regarding car rental when travelling and the disputed domain name is suitable for sharing these experiences and knowledge. The choice of the disputed domain name corresponds to the subject matter of this noncommercial site because "觅车 miche" means "seeking car", "赁 lin" means "rental" and together they mean "car rental". The website provides knowledge and experience on the car rental process. The Respondent suspects the Complainant of bad faith in initiating this proceeding because the Complainant did not register a domain name in the gTLD ".tech", which opened for registration in August 2015, but rather threatened the Respondent two months after he registered the disputed domain name in November 2015. The Respondent has never attempted to sell the disputed domain name on any trading website or platform and the Respondent has never suggested selling the disputed domain name to the Complainant. The Complainant's cease-and-desist letter did not explain that it was sent on behalf of the Complainant and the sender's email suffix did not indicate that it came from the Complainant's system hence the Respondent was justified in considering the letter a hoax. He replied as he did because he was angry at receiving a demand to transfer the disputed domain name after he had taken the time and effort to register it by legitimate means.
The Respondent's intention was not expressed in the first sentence of his reply (to sell the disputed domain name for a reasonable price) but rather in the second sentence, as confirmed by his follow-up message. The Respondent only wishes to operate a noncommercial website that does not infringe any rights and he does not wish to sell the disputed domain name. The Respondent established his noncommercial information-sharing website and posted the first article on December 11, 2015 before the Complainant sent its cease-and-desist letter. The content of the Respondent's website is wholly unrelated to the Complainant's tire business and there is no possibility that it infringes or threatens the Complainant's interests. The Respondent has not registered the Complainant's trademark to prevent the Complainant using its mark as a domain name on the Internet and exercising its trademark rights. The Respondent has not damaged the Complainant's reputation or disrupted the Complainant's regular business activities or created confusion with the Complainant or misled the public. There are no other circumstances indicating bad faith on the part of the Respondent.
6. Discussion and Findings
6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that "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." The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant has no knowledge of Chinese, that use of a language besides English would impose a significant burden on the Complainant and that the Respondent speaks "perfect English".
The Respondent requested that the language of the proceeding be Chinese, in simplified script. He submits that it is not convenient for him to read English.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
The Panel observes that the Complaint in this proceeding was filed in English and the Response was filed in Chinese. However, the Response includes some evidence in English and refers to the contents of the Complaint. Further, prior to the commencement of the proceeding, the Complainant's representative sent the Respondent a cease-and-desist email on January 12, 2016, written in English, to which the Respondent replied on January 14, 2016, also in English, as well as in Chinese. This evidence indicates that the Respondent is familiar with English. The Panel is familiar with both Chinese and English. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. At the same time, the Panel notes that both parties have been able to present their respective views of the matter in dispute. Therefore, the Panel does not consider that accepting the original version of any document on file causes prejudice to either party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, and that it will accept the communications filed in Chinese and English without a translation.
6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the registered trademark MICHELIN.
The disputed domain name incorporates the Complainant's trademark MICHELIN in its entirety. The only additional element is the gTLD suffix ".tech". A gTLD suffix generally has no capacity to distinguish a domain name from a trademark (See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080) and nothing in this dispute leads to a different conclusion.
The Respondent points out that MICHELIN corresponds to the Pinyin transliteration of various three-character combinations in Chinese pronounced "mi", "che" and "lin". However, the facts remain that the Complainant's trademark and the disputed domain name (excluding the gTLD suffix) are identical, and that the Complainant has rights in its trademark. The Respondent argues that the Complainant is known in China as 米其林 (pronounced "Miqilin") rather than "Michelin" but the evidence shows that the Complainant indeed owns registrations for the wordmark MICHELIN in China. The Respondent also argues that the Complainant is not entitled to register its trademark in every gTLD. However, the issue whether a third party is entitled to register a domain name confusingly similar to that trademark is relevant to the second and third elements, considered below.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark 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 trademark or service mark at issue.
