WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Vo Thanh Hai
Case No. D2017-0043
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Vo Thanh Hai of Ho Chi Minh City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <michelinthai.com> is registered with P.A. Viet Nam Company Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2017. 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 January 15, 2017, 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.
The Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain name is Vietnamese. On January 17, 2017, the Center sent a language of proceeding communication in both Vietnamese and English to the Parties. On the same date, the Complainant confirmed its request for English to be the language of proceeding already included in the Complaint. The Respondent did not reply to the Center’s notification or the Complainant’s confirmation.
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 English and Vietnamese, and the proceedings commenced on January 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2017.
The Center appointed Alistair Payne as the sole panelist in this matter on February 17, 2017. 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 leading tyre company that also offers electronic mobility support services on <viamichelin.com> and publishes travel guides, hotel and restaurant guides, maps and road atlases. The Complainant has operations worldwide including in Europe, North America and Asia. It commercialises its products and services in Viet Nam via a network of dealers and owns several websites such as “www.michelin.vn” which is dedicated to the Vietnamese market.
The Complainant owns numerous trade mark registrations worldwide for its MICHELIN mark including International trade mark MICHELIN No. 348615, dated July 24, 1968, duly renewed, designating Viet Nam amongst other countries. The Complainant also operates various websites to promote its goods and services at <michelin.com>, <michelin.vn> and <michelin.com.vn>.
The Respondent registered the disputed domain name on August 20, 2016. The disputed domain name resolves to a website that offers tyres for sale that are described as MICHELIN tyres, and includes a mark and logo of the Complainant’s competitor.
5. Parties’ Contentions
The Complainant submits that its MICHELIN mark is wholly contained in the disputed domain name and is truly well known or famous mark. It says that following numerous prior panel decisions the unauthorised use of a well-known mark in a domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s mark. In any event, says the Complainant, in this case the addition of the generic term “thai” does not distinguish the disputed domain name and only heightens the likelihood of confusion since Internet users might believe that the disputed domain name makes direct reference to the Complainant’s products in Thailand, where the Complainant is also present.
The Complainant further submits that the Respondent is not affiliated with Complainant in any way nor has he been authorized by the Complainant to use and register its trade mark, or to seek registration of any domain name incorporating that mark. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. The Complainant also notes that the registration of its MICHELIN trade marks preceded the registration of the disputed domain name for years.
It is noted by the Complainant that the disputed domain name resolves to a website in Vietnamese entitled “Michelin Thai” dedicated to tyres. The trade mark of the Complainant’s competitor is displayed on the website, namely “CARSHOEZ + LOGO” and all the links to social networks at the bottom of the page direct to several pages without any relation to a company entitled Michelin Thai or to any physical address for that company. The Complainant concludes that the website at the disputed domain name is a fake one and that this is not bona fide or legitimate use of the disputed domain name. The Complainant also notes in this regard that the Respondent never responded to the Complainant’s cease and desist letters which the Complainant says is further evidence of the Respondent’s lack of bona fides.
As far as registration and use in bad faith is concerned the Complainant submits that in view of the degree of renown attaching to the MICHELIN mark and the ubiquitous nature of its brand internationally and on the Internet, including from its operations in Viet Nam and Thailand, it is implausible that the Respondent was unaware of the Complainant’s rights in the MICHELIN mark when it registered the disputed domain name. The Complainant submits that this amounts to a case of opportunistic bad faith by the Respondent and that the Respondent either did or should have known of the Complainant’s mark before it registered the disputed domain name.
The Complainant notes as set out above that the disputed domain name resolves to a website in Vietnamese entitled “Michelin Thai” dedicated to tyres and which features a competitor’s trade mark. Even if it is not possible for Internet users to buy tyres at this website, the Complainant submits that the offer or advertising of the same products as the Complainant indicates that the Respondent is seeking to take advantage of this goodwill and reputation by creating an association or commercial link between the Parties, in order to redirect customers from the Complainant to its own website that reproduces the Complainant’s well-known MICHELIN trade mark.
