WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Xujing
Case No. DCC2017-0002
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Xujing of Wuxi, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <michelinchina.cc> (the "Domain Name") is registered with 22net, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on April 3, 2017. On April 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 5, 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. On April 6, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of proceeding. The Complainant requested that English be the language of the proceeding on April 10, 2017. 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 of the Complaint in English and Chinese, and the proceedings commenced on April 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 9, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on May 12, 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 is a leading tyre company, manufacturing and marketing tyres for all types of vehicles including airplanes, automobiles, bicycles, motorcycles, earthmovers, farm equipment and trucks. In addition, it also offers electronic mobility services and publishes travel guides, hotel and restaurant guides, maps and road atlases. Headquartered in France, the Complainant is located in 170 countries, employs 112,300 people and operates 68 production plants in 17 countries.
The Complainant set up its first representative office in China in 1989. It currently employs more than 7,500 employees in China. The Complainant has the largest tyre sales and service network in China with marketing offices in Beijing, Shanghai, Guangzhou, Chengdu, Shenyang and Xi'an.
The Complainant trades under the name Michelin. MICHELIN is a registered trade mark in many countries including China where it is registered in a number of classes. The earliest trade mark registration in China No. 136402 in Class 12 dates back to April 5, 1980. The Complainant also has a number of domain names registered to reflect its trade marks and promote its goods and services. These include <michelin.com> and <michelin.cn>. The Complainant also has extensive reputation in the name Michelin.
The Respondent registered the Domain Name on September 22, 2016. It resolves to an inactive page. The Complainant's legal representatives sent the Respondent a cease-and-desist letter on February 1, 2017 but despite several reminders received no reply.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to the trade mark MICHELIN, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
6.2. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in paragraph IV of the Complaint and confirmed in an email of April 10, 2017 that the language of the proceeding should be English. The Complainant contends that it is located in France and has no knowledge of Chinese. The cost of translation services and the inconvenience of having to conduct the proceeding in Chinese impose a disproportionate burden on the Complainant. It would also cause undue delay. The Domain Name is in Latin characters indicating knowledge of the English language. English is also the language of international relations.
The Panel accepts the Complainant's submissions regarding the language of the proceeding and is satisfied that the Respondent probably understands the English language. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. There is therefore no question of the Respondent not being able to understand the Complaint. The Respondent chose not to respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.3. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered rights to the MICHELIN trade mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Name contains the Complainant's distinctive trade mark MICHELIN in its entirety and the geographical term "China". The addition of this term does nothing to minimise the risk of confusion. As stated in paragraph 1.8 of the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0") "where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element".
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD") as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of WIPO Jurisprudential Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The standard of proof required under the UDRP is "on balance". An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Respondent is not affiliated to the Complainant in any way nor has it been authorised by the Complainant to register and use the Domain Name. MICHELIN is a well-known trade mark of the Complainant. The Respondent has also not shown that it is making legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's well-known MICHELIN trade mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name. The Complainant is well known through the world including in China. The primary significance of the meaning of the word is its reference to the Complainant's trade mark and company name. In the WIPO Jurisprudential Overview 3.0, paragraph 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent's choice of the domain name is also a significant factor to consider (as stated in paragraph 3.2.1 of WIPO Jurisprudential Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Domain Name directs to an inactive page. WIPO Jurisprudential Overview 3.0 states that:
"from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (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".
In this case, the Complainant's trade mark is well known and, the Respondent has failed to respond to the cease-and-desist letter, reminders and file a Response. In the circumstances, it is implausible that there can be any good faith use to which the Domain Name may be put. Accordingly, the Panel considers that the Domain Name is also being used in bad faith.
The Panel finds that the Complaint has satisfied the third element of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <michelinchina.cc> be transferred to the Complainant.
Date: May 31, 2017