The Panel has already found the disputed domain name to be confusingly similar to the Complainant's trademark. The Complainant submits that it has never authorized the Respondent to use or register its trademark or to register the disputed domain name. The Complainant submits a screenshot showing that, prior to the initiation of this dispute, the disputed domain name did not resolve to any active website, that is, the Respondent made only passive use of the disputed domain name. Further, the Respondent's name is "Tang Tao" and his emails indicate an alias "Tang Rhys", neither of which has any apparent connection with the name "Michelin".
In view of the above circumstances, the Panel considers that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden now shifts to the Respondent to show that he does have rights or legitimate interests.
The Respondent argues that he is making a legitimate noncommercial use of the disputed domain name. At the time of this decision, the disputed domain name resolves to a website in Chinese that displays the logo
"觅车赁.科技" and the Pinyin transliteration "michelin.tech". These characters mean "seek", "car", "rental" and "technology". The website announces that it provides free car rental information to the general public and states it is noncommercial. It displays several posts regarding car rental and two photos of cars. It does not offer anything for sale nor does it display advertising.
The Panel has carefully reviewed the Respondent's submissions regarding the content of the website and the timing of its creation. The Respondent's final position is that he chose the name "michelin" because it corresponded to the Pinyin for Chinese characters meaning "seek, car, rental" and that the identity with the Complainant's trademark is coincidental. He also points out a date shown next to the first post on his website regarding car rental. However, he never mentioned car rental in his initial communication to the Center on March 30, 2016, when he observed that the name "michelin" corresponds to the Pinyin for Chinese characters meaning "rice, car, forest", "confused, car, forest", "seek, car, forest", "bleat, thorough, forest", etc. In any event, the characters "觅车赁" are an improbable combination, even for a website to share information on car rental. The Respondent explains the relevance of each character to the content of the website but offers no persuasive explanation of the three-character combination as a whole nor the order of "车" and "赁". The content of the website to which the disputed domain name now resolves also appears contrived. Further, the Panel notes that the Respondent is the registrant of many other domain names consisting of third party trademarks plus a gTLD, just like the disputed domain name, which strongly suggests that the Respondent is using the disputed domain name because MICHELIN is a trademark rather than to operate a noncommercial website sharing information on car rental. In view of all these circumstances, the Panel does not find that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.
With respect to registration in bad faith, the Panel observes that the Respondent registered a domain name that, but for the gTLD, is identical to the Complainant's MICHELIN trademark. The disputed domain name registration postdates the Complainant's trademark registrations – including in China, where the Respondent is located. The Complainant has extensive operations in China and the evidence shows that it uses the trademark MICHELIN and not only "米其林". Information on the Complainant and its products are among the top search results for the term "michelin" in the Baidu search engine. The Respondent is the registrant of many other domain names consisting of third party trademarks plus a gTLD, registered at the same time as the disputed domain name, which strongly suggests that he knew MICHELIN was a trademark at the time that he registered the disputed domain name. The Panel takes note that "michelin" corresponds to the Pinyin transliteration of various three-character combinations in Chinese pronounced "mi", "che" and "lin" but that appears to be coincidental. In view of all the circumstances, the Panel is persuaded that the choice to register a domain name identical to the Complainant's trademark, in combination with a gTLD, was in bad faith.
With respect to use in bad faith, the Respondent made only passive use of the disputed domain name up until the time of this proceeding but this does not preclude a finding of use in bad faith (see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present dispute, the Complainant has a strong reputation in its trademark which is widely known through use in connection with its goods and services, including through the Complainant's official websites "www.michelin.com" and "www.michelin.com.cn". The disputed domain name consists of the exact trademark MICHELIN plus a gTLD. The Respondent is the registrant of many other domain names consisting of third party trademarks plus a gTLD, which is a further indication of bad faith. The Respondent's position has evolved during this proceeding and, despite the evidence of a new website, ultimately fails to provide a persuasive explanation for the choice of the disputed domain name for the reasons given in Section 6.2B. Given these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain name is being used in bad faith and that the Respondent has failed to rebut that case.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 <michelin.tech> be transferred to the Complainant.
Date: April 27, 2016