WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Michelin Recherche et Technique S.A. v. Nguyen Thanh Trieu, Cong Ty Tnhh Thuong Mai Vo Xe Trieu Hai
Case No. D2018-0376
1. The Parties
The Complainant is Michelin Recherche et Technique S.A. of Granges-Pacco, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Nguyen Thanh Trieu, Cong Ty Tnhh Thuong Mai Vo Xe Trieu Hai of Ho Chi Minh, Viet Nam.
2. The Domain Names and Registrar
The disputed domain names <lopxebfgoodrich.com> and <voxebfgoodrich.com> (hereinafter “Domain Names”) are registered with Nhan Hoa Software Company Ltd. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2018. On February 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 6, 2018, 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.
Pursuant to the Complaint submitted in English and the registrar verification dated March 6, 2018 stating that Vietnamese is the language of the registration agreement of the Domain Names, on March 8, 2018, the Center sent a request in English and Vietnamese for the Parties to submit their comments on the language of the proceeding. On March 9, 2018, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 March 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2017.
The Center appointed Ellen B Shankman as the sole panelist in this matter on April 17, 2018. 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 dates of the Domain Names’ registrations were confirmed by the Registrar to be October 1, 2016.
The trademark BF GOODRICH serves as a primary mark of the Complainant and is protected as a registered trademark in multiple jurisdictions world-wide, including in France and in Viet Nam. The Complainant provided evidence of multiple trademark registrations for the mark BFGOODRICH including, inter alia, French Registration No. 3447866 (registered on August 29, 2006) and Vietnamese Trademark No. 4-0073601-000 (registered on July 12, 2006) both for wordmarks that predate the date of the Domain Names’ registrations for a variety of goods related to tires. The Complainant holds a number of domain names involving the term “bfgoodrich”, including, inter alia, <bfgoodrich.com>.
The Panel also conducted an independent search to determine that each of the Domain Names resolves to a page with an error message saying the “site cannot be reached”, and the website for each currently appears to be inactive.
The Complainant also provided evidence of a cease-and-desist letter and multiple attempts to follow up that it sent to the Respondent on or about February 27, 2017 prior to filing this UDRP action, to which the Respondent did not reply.
Since the Respondent did not respond to this Complaint as well as the non-response to the cease-and-desist letter, the facts regarding the use and fame of the Complainant’s mark as well as the English translation of the Vietnamese terms are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties’ Contentions
The Complainant in this administrative proceeding is Michelin Recherche et Technique S.A., of which the registered office is located in Granges-Paccot, Switzerland. Michelin, the leading tire company, is dedicated to enhancing its clients’ mobility, sustainably; designing and distributing the most suitable tires, services and solutions for its clients’ needs; providing digital services, maps and guides to help enrich trips and travels and make them unique experiences; and developing high-technology materials that serve the mobility industry.
Headquartered in Clermont-Ferrand, France, Michelin is present in 170 countries, has 111,700 employees and operates 68 production facilities in 17 countries which together produced 187 million tires in 2016. The Group has a Technology Center in charge of research, development and process engineering, with operations in Europe, North America and Asia.
Since it was first founded, the BFGOODRICH brand has made a large number of major breakthroughs in the tire sector. The brand also forged a solid reputation in off-road disciplines, including victory in the Baja 1000 in 1972. The BFGOODRICH motorsport record now features no fewer than 200 titles in the various US off-road championships, 24 wins in the Baja 1000, 10 consecutive victories in the FIA All-Terrain Rally World Cup, and others.
The Complainant alleges that it first became aware of the Respondent’s registration of the Domain Names <lopxebfgoodrich.com> and <voxebfgoodrich.com> which reproduce its trademark BFGOODRICH with the adjunction of the Vietnamese terms “lop xe” and “vo xe” meaning tires in English. Previously, the Domain Names <lopxebfgoodrich.com> and <voxebfgoodrich.com> resolved to a Vietnamese webpage dedicated to tires as well as car accessories and notably those of the Complainant and its competitors. Presently, the Domain Names resolve to inactive pages.
