WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Générale des Etablissements Michelin v. Zeng Yan
Case No. DCC2018-0004
1. The Parties
The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & Associés, France.
The Respondent is Zeng Yan of Huaian, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <michelin.cc> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2018. On May 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 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 May 18, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On May 22, 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 May 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on June 18, 2018.
The Center appointed Joe Simone as the sole panelist in this matter on June 22, 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, Michelin, is a French tire company headquartered in Clermont-Ferrand, and is one of the largest tire manufacturers in the world. It is present in 170 countries, has 111,700 employees and operates 68 production facilities in 17 countries. It has two production facilities in China, located in Shanghai and Shenyang, which together employ a total of 5,459 personnel. In 2016, it produced 187 million tires. For the third consecutive year, the Reputation Institute has ranked Michelin as number one in the French rankings and 13th worldwide. It has also ranked Michelin as the French brand with the best reputation in the United States, China, Germany, the United Kingdom and Italy. Other reputation surveys rank Michelin as the leading company in its business sector.
The Complainant owns numerous trademark registrations, including the International Trademark Registration No. 348615, MICHELIN, registered on July 24, 1968. It has also registered MICHELIN as a trademark in China as early as April 5, 1980, for among other goods, “tires” (see Chinese Trademark Nos. 136402, 6167649, 9156074).
In addition, the Complainant and its affiliates operate domain names including <michelin.com> and <michelin.com.cn>.
The disputed domain name <michelin.cc> was registered on March 5, 2018, by the Respondent Zeng Yan, of Jiangsu, China. It previously resolved to an inactive website. Prior to commencing this proceeding, the Complainant attempted to resolve the matter as follows:
On April 3, 2018, the Complainant sent a cease-and-desist letter to the Respondent via registered letter and email on the basis of its trademark rights, requesting the Respondent to transfer the disputed domain name to the Complainant free of charge.
On the same day, the Respondent replied via email as follows:
“Thanks for your email.
Sorry we violated your client’s trademark rights, and I understand that you said, so this domain could be sold to your client at a low price.
Only 1880 USD.
We could transfer the domain name via Sedo.com or Escrow.com, and the transfer will be finished in one week.”
The Complainant replied that day, by reminding the Respondent of its infringing conduct and reiterating its request for the transfer of the disputed domain name free of charge.
On April 4, 2018, the Respondent replied to the Complainant’s email as follows:
“Our registered domain names are all trademarks owned by others. If we transfer them for free or only receive a registration fee, we do not need to register at the beginning. Please consider the price.”
After this reply, the disputed domain name started to resolve to a parking page displaying commercial links related to automotive products, including tires, and notably those of the Complainant and its competitors.
In addition, after investigations made by the Complainant, it has been revealed that email servers have also been configured on the disputed domain name <michelin.cc>. As such, the Complainant fears the risk of phishing.
The Complainant then commenced this proceeding.
5. Parties’ Contentions
The Complainant made comprehensive submissions summarized as follows.
Identical or confusingly similar
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark MICHELIN in which it has rights, based on the following:
(i) The Complainant owns numerous trademark registrations, including in the United States of America and China. In addition, the Complainant and its affiliates operate websites under domain names including <michelin.com> and <michelin.com.cn>.
(ii) The disputed domain name reproduces the Complainant’s trademark MICHELIN in its entirety, which previous UDRP panels have considered as “well-known”. Many UDRP decisions have considered that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered trademark. The addition of the country code Top-Level Domains (“ccTLD”) does not eliminate the confusing similarity.
(iii) The Complainant has used the trademark MICHELIN in connection with a wide variety of products and services, such that the public has come to perceive the goods and services offered under this trademark as being those of the Complainant. Therefore, the public would reasonably assume and are likely to be misled that the disputed domain name is owned by or at least related to the Complainant.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names based on the following:
(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. Moreover, the Respondent is not known by the name “Michelin”.
