WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Way Su
Case No. D2016-2221
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Way Su of Wuhan, Hubei, China.
2. The Domain Name and Registrar
The disputed domain name <michelin.mom> 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 November 2, 2016. On November 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant's contact information for the disputed domain name which differed from the named Respondent's contact information in the Complaint. The Center sent an email communication to the Complainant on November 7, 2016 providing the registrant's contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on November 9, 2016.
On November 7, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 9, 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 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 of the Complaint in English and Chinese, and the proceedings commenced on November 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2016. The Respondent did not submit a formal response save for its email communication dated November 11, 2016. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on December 6, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on December 12, 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 is a French tyre maker which manufactures and sells tyres worldwide. It also publishes travel guides, hotel and restaurant guides, maps and road atlases. It has a large tyre distribution network in China. It first established a representative office in China in 1989 and now has over 5,000 employees in China. The Complainant is the registered proprietor of the trademark MICHELIN in various countries in numerous classes, including in China where it has registrations in classes 12, 16 and 43 (including Chinese trademark registration number 136402 of April 5, 1980). The Complainant is also the registrant of the domain names <michelin.com> and <michelin.com.cn>.
The Respondent is an individual based in China.
The disputed domain name was registered on May 4, 2016 and does not resolve to any active page.
5. Parties' Contentions
The Complainant's contentions are as follows:
Identical or Confusingly Similar
The Complainant contends that the disputed domain name <michelin.mom> and the trademark MICHELIN are identical or confusingly similar. The disputed domain name contains MICHELIN in its entirety and the addition of a new generic Top-Level Domain ("gTLD") ".mom" does not affect its similarity.
No rights or legitimate interests
The Complainant contends the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for MICHELIN. The disputed domain name does not resolve to any page and therefore the Respondent has not made any reasonable use of nor can it demonstrate preparations to use the disputed domain name. The Complainant contends, the Respondent therefore has no rights or legitimate interests in the disputed domain name.
Registered and Used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name, the Respondent knew of the Complainant's rights in the MICHELIN trademark given its worldwide reputation. The Respondent acquired the disputed domain name only to disrupt the business of the Complainant and to prevent the Complainant from reflecting its mark in a corresponding domain name and/or disrupting the Complainant's business.
The Respondent did not reply to the Complainant's contentions other than a brief email in response to the Complainant's language request to state that the Complainant had not contacted it before commencing proceedings and that it would fight to defend its rights.
6. Discussion and Findings
6.1 Language of proceeding
The language of the Registration Agreement is Chinese. The Complainant requests that the language of proceeding be English on the grounds that the Complainant does not understand or speak Chinese. The Complainant argued the obligation to translate all relevant case documents would be an unfair disadvantage to the Complainant. It would also be too cost-intensive and the proceeding would be unnecessarily delayed.
The Respondent responded with an email in Chinese dated November 11, 2016 stating that it would defend its rights but not specifically responding to the language of proceeding request. The Respondent subsequently did not file a response.
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 proceedings."
The Center made a preliminary determination to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Chinese; and 3) appoint a Panel familiar with both languages mentioned above, if available.
As set out below, the Panel considers the merits of the case to be strongly in favor of the Complainant. Translating the Complaint would cause unnecessary delays and expense. The Respondent has received the Complaint but did not make a request that the language of proceedings be in Chinese. All of the Center's communications to the Parties have been in both Chinese and English. These factors lead the Panel to determine to follow the Center's preliminary determination. If a Response had been filed in Chinese, the Panel would have accepted it. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2 Substantive Issues
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the dispute domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <michelin.mom>, other than the new gTLD ".mom", is identical to the Complainant's trademark. The disputed domain name incorporates the Complainant's MICHELIN mark in full. The disputed domain name is therefore identical to the Complainant's registered trademark.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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 fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
The Complainant is internationally well-known and owns over one hundred MICHELIN trademarks worldwide. The Respondent has no business or any kind of relationship (e.g., licensor, distributor) with the Complainant.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish they have rights and legitimate interests. These are:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
Considering the absence of a response by the Respondent to the Complainant's contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant's trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name <michelin.mom> was registered in bad faith and is being used in bad faith.
While the disputed domain name is not being used, this does not as such prevent a finding of bad faith. (See paragraph 3.2 of the WIPO Overview 2.0). The disputed domain name comprises of the whole of the Complainant's mark. The Complainant is also well-known worldwide, it established its first China office in 1989. The Panel considers that it is very likely that the Respondent knew of the Complainant especially given the Complainant's worldwide reputation.
Having examined all the circumstances of the case, the Panel has no hesitation in finding that the disputed domain name was registered and is being used in bad faith
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.mom> be transferred to the Complainant.
Date: December 28, 2016