The Complaint alleges that on November 21, 2016, the Complainant sent a notification letter to the Respondent via registered letter and e-mail on the basis of its trademark rights related to the domain names <bfgoodrich.com.vn>, <lopxebfgoodrich.com>, <lopxebfgoodrich.net>, <voxebfgoodrich.com> and <voxebfgoodrich.net>. The notification letter requested the Respondent to transfer the domain names to the Complainant free of charge.
On November 23, 2016, the Respondent replied in English that it will respond after having checked the information. Shortly after the Respondent’s response, the websites of the Domain Names were deactivated. As the Respondent never reverted to the Complainant despite several reminders, the Complainant sent a cease-and-desist letter on February 27, 2017. No response was obtained despite several reminders.
Pursuant to recent investigations made by the Complainant, it has been revealed that the domain names <bfgoodrich.com.vn>, <lopxebfgoodrich.com> and <voxebfgoodrich.com> have been renewed while the remaining domain names are no longer registered.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark BFGOODRICH in respect of tires and other goods. The Domain Names are confusingly similar to the trademark owned by the Complainant. The addition of the terms/ generic or descriptive words in Vietnamese for “tires” to the trademark does not prevent a finding of confusing similarity. Therefore, the Domain Names <lopxebfgoodrich.com> and <voxebfgoodrich.com> could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith. That continued use of the Domain Names would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services, and constitutes opportunistic bad faith. Thus, the Respondent’s registrations and use of the Domain Names constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) That the Domain Names have been registered and used in bad faith.
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 proceedings”.
The language of the Registration Agreement in relation to the Domain Names has been confirmed to be in Vietnamese. The Complaint was filed in English, with reasonable factors claimed for why the proceedings should proceed in English. The Respondent failed to submit any formal Response, but in an email sent acknowledging receipt of the cease-and-desist email the Respondent replied in English. The Domain Names are in Latin characters. The Center sent multiple communications to the Respondent of the proceedings in Vietnamese and provided the Respondent with a number of chances to object to the proceedings being conducted in English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
In light of the circumstances, the Panel finds the arguments made by the Complainant to be persuasive, and together with the multiple communications sent by the Center in Vietnamese providing the Respondent with a number of chances to object to the proceedings being conducted in English, the Panel finds under Paragraph 11(a) of the Rules that it is fair to continue these proceedings and to issue the Decision in English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for BFGOODRICH and the Domain Names are confusingly similar to Complainant’s trademark BFGOODRICH, which may be considered well known. This holding is consistent with previous panels that have considered the trademark to be “well known” or “famous”, see Compagnie Générale des Etablissements Michelin, Michelin Recherche et Technique S.A. v. Kaheng Cheng, WIPO Case No. D2017-0233; Michelin Recherche et Technique S.A. v. PrivacyProtect.org / DH5740243, DH5740243, WIPO Case No. D2013-1209; Michelin Recherche et Technique S.A. v. EAC International CO., Limited, WIPO Case No. D2013-1210.
Further, the Panel finds that the addition of the generic and/or descriptive term “tires” in Vietnamese to the Domain Names does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark. See Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 (“Generally, a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.”, which in that case included the term ‘travel’ added to the well-known mark Nike). See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names and that they are not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Names.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, together with the evidence that initially the Domain Names resolved to advertisements for tires and car accessories of the Complainant and also of the Complainant’s competitors, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Names with full knowledge of the Complainant’s trademark BFGOODRICH and uses them for the purpose of misleading and diverting Internet traffic and opportunistic bad faith. That the websites were taken down and there is continued passive holding of the Domain Names does not undermine the Panel’s finding that the Domain Names were registered and are being used in bad faith.
In light of the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Names with apparent full knowledge of and the Respondent’s reply to the Complainant’s request for voluntary transfer of the Domain Names, as well as the other factors identified above, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names 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 Domain Names <lopxebfgoodrich.com> and <voxebfgoodrich.com> be transferred to the Complainant.
Ellen B Shankman
Date: April 26, 2018