(ii) The Respondent has no prior rights or legitimate interests in the disputed domain name as MICHELIN trademarks have been registered prior to the registration of the disputed domain name.
(iii) In previous UDRP decisions, panels found that in the absence of any license or permission from a complainant to use such a widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.
(iv) The disputed domain name was offered for sale by the Respondent. Moreover, in his reply to the Complainant, the Respondent confessed that he registered domain names which are imitations of third-party trademarks for the purpose of selling them. Therefore, it appears the only reason the Respondent registered the disputed domain name was for the purpose of selling it.
(v) The Respondent appears to be a cybersquatter, as he is associated with more than 500 domain names including <kelloggs.cc> and <novartis.cc>.
(vi) The Respondent has been involved in an UDRP dispute where the panel found his lack of rights and legitimate interests in the domain names he registered and ordered the transfer of the disputed domain names to the owner (Tommy Hilfiger Licensing, LLC; Deckers Outdoor Corporation; Otter Products LLC v. 曾燕(Zeng Yan); 赵兴明(Zhao Xing Ming), WIPO Case No. D2017-2384).
Registered and used in bad faith
The Complainant submits that the disputed domain name was registered in bad faith on the following grounds:
(i) The Respondent “knew or should have known” of the Complainant’s trademark rights given its worldwide reputation. The composition of the disputed domain name entirely reproduces the Complainant’s trademark MICHELIN and the Respondent did not deny knowing the Complainant in his reply to the Complainant’s cease-and-desist letter. On the contrary he declared the disputed domain name was registered with the purpose of offering it for sale. Supposing the Respondent did not have actual knowledge, a quick MICHELIN trademark search or at least a Google search would have revealed the Complainant’s rights in the mark.
(ii) The Respondent seems to be engaged in a pattern of cybersquatting activity, as he is associated with more than 500 domain names like <heineken.cc>, <kelloggs.cc>, <novartis.cc> and <playboy.cc>, which resolve to parking pages where email servers have also been configured on the said domain names. In his reply to the Complainant, the Respondent confessed that he registered domain names which represent imitations of third parties’ trademarks. Moreover, the Respondent was previously involved in an UDRP dispute where the Panel found that he had registered and used domain names in bad faith.
The Complainant submits that the disputed domain name is being used in bad faith on the following grounds:
(i) The Respondent attempted to sell the disputed domain name to the Complainant for USD 1,880. He was aware this was far in excess of his out-of-pocket expenses given he told the Complainant “…. If we transfer them for free or only receive a registration fee, we do not need to register at the beginning…”.
(ii) The disputed domain name <michelin.cc> resolves to a parking page displaying commercial links related to automotive products, including tires and notably those of the Complainant and its competitors. Obviously, the Respondent registered the disputed domain name to direct Internet users to webpages displaying pay-per-clicks links which are likely to generate revenues.
(iii) The Respondent might be engaged in a phishing scheme through which he can steal valuable information from the Complainant’s clients who believe they are dealing with the owner of the trademark.
(iv) It is likely that the Respondent registered the disputed domain name to prevent the Complainant from using its trademark in the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The Complainant filed the Complaint in English and requested that English be the language of the proceeding, for the following reasons:
(i) The Complainant is located in France and has no knowledge of Chinese. To proceed in this language, the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost of the present proceeding. This would impose a burden on the Complainant which must be deemed significant in view of the cost of the present proceeding.
(ii) An important consideration is the issue of fairness to both parties. Many UDRP decisions have recognized that using the registration agreement’s language would lay an undue burden on the complainant (Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679), it would cause undue delay and the complainant would have to incur substantial expenses (Solvay SA v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
(iii) The disputed domain name includes only Latin characters which strongly suggests that the Respondent has knowledge of languages other than Chinese. Additionally, the Respondent replied in English to the Complainant’s cease-and-desist letter and the WhoIs record states that the Respondent wished to be contacted in English.
