WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Le Van Dong
Case No. D2017-2101
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin, of Clermont-Ferrand, France, represented by Dreyfus & Associés, France.
The Respondent is Le Van Dong of Ha Noi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <michelinchinhhang.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 October 27, 2017. On October 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 October 31, 2017, the Center sent an email communication to the Parties in both English and Vietnamese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding as submitted in the Complaint. The Respondent did not reply to the Center's communication regarding the language of the proceeding or the Complainant's submission.
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 November 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 5, 2017.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 11, 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, headquartered in France, manufactures vehicle tyres, aircraft tyres and other automotive products that are sold internationally. The Complainant is also well known for the Michelin Guide, which is a guide to restaurants of gastronomic excellence that has been running since 1900. The current scale of the Complainant is that it has marketing operations in more than 170 countries and had 111,700 employees as at the end of 2015. The Complainant has a strong presence in Asia and operates the Vietnamese website "www.michelin.vn/VN/vi/homepage".
The Complainant holds a number of trademarks of which the following are representative for this proceeding:
MICHELIN, International Trademark (including Viet Nam), registered July 24, 1968, registration number 348615, classes 1, 6, 7, 8, 9, 12, 16, 17, 20;
MICHELIN, International Trademark (including Viet Nam), registered May 10, 1985, registration number 492879, class 12.
The Complainant also owns the domain names <michelin.vn> registered on June 12, 2006, and <michelin.com> registered on December 1, 1993.
Nothing is known about the Respondent except for the contact details provided to the Registrar in connection with the registration of the disputed domain name, which was registered on December 6, 2016 and has resolved to a website selling tyres. The "chinh hang" component of the disputed domain name means "genuine" in English. A cease and desist letter sent by the Complainant to the Respondent on January 16, 2017, with subsequent reminders, was not replied to.
5. Parties' Contentions
The Complainant submits that the language of this proceeding should be English and that the Respondent has not asserted otherwise. The Registrar's website is in the Vietnamese language and the relevant registration agreement could not be found. Obtaining specialised translation services would be costly and would incur delay. The Complainant submits that the disputed domain name includes only Latin characters, which strongly suggest that the Respondent has knowledge of languages other than Vietnamese.
The Complainant states that it is the registrant of the trademarks listed in section 4 above and has produced copies of relevant online documentation.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The disputed domain name reproduces the Complainant's trademark in its entirety with the addition of "chinhhang". According to the Complainant's Google enquiry, "chính hãng" in Vietnamese means "genuine" in English. The addition of a generic term should be found not to avoid confusing similarity to the Complainant's trademark. The generic Top-Level Domain (gTLD) ".com" should be disregarded in the determination of confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no connection with the Complainant and has not been authorised to use the Complainant's trademark or to incorporate it into any domain name. The Respondent cannot claim any bona fide use or intended use of the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The website to which the disputed domain name resolves displays the Complainant's trademark together with pictures of tyres and a reproduction of the Complainant's "Bibendum" icon, being a representation of a man built of inflated inner tubes. Thus the Respondent was not plausibly unaware of Complainant at the time of registration of the disputed domain name. The Complainant submits that where a disputed domain name is so obviously connected with a well-known trademark, its use by someone with no connection to the trademark suggests opportunistic bad faith. Furthermore, the Respondent should have searched for the existence of the Complainant's trademark.
The Complainant says its cease, desist and transfer letter dated January 16, 2017, sent by email, was not replied to and the same letter sent by registered post was returned as undeliverable on grounds of an insufficient address. By providing an address that could not be contacted the Respondent was in breach of its registration agreement and this is further evidence of bad faith.
The Complainant has produced screen captures of the website to which the disputed domain has resolved and says its purpose is the sale of the Complainant's products without the Complainant's authorisation. The Complainant contends that the Respondent has intentionally and for commercial gain attempted to attract Internet users to the disputed domain name by confusion with the Complainant's trademark, constituting use of the disputed domain name in bad faith.
The Complainant has cited and appended a number of previous decisions under the Policy that it considers to support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Procedural Matters
Under paragraph 11(a) of the Rules, 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. In the present case, because the Registrar's website is in the Vietnamese language, the Complainant is uncertain as to the language of the Registration Agreement, but reasonably concludes that it is Vietnamese. The Registrar confirmed that the Registration Agreement was, in Vietnamese
The Complainant submitted its Complaint in English and requested that the language of the proceeding be English. The Center notified the commencement of the administrative proceeding in both English and Vietnamese. The Respondent has not responded and has not contested the request that the proceeding be in English. In these circumstances, taking into account the Respondent's default, and in accordance with paragraph 11(a) of the Rules, the Panel rules that the language of the proceeding shall be English.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith".
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
B. Identical or Confusingly Similar
The disputed domain name is <michelinchinhhang.com>, of which the gTLD ".com" may be disregarded in the determination of confusing similarity. What remains is "michelin", which is identical to the Complainant's trademark MICHELIN, with the term "chinhhang" appended. The Complainant has produced in evidence the result of a Google translation showing "chính hãng" in Vietnamese to mean "genuine" in English. The translation is not in contention and is accepted by the Panel. The nearest equivalent to "chính hãng" in unaccented characters and without a space, which is not permitted in a domain name, is "chinhhang", as appears in the disputed domain name. The Panel finds on the evidence that the disputed domain name is intended to mean literally "michelin genuine" and is confusingly similar to the Complainant's trademark MICHELIN. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has stated prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name, has no connection with the Complainant and has not been authorised to use the Complainant's trademark in any way. The Complainant says the Respondent cannot claim any bona fide use or intended use of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(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 made no showing in respect of paragraphs 4(c)(i), (ii) or (iii) of the Policy, or otherwise. The use or intended use of the disputed domain name, through the website to which it resolves, depicts the sale of tyres misleadingly under the Complainant's trademark without the Complainant's permission and cannot be held to be a bona fide offering of goods. There is no evidence to suggest that the Respondent could be commonly known by the disputed domain name and its use is evidently commercial. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
A screen capture of the website to which the disputed domain name resolved on October 23, 2017, produced in evidence, shows a page displaying the Complainant's trademark, logo, Bibendum, pictures of tyres, and the prominent heading "Michelin City Grip". The page has links to other pages named "Home page", "Tire number", "Gas tires", "Tapered tires" and "Why choose Michelin". A number of tyre models are displayed in pictures with prices in Vietnamese currency. Five agents or dealers are listed, and under the heading "GENUINE MICHELIN" is a contact address in Vietnam with telephone numbers and an email address commencing "michelinchinhhang", being the disputed domain name except for the gTLD ".com".
On the evidence, and on the balance of probabilities, the Panel finds the disputed domain name to have been used for the intended sale of goods for commercial gain, and to have been used with intent to attract Internet users to the corresponding website by confusion with the Complainant's trademark by creating the erroneous impression that the website and the products purveyed through it are endorsed by the Complainant. The Panel further finds, on the evidence and on the balance of probabilities, that the disputed domain name was registered for the bad faith purpose for which it has been used.
The Panel finds the Respondent's bad faith to have been compounded by its failure to reply to the Complainant's cease and desist letters sent by email (Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632). The Respondent's bad faith is found to have been further compounded by its provision of a physical mail address that was false or misleading to the extent that it could not be located for the delivery of registered mail (Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111).
Accordingly the Panel finds the disputed domain name to have been registered and used in bad faith under paragraph 4(a)(iii) 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 <michelinchinhhang.com> be transferred to the Complainant.
Clive N.A. Trotman
Date: December 21, 2017