WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Wells Lee
Case No. D2016-2629
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Wells Lee of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <michelin.training> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 27, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
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 January 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2017. The Response was filed with the Center on January 24, 2017.
The Center appointed Richard G. Lyon as the sole panelist in this matter on February 6, 2017. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 following facts are established by the Parties' evidence and are more or less undisputed, though the Parties draw different conclusions from them.
The Complainant, headquartered in France, sells tires around the world. Its tire business dates to the nineteenth century. The Complainant is also known for travel guides that are sold in many countries, including China, the domicile of the Respondent. The Complainant has built a substantial commercial presence in China, including employment of several thousand people and operates several marketing and distribution centers in six cities.
The Complainant holds many trademarks for MICHELIN around the world, including several trademarks registered in China, the country in which the Respondent resides. The earliest of these submitted with the Complaint issued on April 5, 1980 (registration number 136402). The Complainant's principal website is "www.michelin.com" and it also owns the domain name <michelin.com.cn>, the latter employing the country code Top-Level Domain (ccTLD) for China. The Complainant has never authorized the Respondent to use its MICHELIN marks.
The Respondent registered the disputed domain name on April 15, 2016. At no time has the disputed domain name resolved to an active website. When the Panel entered the disputed domain name into his browser he received a standard "website coming soon" message.
The Complainant sent a cease-and-desist letter to the Respondent by registered mail and electronic mail, using the addresses shown on the WhoIs data for the disputed domain name, but received no reply. The hard copy letter was returned as undeliverable.
5. Parties' Contentions
The Complainant contends as follows:
1. The disputed domain name is either identical or confusingly similar to the Complainant's registered MICHELIN marks. The Complainant urges the Panel to take into account the Top-Level Domain (TLD) ".training", which is said to add to the likelihood of confusion given the Complainant's training services.
2. The Complainant has never authorized the Respondent to use its MICHELIN marks and the Respondent has never been known, commonly or otherwise, by any name that includes the word "michelin" independently of the disputed domain name. Many UDRP panels have found the MICHELIN marks well known around the world and famous in the trademark sense. Given that fact "the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name." There is no indication that the Respondent ever used or made demonstrable preparations to use the disputed domain name for any legitimate activity.
3. Bad faith in registration and use of the disputed domain name are demonstrated by the following:
a. Given the renown of the MICHELIN marks, the Respondent "knew or should have known" of the Complainant and its marks. "[B]ad faith has [ ] been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. Given the reputation of the MICHELIN trademark, registration in bad faith can be inferred." (Complaint, C-1, case citations omitted).
b. A simple Internet search or trademark office inquiry would have revealed the Complainant and its marks. Failure to undertake such a search breaches the Respondent's undertaking that "By applying to register a domain name, . . . you [Respondent] hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. . . It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." Policy, paragraph 2.
c. The Respondent failed to respond to the Complainant's cease-and-desist letter.
The Respondent contends as follows:
1. While "the public already has a very strong impression that 'michelin' is associated with tires", the Complainant has failed to demonstrate any registered trademark for training services. "Therefore, the [disputed domain name] is not confusingly similar to a trademark of MICHELIN not covering training service.
2. As the disputed domain name is not being used for an active website, the Respondent is making a noncommercial use of the disputed domain name. Again the inclusion of "training" distinguishes the disputed domain name from the Complainant's marks. "Therefore, the registration of [the disputed domain name] does not reflect the respondent's intent for commercial gain misleadingly to divert consumers."
3. The Respondent has never offered the disputed domain name for sale, to the Complainant or anyone else. The Parties are not competitors. The Respondent never received the Complainant's cease-and-desist letter. The Respondent "registered the [disputed domain name] in good will, which was registered after the name of a close friend of the respondent, for the purpose of registration . . . for a future use… for. . . training business. . . 'Chelin' is a Spanish word with the meaning of 'shilling' and is also used as a name. 'Mi' is the Chinese phonetic alphabets for a traditional Chinese surname". (Chinese character omitted)
6. Discussion and Findings
A. Identical or Confusingly Similar
This Policy element requires the Panel to consider two questions: whether to include the TLD ".training" in his analysis, as both Parties request (albeit for differing reasons); and whether the scope of the Complainant's trademark rights bear upon the required comparison between the marks and the disputed domain name.
Ordinarily the TLD is irrelevant in the comparison under paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test"). With the advent of new and occasionally descriptive TLDs, however, UDRP panels initially considered whether the TLD may bear on confusing similarity. See, e.g., Bayerische Motoren Werke AG v. Masakazu/Living By Blue Co., Ltd., WIPO Case No. DMW2015-0001 (<b.mw>); OSRAM GmbH v. Nick Nick, WIPO Case No. D2014-1083 (<osram.lighting>). Panels appear to have formed a consensus that the TLD is not considered under the first element if the TLD does not form part of the trademark, see Audi AG, Automobili Lamborghini Holding S.p.A., Skoda Auto a.s., Volkswagen AG v. JUS TIN Pty Ltd., WIPO Case No. D2015-0827 (<volkswagen.social>). This issue is irrelevant in this proceeding. If the TLD is considered the disputed domain name, whose dominant feature is "michelin", is confusingly similar to the Complainant's marks for the reasons given in the following paragraph. If the TLD is ignored the disputed domain name is identical to the marks. In either case the Complainant has met its evidentiary burden under paragraph 4(a)(i).