(iv) Moreover, today English is the primary language for international relations and it is one of the working languages of the Center.
In accordance with paragraph 11 of the Rules:
“…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.”
Therefore, prima facie, the language of the proceeding shall be Chinese.
Section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides for certain scenarios which may warrant proceeding in a language other than that of the registration agreement.
These include (i) evidence showing that the respondent can understand the language of the complaint, and (v) prior correspondence between the parties. It is apparent from the WhoIs record that despite listing a Chinese address, the Respondent wishes to be contacted in English (the Respondent’s address includes the text “(contact us in English)”). Also, the Respondent replied in English to the Complainant’s cease-and-desist letter. These facts point in favor of the Respondent being able to communicate in English.
Furthermore, it is well established that:
“Paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.” (General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
The language requirement should not cause any undue burden on the parties or undue delay (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Groupe Auchan v. Yang Yi, WIPO Case No. D2014-2094).
The Respondent was notified in both English and Chinese, by the Center, of the nature and deadlines pertaining to the proceeding as well as the issue of the language of the proceeding. Because the Respondent did not respond to the issue of language nor submit a response to the Complaint, the Panel does not believe it would be prejudicial to the Respondent if English were adopted as the language of the proceeding. The proceeding would be unduly delayed if the Complaint and annexes thereto were required to be translated into Chinese. In keeping with the Policy’s aim of facilitating a relatively time- and cost- efficient procedure for the resolution of domain name disputes, the Panel accordingly determines that it would be appropriate for English to be the language of the proceeding.
6.2 Substantive Issues
A. Identical or Confusingly Similar
In order to bring a complaint, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. In this case, the Panel finds that the Complainant has registered rights in the mark MICHELIN for which the Complainant has ample trademark registrations. The Complainant also has unregistered rights by virtue of trading under the name “Michelin”, acquiring a global presence and leading reputation both as a brand and as a company.
A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; WIPO Overview 3.0, section 1.7).
When comparing the domain name with the trademark, the Top-Level Domain (“TLD”) suffix of the domain name may be omitted (section 1.11 of WIPO Overview 3.0; G4S Plc v. Noman Burki, WIPO Case No. D2016-1383).
After removing the “.cc” TLD suffix, the disputed domain name is identical to the Complainant’s trademark MICHELIN.
The first requirement of the UDRP is therefore satisfied.
B. Rights or Legitimate Interests
A complainant must demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by a panel, will demonstrate the respondent’s rights or legitimate interests in the disputed domain name.
In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no such rights or legitimate interests, based on the following:
(i) There is no evidence that the Respondent is commonly known by the disputed domain name.
(ii) Prior to receiving notice of the dispute, there is no evidence of contemplated or actual bona fide use. Before receiving the Complainant’s cease-and-desist letter, the website was inactive. Given the disputed domain name is identical to the Complainant’s mark MICHELIN and that the Respondent lacks a license or authorization from the Complainant, it seems the only reason the Respondent registered the disputed domain name was in order to sell it, after being contacted by the Complainant.
(iii) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. After the Complainant refused to pay for the disputed domain name, the disputed domain name started to resolve to a parking page containing a number of pay-per-click Michelin- “related links” (which at the time of decision ultimately resolve to competitors’ websites).
(iv) The disputed domain name which is identical to the trademark at issue and which resolves to a page of links purporting to be related to the Complainant (whether or not they are) clearly and falsely suggests affiliation with the trademark owner. This cannot be called legitimate or fair use.
(v) Moreover, the Respondent has a habit of registering third-party domain names: over 500 including <kelloggs.cc> and <novartis.cc>. The Respondent himself admits that “all of its registered domain names are all trademarks owned by others” which it sells for more than the cost of registration. The Respondent’s activity is clearly a commercial endeavor based on cybersquatting of famous marks.
