WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Liu Jian Fu (刘建福), AceSub com (义乌乐野数码科技有限公司)
Case No. D2021-4061
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Tmark Conseils, France.
The Respondent is Liu Jian Fu (刘建福), AceSub com (义乌乐野数码科技有限公司), China.
2. The Domain Name and Registrar
The disputed domain name <goodrich.tech> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the following day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 10, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on December 13, 2021.
On December 10, 2021, the Center also transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 13, 2021, the Complainant confirmed its request that English be the language of the proceeding. On December 14, 2021, the Respondent submitted a request that Chinese be the language of the proceeding, together with arguments regarding the merits.
The Center verified that the Complaint together with the amended 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 December 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. The Respondent did not submit any further comments. On January 5, 2022, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Matthew Kennedy as the sole panelist in this matter on January 13, 2022. 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 tire producer. Its tire brands include “BFGoodrich”, which is composed of the initials and surname of Dr. Benjamin Franklin Goodrich, who created the brand in 1870. The Complainant owns multiple trademark registrations in multiple jurisdictions, including the following:
- United States of America trademark registration number 1087694 for BFGOODRICH in a fancy script, registered on March 21, 1978, specifying tires, tubes and tire repair materials in class 12; and
- Chinese trademark registration number 17635542 for BFGOODRICH, registered on September 28, 2016, specifying goods in classes 3, 6, 7, 8, 9, 12, 22 and 25.
The above trademark registrations remain current. The Complainant has also registered domain names, including <bfgoodrich.com> that it registered on August 15, 1996 and uses in connection with its worldwide website. Internet users who click on “China” on the homepage of that website are redirected to the Complainant’s Chinese website at “www.bfgoodrich.com.cn,” which prominently displays the BFGOODRICH mark and provides information about the Complainant and its products.
The Respondent is identified as both an individual and a company. The company name may be translated as “Yiwu Leye Digital Technology Co., Ltd”. The English business name listed in the Registrar’s WhoIs database (“AceSub com”) corresponds to the domain name of the Respondent’s email address.
The disputed domain name was registered on April 23, 2021. It resolves to a landing page displaying pay-per-click (“PPC”) links to websites related to tires, BF Goodrich, BF Goodrich tires, and aeronautics, among other things. The landing page also displays a notice that the disputed domain name is for sale for USD 600. Internet users who click on a hyperlink are redirected to a broker’s website where the disputed domain name is offered for sale for a minimum price of USD 500. Mail exchanger (“MX”) records provided by the Complainant indicate that the disputed domain name has been configured for use with an email server.
5. Parties’ Contentions
A. Complainant
The disputed domain name is confusingly similar to the Complainant’s BFGOODRICH mark. The generic Top-Level Domain (“gTLD”) suffix “.tech” is not fortuitous but rather aimed at referencing BFGoodrich tires, which have highly technological features. In any case, gTLD suffixes are generally disregarded in assessing confusing similarity with a trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent is commonly known by the name “Goodrich”. The disputed domain name resolves to a monetized parking page displaying PPC links, including for goods and services competitive with the Complainant’s products. The Complainant has not authorized any third party to identify itself to the public as BFGoodrich or Goodrich or to use the BFGOODRICH mark in a domain name.
The disputed domain name was registered and is being used in bad faith. Taking into consideration the protection and constant use by the Complainant of BFGOODRICH as a trademark and domain name worldwide, there is no chance of it having been registered by the Respondent by simple coincidence. The BFGOODRICH mark is very well known, including in China. The Respondent makes commercial use of the disputed domain name which almost incorporates the Complainant’s trademark by resolving to a parking page of commercial links relating to the tire industry. The parking page also displays a hyperlink to a broker’s website where the disputed domain name is offered for sale for USD 500. Further, an email server has been configured with the disputed domain name; it is hard to imagine any legitimate way in which such email would be used.
B. Respondent
The Respondent addressed the merits of this dispute in its email communication regarding the language of the proceeding. The Respondent alleges that it found the name “Goodrich” on a Chinese website for choosing English names and that it chose “Goodrich” for the disputed domain name because it is a common English name, which is both convenient and has a good meaning. The Respondent notes that a domain name identical to the Complainant’s mark (<bfgoodrich.tech>) is still available for registration and it submits that there is no reason why the Respondent would have registered the common English name “Goodrich” if he was attempting to suggest an association with “BFGoodrich”. Further, <goodrich.info> and <goodrich.org> are both offered for sale on the same broker’s website as the disputed domain name but the Complainant has not initiated an arbitration proceeding regarding either of those domain names. The Respondent questioned the Complainant’s intention in filing this Complaint.