In addition says the Complainant it is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trade mark in the disputed domain name and the Complainant notes again that the Respondent failed to respond to its cease and desist letters prior to filing this Complaint. This says the Complainant all amounts to evidence of the Respondent’s registration and use of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Although the language of the registration agreement is in Vietnamese, the Complainant has made a submission that these proceedings should be carried on in English on the basis that the Complainant does not speak Vietnamese and should not have to be put to the expense and difficulty of handling the dispute through translators. In addition the Complainant points out that the disputed domain name incorporates the word “thai” which is in the English language and not in Vietnamese. This says the Complainant suggests that the Respondent is familiar with the English language. The Panel also notes the use of English words and phrases at the website at the disputed domain name.
The Panel will in this case accept the Complainant’s submission and order that these proceedings be held in English. However the Panel notes that its decision is equally borne out of expediency as much as the Respondent’s failure to contest the Complainant’s submissions and that there is no hard and fast rule that just because it suits one party, a language other than the language of the registration agreement should be the language of the proceedings and this is particularly so where the Complainant is a multinational company like the Complainant that operates in the countries concerned.
A. Identical or Confusingly Similar
The Complainant owns the well reputed and highly distinctive MICHELIN mark and has demonstrated that it owns registered trade mark rights for its mark worldwide and in particular International registration No. 348615 as set out above. The disputed domain name only differs from this mark by the addition of the generic word “thai” which on a side-by-side comparison does not distinguish the disputed domain name. In fact it only serves to reinforce the conclusion that the disputed domain name has an association with or is part of the Complainant’s business based in Thailand. For these reasons the Panel finds that the disputed domain name is confusingly similar to the Complainant’s MICHELIN mark for purposes of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that it is not affiliated with the Complainant in any way and nor has he been authorized by the Complainant to use and register its trade mark, or to seek registration of any domain name incorporating that mark. The Complainant maintains that the Respondent has no prior rights or legitimate interests in the disputed domain name and is using the disputed domain name to resolve to a fake website that features a competitor’s trade mark.
Considering the degree of fame and repute attributable to the Complainant’s MICHELIN mark, the Complainant’s submissions as set out above and the manner in which the Respondent appears to be using the disputed domain name as further described under Section 6.C below, the Panel finds that the Complainant has made out a prima facie case under this element of the Policy. If and to the extent the Respondent may be considered to be a reseller, the Panel notes that the Complainant has shown that the website under the disputed domain name features the Complainant’s mark alongside a competitor’s mark and logo. It appears that the Respondent is using the website to sell both the Complainant’s products and products that compete with the Complainant. Such use does not amount to a bona fide offering of goods or services.
The Panel finds that the Complaint succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered on August 20, 2016 at a point in time when the Complainant’s mark was clearly well known worldwide, including in Viet Nam. The Complainant has a developed Vietnamese distribution network and its MICHELIN mark is both distinctive and ubiquitous. As noted earlier, the disputed domain name wholly incorporates the Complainant’s mark and the Panel finds that in these circumstances the Respondent must have known about the Complainant’s mark when he registered the disputed domain name. As the disputed domain name includes the geographic term “thai” and resolves to a competitor’s website there is a clear inference to be drawn that the Respondent registered the disputed domain name in bad faith.
The website to which the disputed domain name resolves advertises tyres for sale that are described as MICHELIN tyres and includes a competitor’s mark and logo.
Although it is not immediately clear to the Panel that this is necessarily a fake website, it finds that it is clear that the requirements of paragraph 4(b)(iv) of the Policy have been made out, namely that the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s failure to respond to the Complainant’s agents’ cease and desist letter only reinforces the Panel’s finding that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complaint succeeds under the third element 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 <michelinthai.com> be transferred to the Complainant.
Date: March 3, 2017