The burden of production then shifts to the Respondent (section 2.1 of WIPO Overview 3.0). By failing to respond, the Respondent has not presented any evidence to establish rights or legitimate interests under this element.
Considering the above analysis and the absence of a response by the Respondent to the Complainant’s contentions, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The second requirement of the UDRP is therefore satisfied.
C. Registered and Used in Bad Faith
Finally, a complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
Paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel draws attention in particular to subparagraphs (i), (ii) and (iv):
(i) circumstances indicating that you have registered or you have acquired the 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 your documented out-of-pocket costs directly related to the domain name;
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
In respect of subparagraph (i) the Complainant has adequately demonstrated that the Respondent registered the disputed domain name for the primary purpose of selling it to the Complainant, for valuable consideration in excess of its out-of-pocket costs. In response to the cease-and-desist letter, the Respondent expressed no surprise at having interfered with the Complainant’s rights and offered to transfer the disputed domain name for a “low” price of USD 1,880, far in excess of its out-of-pocket costs, which were probably around CNY 60 (USD 9) as currently advertised on the Registrar’s website. In this regard, it is relevant that the Respondent “knew or should have known” of the Complainant’s trademark rights, which is further demonstrative of bad faith (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited., WIPO Case No. D2001-0051). In this case the Panel is satisfied the Respondent did in fact know of the Complainant’s trademark given the disputed domain name is identical to the Complainant’s famous trademark as well as the Respondent’s own admission that all of his domain names are trademarks owned by others and the Respondent’s statement “if we transfer them for free or only receive a registration fee, we do not need to register at the beginning”. As the Complainant contends, it is implausible the Respondent was unaware of the Complainant’s rights, and this is a case of opportunistic bad faith.
With respect to subparagraph (ii), the Panel also finds the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. This is because the Respondent has engaged in a pattern of cybersquatting behavior – it has registered over 500 domain names including <kelloggs.cc> and <novartis.cc>, which resolve to parking pages and where email servers have been configured. The Respondent has also been involved in a previous UDRP dispute in which it was found to have registered the domain names <tommyhilfiger.info> and <uggaustralia.info> in bad faith (Tommy Hilfiger Licensing, LLC; Deckers Outdoor Corporation; Otter Products LLC v. 曾燕 (Zeng Yan); 赵兴明 (Zhao Xing Ming), supra). Finally, the Respondent itself admitted that it all of its domain names are trademarks of others.
With respect to paragraph (iv), the Panel is also satisfied that by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website, the Respondent intended to divert customers of the Complainant to its website for commercial gain. The fact that the disputed domain name is identical to the Complainant’s trademark means that diversion of the Complainant’s customers to the Respondent’s page is highly likely.
The website to which the disputed domain name resolves appears to be a pay-per-click page of “related links” to Michelin, which ultimately resolve to websites for automotive products, including tires. UDRP panels have found that registration of a domain name containing a third-party trademark in order to divert Internet users to a webpage of links through which the respondent earns click-through revenue, is on its own sufficient to satisfy bad faith under subparagraph (iv)(Revlon Consumer Products Corporation v. Moniker Privacy Services / Janice Liburd,
WIPO Case No. D2011-0315; Georgia-Pacific Corporation v. Charlie Kalopungi,
WIPO Case No. D2011-0634). Redirecting consumers to competitors’ websites is further evidence that the disputed domain name is being used in bad faith because the Respondent potentially profits from users who believe they are accessing the Complainant’s website, but actually end up at a competitor’s website (Hardee’s Food Systems, Inc. v. Whois Privacy Protection Service, Inc. / ICS Inc.,
WIPO Case No. D2012-1696).
Along with the failure of the Respondent to submit a response to the contrary, this leads to the conclusion that the Respondent registered and is using the disputed domain name in bad faith.
The third requirement of the UDRP is therefore satisfied.
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 <michelin.cc> be transferred to the Complainant.
Date: July 16, 2018