6. Discussion and Findings
6.1 Preliminary Issue: 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 proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that English be the language of the proceeding. Its main arguments are that the disputed domain name contains only English words, including “tech” which is an abbreviation of “technology”, the disputed domain name resolves to a parking page displaying PPC links in French and it redirects to a broker’s website in English, and the Respondent’s email address includes the English word “sales” from which it is reasonable to infer that the Respondent understands English, whereas translating the Complaint into English would create considerable costs for the Complainant and unnecessarily delay the procedure.
The Respondent opposes the Complainant’s request and instead requests that Chinese be the language of the proceeding, which is the language of the Registration Agreement. Its main arguments are that it has no basic English reading ability; the Registrar’s registration platform is entirely in Chinese and provided a Chinese translation of the “.tech” extension; the Respondent found the “Goodrich” name on a Chinese website; the broker’s website also displays content in Chinese and the Respondent is not responsible for English content on that platform; and this proceeding has already imposed costs in terms of time and translation on the Respondent.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
The Panel observes that the Complaint in this proceeding was filed in English and the Respondent has sent its comments on the language of the proceeding, in which it also addressed the merits of the case, in Chinese. The Respondent’s email communication includes screenshots with certain items in English only; its company domain name is a combination of an English word and an English abbreviation; and its email username is in English. This evidence all gives rise to the inference that the Respondent is familiar with English. The Panel is familiar with both Chinese and English. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. At the same time, the Panel notes that both Parties have been able to present their respective views of the matter in dispute. Therefore, the Panel does not consider that accepting the original version of any document in the case file causes prejudice to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English, and that it will accept the communication filed in Chinese without a translation.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence presented, the Panel finds that the Complainant has rights in the BFGOODRICH mark.
The disputed domain name incorporates the surname “goodrich”, which is the dominant part of the Complainant’s BFGOODRICH mark, omitting only the initials “bf”. The dominant element of the BFGOODRICH mark is clearly recognizable within the disputed domain name.1
The only additional element in the disputed domain name is a gTLD suffix (“.tech”) which, as a technical requirement of domain name registration, may be disregarded in the comparison between the disputed domain name and the Complainant’s mark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With regard to the first and third circumstances set out above, the disputed domain name is parked at a landing page that displays PPC links to websites, some of which promote the same type of goods that the Complainant sells (i.e., tires), including the Complainant’s and competitors’ products. This use is for the commercial gain of the Respondent, if it is paid to direct traffic to the linked websites, or the operators of the linked websites, or both. The landing page also offers the disputed domain name for sale. It is clear from the Complainant’s submission that it has not authorized the Respondent to register and use the disputed domain name. The Panel does not consider these to be uses of the disputed domain name in connection with a bona fide offering of goods or services as envisaged by paragraph 4(c)(i) of the Policy, nor are they a legitimate noncommercial or fair use of the disputed domain name as envisaged by paragraph 4(c)(iii) of the Policy.
The Respondent’s names are listed in the Registrar’s WhoIs database as “Liu Jian Fu (刘建福)” and “AceSub com (义乌乐野数码科技有限公司)” (the latter meaning “Yiwu Leye Digital Technology Co., Ltd”), not “goodrich”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy.
Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the Respondent’s arguments, it submits that it chose “Goodrich” on a website for choosing English names. However, it does not allege that Goodrich is its own name as an individual, business or other organization nor that it is known as “Goodrich”. Nor does the Respondent demonstrate any preparations to use the disputed domain name in any other way than it does as at present. Accordingly, the Respondent has failed to rebut the Complainant’s prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The first and fourth of these are as follows:
(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the [disputed] 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.
