WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Gui He Xing
Case No. D2018-1446
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Gui He Xing of Zhengzhou, Henan, China.
2. The Domain Name and Registrar
The disputed domain name <michelincloud.com> is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on June 29, 2018. On June 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 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.
July 11, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On July 12, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on 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 July 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 8, 2018.
The Center appointed Jonathan Agmon as the sole panelist in this matter on August 14, 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 Compagnie Generale des Establissements Michelin, a well-known manufacturer of tires which also provides digital services such as maps and guides to help enrich trips and travels. The Complainant is headquartered in France however, is present in 170 countries worldwide and employs 111,700 people. The Complainant operates 68 production facilities in 17 countries.
The Complainant owns numerous MICHELIN trademark registrations among which are:
- International Trademark MICHELIN, No. 348615 registered on July 24, 1968.
- Chinese Trademark MICHELIN, No. 6167649 registered on January 7, 2010.
- Chinese Trademark MICHELIN, No. 9156074 registered on February 14, 2013.
- Chinese Trademark MICHELIN, No. 136402 registered on April 5, 1980.
In addition, the Complainant is the owner of several domain names, among others, <michelin.com> and <michelin.com.cn>.
The disputed domain name <michelincloud.com> was registered January 30, 2018. Currently the disputed domain name resolves to an inactive website.
5. Parties' Contentions
The Complainant argues that the disputed domain name is confusingly similar to the Complainant's registered mark MICHELIN since it contains the Complainant's mark in its entirety and states that an addition of a generic term as "cloud" does not negates the confusion of Internet users.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Complainant is the trademark owner and the Respondent is not affiliated with the Complainant in any way.
The Complainant also argued that the term "Michelin" has no meaning in the English language, and this indicates that the Respondent registered the disputed domain name to gain undue advantage of the Complainant's registered mark and notoriety.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith as it is impossible did not know or should have known about the Complainants' rights in the registered and well-known mark. In addition, the passive holding of a disputed domain name affiliated with a well-known mark has been considered use in bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
"(a) 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 proceeding."
The language of the Registration Agreement for the disputed domain name <michelincloud.com> is Chinese, as confirmed by the Registrar in its verification email to the Center of July 3, 2018.
The Complainant requested that the language of the proceeding be English.
The Respondent did not respond.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).
The Panel finds that in the present case regarding the disputed domain name <michelincloud.com>, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Vietnamese language;
(iii) The Respondent did not object to the Complainant's request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding for the disputed domain name.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of a number trademarks registered for the MICHELIN mark. The disputed domain name is <michelincloud.com> is comprised of the word "michelin", the generic term "cloud" and the generic Top-Level-Domain ("gTLD") ".com".
The Complainant is well known under the Michelin brand which enjoys an international reputation (See Compagnie Generale des Establissements Michelin v. WhoisGuard Inc., WhoisGuard Protect/ Saad Zqeem, Caramel Tech Studios, WIPO Case No. D2017-0234).
It is well established that if the relevant trademark is recognizable within the disputed domain name, the addition of other terms, such as generic terms, as shown in these circumstances, or other, would not prevent a finding of confusing similarity under the first element (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8; Accor v. Serdar Ceylan, WIPO Case No. D2011-2231). Under the circumstances of the present case, the term "cloud" is a generic term as it may apply to various storage services offered on online. (See International Business Machines Corporation v. Libia Sanchez, SAS / Jairo Sandoval, WIPO Case No. D2015-0038; Virgin Enterprises Limited v. Ervin Remus Radosavlevici, Virgin Media Cloud, WIPO Case No. D2018-0248: "Cloud-based services are a common technical feature."). Therefore this panel finds that the addition of the generic term "cloud" does not prevent a finding that the disputed domain name is confusingly similar to the Complainant's mark.
Prior panels have established that the addition of the gTLD ".com" to the disputed domain name does not avoid confusing similarity (see Accor v. Noldc Inc., WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L'Oréal v Tina Smith, WIPO Case No. 2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877). Therefore, the gTLD ".com" is without significance in the present case since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview 3.0, section 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard. In previous decisions, UDRP panels found that in the absence of any license or permission from the complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010‑0138). Due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trademarks or a variation thereof, and that the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademarks. According to the evidence filed by the Complainant, the Complainant has owned a registration for the MICHELIN trademark since the year 1968. In view of the evidence filed by the Complainant, and the widespread use of the MICHELIN trademarks, it is suggestive of the Respondent's bad faith in these particular circumstances, i.e., registration of the disputed domain name incorporating that trademark, owned by the Complainant, (see The Nasdaq Stock Market, Inc. v. H. Pouran, WIPO Case No. D2002-0770; Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735; LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494).
In the present case, the disputed domain name is inactive. It has long been held that under certain circumstances the non-use of a disputed domain name would not prevent a finding of bad faith registration and use under the Policy. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The various factors that can be taken into account include the (i) the degree of distinctiveness or reputation of the complainant's mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put (WIPO Overview 3.0, section 3.3).
The Complainant provided evidence showing that it has substantial reputation and is associated with the MICHELIN trademark for the services it provides. The degree of distinctiveness of the MICHELIN trademark is high. Under the particular circumstances of the present case the reputation of the mark and high degree of distinctiveness are an indication of bad faith registration and use of the disputed domain name by the Respondent.
In addition, the Respondent failed to provide an answer which would provide any evidence of actual or contemplated good-faith use. This failure to provide an explanation to his choice of domain name is especially of import when the disputed domain name comprises in whole the well-known and distinctive trademark of the Complainant. The failure of the Respondent to provide an answer is an additional indication of bad faith registration and use of the disputed domain name.
The Complainant also sent the Respondent a Cease and Desist letter prior to initiating these proceedings. The Respondent ignored and never replied to the Complainant's letter. The failure to respond to a cease and desist letter is another indication of the Respondent bad faith registration and use.
Finally, the Panel finds that in the present case, given the Respondent's behavior and failure to respond to the Complaint, that there is no plausible good faith use that the Respondent may put the disputed domain name to.
Based on the evidence in record, including the registration of the disputed domain name long after the registration of the Complainant's mark, the confusing similarity between the disputed domain name and the Complainant's mark and the Respondent's passive holding of the disputed domain name in these circumstances the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 <michelincloud.com> be transferred to the Complainant.
Date: August 26, 2018