WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. 王凡, Wang Fan

Case No. D2018-0470

1. The Parties

The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.

The Respondent is 王凡, Wang Fan of Jinan, Shandong, China.

2. The Domain Names and Registrar

The disputed domain names <michelin.red> and <michelin.work> are 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 March 1, 2018. On March 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 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. On March 6, 2018, the Center sent an email in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on March 8, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.

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 in English and Chinese of the Complaint, and the proceedings commenced on March 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2018.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on April 9, 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 Complainant is the leading tire company and headquartered in Clermont-Ferrand, France. It is present in 170 countries including China, has 111,700 employees and operates 68 production facilities in 17 countries. The Panel further finds that the Complainant operates a website in Chinese language “www.michelin.com.cn”.

The word “Michelin” is the trade name of the Complainant. The Complainant also owns numerous trademark registrations (as well as service mark registrations) for MICHELIN in many jurisdictions including the following registrations:

- International trademark MICHELIN No. 492879, registered on May 10, 1985, covering goods in class 12;

- International trademark MICHELIN No. 574577, designating China, registered on May 6, 1991, duly renewed, covering goods in classes 6, 16, 18, 21 and 25;

- European Trade Mark MICHELIN No. 001791243, registered on October 24, 2001, covering goods in classes 6, 7, 12, 17 and 28;

- International trademark MICHELIN No. 1254506, registered on December 10, 2014, covering goods and services in classes 9, 35, 38, 39, 41 and 42;

- European Trade Mark MICHELIN No. 013558333, registered on June 1, 2015, covering services in classes 35, 36, 39, 40, 41, 42, 44, 45.

The Complainant and/or its affiliates also own a number of domain names which contain its trademark MICHELIN. Some of the domain names are listed below:

- <michelin.com> registered on December 1, 1993;

- <michelin.cn> registered on March 18, 2003; and

- <michelin.fr> registered on July 21, 2008.

The disputed domain names <michelin.red> and <michelin.work> were registered on November 20, 2017 by the Respondent and both resolve to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain names are identical or confusingly similar to the Complainant’s trademark MICHELIN because the disputed domain names <michelin.red> and <michelin.work> entirely reproduce the Complainant’s trademark and trade name MICHELIN. Accordingly, by registering the disputed domain names, the Respondent created a likelihood of confusion with the Complainant’s trademark.

The Complainant contends that the Respondent who has registered both the disputed domain names, has no rights or legitimate interests in the disputed domain names because: (i) the Respondent is not affiliated with the Complainant in any way and has not been authorized or licensed by the Complainant to use and register its trademark or to seek registration of any domain name incorporating the aforesaid trademark; (ii) the Respondent has no prior rights or legitimate interests in the disputed domain names as the MICHELIN trademarks have been registered by the Complainant long before the registration of the disputed domain names; (iii) the disputed domain names resolve to inactive pages and the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain names with a bona fide offering of goods or services, which further proves that the Respondent lacks rights or legitimate interests in respect to the disputed domain names. The Complainant did contact the Respondent but did not arrive at any meaningful discussions.

The Complainant contends that the disputed domain names were registered and are being used in bad faith because: (i) the trademark MICHELIN is well-known internationally including in China and given the reputation of the trademark, it can be inferred that the Respondent registered the disputed domain names in bad faith; (ii) the Respondent seems to be involved in a pattern of some cybersquatting activity as he is associated with more than 100 domain names like <huicaing.cn>, <jabra.net.cn> and <shazam.vip> which are also inactive; (iii) an inference to be drawn from the Respondent’s operations is that he is trying to benefit from the fame of the Complainant’s trademark.

The Complainant has requested that the disputed domain names be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding and others

The Complaint was filed in the English language. On March 6, 2018, the Center sent an email in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on March 8, 2018. The Respondent did not respond to the Center’s notification by the specified due date. Subsequently, the Center formally notified the Respondent in both English and Chinese of the Complaint, and the proceedings commenced on March 12, 2018. The Respondent again did not respond to the Complaint.

Pursuant to paragraph 11(a) of the Rules, the panel is given the authority to determine a language of proceeding other than the language of the registration agreement, taking into account the circumstances of every individual case.

In view of the fact that the Center notified the Complaint to the Respondent in both English and Chinese, and the lack of response of the Respondent (such that there will be no prejudice to the Respondent, who could have put forward arguments, and was provided an opportunity to do so in English or Chinese), this decision is herein made in English.

The Panel also agrees that the two disputed domain name being hold by the same Respondent can be dealt with under the same complaint.

6.2. Substantive Issues

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be transferred or cancelled:

(i) the disputed domain names registered by the Respondent are 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 disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

In accordance with the relevant provisions of the Policy and on the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has established its rights in the trademark MICHELIN and the registration of which was long before the date of registration of the disputed domain names on November 20, 2017.

The disputed domain names incorporate the Complainant’s registered trademark MICHELIN in its entirety. Accordingly, this Panel finds that the disputed domain names are confusingly similar if not identical to the Complainant’s trademark MICHELIN.

B. Rights or Legitimate Interests

The Complainant has not granted any license or otherwise permitted the Respondent to use the Complainant’s trademark MICHELIN or to apply for any domain name incorporating the Complainant’s trademark. Further, the disputed domain names are not active so obviously there is not any actual bona fide offering of goods and services or legitimate use. The Respondent has not replied to the Complaint so there is no evidence before the Panel showing the Respondent is otherwise entitled to any rights or legitimate interests in the disputed domain names. Accordingly, this Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant has demonstrated the well-known status of its trademark MICHELIN. The Complainant has also illustrated its presence and business operations in China. This Panel considers that it is very unlikely that the Respondent selected the word “michelin” to form the dominant part of disputed domain names coincidently. The Panel further considers that the Respondent, having registered more than 100 domain names, some of which are known trademarks, the Respondent has engaged itself in pattern of cybersquatting behaviour.

Furthermore, although the disputed domain names do not resolve to any active websites the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith.

Finally, the Respondent has failed to respond to the Complaint and provide any evidence to establish its rights or legitimate interests in these disputed domain names.

For all these reasons, this Panel is satisfied that the disputed domain names have been registered and used in bad faith.

7. Decision

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 names <michelin.red> and <michelin.work> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: April 23, 2018