As regards registration, the disputed domain name was registered in 2021, many years after the registration of the BFGOODRICH mark, including in China, where the Respondent is resident. The disputed domain name incorporates the surname in the mark (“Goodrich”) but omits the initials (“bf”). The Panel notes that the Complainant’s BFGOODRICH mark has been used with respect to tires for over 150 years and that it has a Chinese website. The Panel notes that the top result of an Internet search for “Goodrich” in the Baidu search engine relates to the Complainant’s BFGOODRICH mark.2 The disputed domain name resolves to a website displaying PPC links to websites related to tires, including the Complainant’s and competitors’ products, among other things. In these circumstances, the Panel considers, on the balance of probabilities, that the Respondent knew, or should have known, of the BFGOODRICH mark at the time that it registered the disputed domain name.
The Respondent provides an alternative explanation for its registration of the disputed domain name. It demonstrates that “Goodrich” appears on a Chinese website for choosing English names, and it alleges that it chose that name because it was a common English name, which is convenient and has a good meaning. However, leaving aside the fact that the website does not state that “Goodrich” is a common name and does not provide any meaning for it (offering only two phonetic-based transliterations), the Respondent’s explanation implies that the similarity between the disputed domain name and the BFGOODRICH mark is a coincidence. Given the strong reputation of the BFGOODRICH mark in the tire sector due to its longstanding and widespread use, including in China, the Panel finds such a coincidence to be improbable. The Respondent also argues that it could have registered <bfgoodrich.tech> if it had wanted to target the BFGOODRICH mark. However, the Panel notes that the website to which the disputed domain name resolves displayed links to websites related to tires, to BF Goodrich, and to BF Goodrich tires. While it also displays links to websites related to aeronautics, with which the GOODRICH mark may be used, and to which the gTLD suffix “.tech” appears particularly relevant, in the circumstances of this case that does not imply that the Respondent did not know, or should not have known, of the BFGOODRICH mark at the time that it registered the disputed domain name.
As regards use, the disputed domain name is parked at a landing page that offers it for sale for USD 600. The disputed domain name is also offered for sale for at least USD 500 on a broker’s website to which the landing page is linked. The Panel considers this price likely in excess of the Respondent’s out-of-pocket expenses directly related to the disputed domain name, which has merely been registered and parked. The Respondent argues that it is not responsible for the content of the broker’s website but the Panel notes that the landing page itself offers the disputed domain name for sale for USD 600 and, in any case, the Respondent makes no mention of any steps that it has taken to remove the disputed domain name, or the sale price, from the broker’s website. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.5. In these circumstances, the Panel finds that the Respondent has registered the disputed domain name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name within the terms of paragraph 4(b)(i) of the Policy.
Moreover, the landing page at which the disputed domain name is parked displays PPC links to websites related to tires, including the Complainant’s and competitors’ products, among other things. This use is for the commercial gain of the Respondent, if it is paid to direct traffic to the linked websites, or the operators of the linked websites, or both. Accordingly, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 within the terms of paragraph 4(b)(iv) of the Policy.
The Panel takes note that the disputed domain name is configured for use with email. This circumstance does not alter the Panel’s conclusions.
The Respondent also alleges that the Complainant has not initiated proceedings under the Policy regarding two other Goodrich domain names that are offered for sale on the same broker’s website as the disputed domain name. However, the Panel notes that there is no requirement to file complaints simultaneously against all identical domain names and that a failure to enforce rights against third parties does not constitute a waiver of rights vis-à-vis the Respondent. In any case, it is not clear from the record of this proceeding whether the Complainant is currently taking any action regarding other Goodrich domain names or not.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
D. Reverse Domain Name Hijacking
The Respondent appears to imply that the Complaint was brought in bad faith. Considering that the Complainant has successfully established three elements under the Policy, the Panel finds that the Complaint was not brought 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 name <goodrich.tech> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: January 27, 2022
1 The Panel takes note that the operational element of the disputed domain name also corresponds to GOODRICH trademarks owned by third parties, including United States of America trademark registration number 2896050 for GOODRICH and device, specifying certain systems and components for aerospace vehicles in class 12, held by Goodrich Corporation.
2 The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has conducted a basic Internet search for “goodrich” in a publicly-available search engine to verify the Complainant’s allegation regarding its reputation, as the Panel considers such information useful to assessing the case merits and reaching a decision. See WIPO Overview 3.0, section 4.8.
3 This order is made without prejudice to the rights of third parties in GOODRICH trademarks.