Settled Policy precedent answers the second question. "Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name," WIPO Overview 2.0, paragraph 1.2. While the scope of the Complainant's rights may bear upon the latter two Policy elements (as it would in a trademark infringement action), it rarely affects the comparison the WIPO Overview 2.0 calls for.
The first element under paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
As the Complainant has never authorized the Respondent to use its MICHELIN marks and there is no evidence that the Respondent has ever been known by any name that includes the word "michelin" or any variant of it independently of the disputed domain name, the Complainant has made its prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to demonstrate the contrary, with the Complainant retaining the ultimate burden of proof. WIPO Overview 2.0, paragraph 2.1.
The Respondent appears to invoke paragraph 4(c)(i) of the Policy, which provides as a means of establishing a right or legitimate interest that "before any notice to you of the dispute, your [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."
Both Parties acknowledge that the disputed domain name has as yet been put to no use. The Respondent's unsupported general statement of "future business purpose" is at best a statement of intent. The Policy provision requires more than intent – actual use, admittedly not present; or demonstrable preparations. There is no allegation, much less demonstration, of any preparations.
The Complainant succeeds under paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that each of registration and use of the disputed domain name in bad faith be proven. As with the other requirements of paragraph 4(a), the Complainant bears the burden of proof by a preponderance of the evidence.
The Complainant's three approaches to bad faith do not resolve this case. The first two, summarized in Sections 5. A.1 and 2 above, overstate and oversimplify Policy practice. Unlike trademark infringement in the United States of America, normally the Complainant must demonstrate actual knowledge of the marks and a demonstrated intent to take advantage of their renown (targeting) to prove bad faith; "should have known," which the Complainant pleads, is usually not enough. WIPO Overview 2.0, paragraph 3.4. Similarly, only in special circumstances, usually involving those whose business is trafficking in domain names, have UDRP panels required a trademark or Internet search of domain name registrants. Nothing in the record indicates that the Respondent is a domainer who might be subject to an additional duty to investigate.
The Complainant's third argument, that failure to respond to a cease-and-desist letter demonstrates bad faith, is both oversimplification and not entirely accurate. At most some UDRP panels that have cited such silence as evidence of bad faith in addition to other, more direct grounds for their findings. Many UDRP panels have ignored a failure to respond to a cease-and-desist letter, see Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653, and some have held flatly that it does not by itself make out bad faith. Bright Horizons Family Solutions Inc., Allmont Limited, Bright Horizons Limited Partnership and Bright Horizons Family Solutions Ltd. v. Vertical Axis, Inc, WIPO Case No. D2007-0795. The Policy and Rules do not oblige a respondent to prove anything; the Complainant bears the burden of proof on all Policy elements. Not infrequently a respondent that has defaulted prevails in a Policy proceeding.
Bad faith may be proven inferentially, and the abbreviated procedures intended by the Policy and Rules often make this necessary. Lacking discovery or an opportunity at cross-examination, a complainant often cannot obtain evidence of the respondent's motive. See Net2phone Inc v. Delta Three Inc., WIPO Case No. D2007-0644 (describing means of inferential proof); Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383. The Complainant here has furnished just about everything likely to be in its possession or control to demonstrate circumstances making actual knowledge possible, even probable: evidence of a substantial retail and broader presence in the Respondent's home country; a venerable retail brand generally well known around the world; a distinctive mark1 recognized by other UDRP panels as famous; very substantial worldwide sales. The Respondent contests none of this evidence. Even without the Respondent's concession referred to in Section 5. B.1 above, such evidence might very well suffice for the necessary inference of bad faith.
The concession makes that inference unnecessary. The Respondent's two explanations do not overcome the fact that the Respondent was aware of the Complainant and its marks at registration of the disputed domain name. The Respondent's claim of combining the name of a friend or a common Spanish word and a common Chinese surname is unsupported by evidence – and such evidence, if it exists, is plainly within the Respondent's control. The Respondent's belief that not infringing the Complainant's marks because it intends to use the disputed domain name for training, a field not within the Complainant's trademark rights, fails for two reasons. First it is factually of doubtful validity. The Complainant included with the Complaint ample evidence of use of its MICHELIN marks for training, to the point of establishing unregistered trademark rights for that purpose.2 Second, the Respondent's belief, even if truly held, is at odds with settled Policy precedent. A mistaken view of Policy precedent – a complainant that believes that constructive knowledge of a mark suffices under paragraph 4(a)(iii) or a respondent that believes that registration of a common word or phrase is never in bad faith, for example – does not give its assertion one drop of additional force.
In the circumstances of this case, non-use of the disputed domain name constitutes use in bad faith for Policy purposes under the "warehousing" doctrine first set out in Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and consistently followed since. WIPO Overview 2.0, paragraph 3.2. As in that case, "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate." The Complainant has proven bad faith in registration and use.
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.training> be transferred to the Complainant.
Richard G. Lyon
Date: February 10, 2017
1 MICHELIN was the surname of the brothers who founded the company in the nineteenth century, but by now could fairly be called distinctive.
2 Among other things the Complaint and its annexes include proof of a training center known around the world and other training activities and services.