WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Huangjiaguoji

Case No. D2017-2248

1. The Parties

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

The Respondent is Huangjiaguoji of China.

2. The Domain Name and Registrar

The disputed domain name <michelinprize.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 14, 2017. On November 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 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.

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 November 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 13, 2017.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 18, 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, represented internationally. The scale of the Complainant is that it produced 187,000,000 tyres in 2016 and employs some 111,700 people. The Complainant has one of the industry's largest professional tyre sales and service networks in China, being the domicile stated by the Respondent, with marketing offices in Beijing, Shanghai, Guangzhou, Chengdu, Shenyang and Xi'an.

The Complainant holds a number of trademarks for MICHELIN including:

MICHELIN, International Trademark, registered on July 24, 1968, registration number 348615, classes 1, 6, 7, 8, 9, 12, 16, 17, 20;

MICHELIN, European Union Trade mark, registered on October 24, 2001, registration number 001791243, classes 6, 7, 12, 17 and 28;

MICHELIN, Chinese Trademark, registered on January 07, 2010, registration number 6167649, class 12;

MICHELIN, Chinese Trademark, registered on April 5, 1980, registration number 136402, class 12.

The Complainant also owns the domain names <michelin.com> registered on December 1, 1993; <michelin.com.cn> registered on June 16, 2001; and <michelin.cn> registered on March 18, 2003.

No background information is available about the Respondent except for the contact details provided to the Registrar in order to register the disputed domain name, which was registered on March 8, 2017. The disputed domain name resolves to a Chinese website that appears to deal mainly in gaming. The Respondent did not acknowledge or reply to cease-and-desist letters sent by the Complainant.

5. Parties' Contentions

A. Complainant

The Complainant says it has rights in the trademarks listed in section 4 above and has produced copies of online documentation in evidence.

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark that is well known and in which the Complainant has rights. The generic Top-Level Domain (gTLD) ".com" need not be taken into consideration in the determination of confusing similarity. The disputed domain name reproduces the entirety of the Complainant's trademark, suffixed with the generic word "prize". The additional word "prize" does not detract from confusing similarity with the Complainant trademark and may increase confusion by leading people to believe the Complainant is associated with events or projects with prizes.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant says the Respondent is not affiliated with the Complainant, has not been authorised to use the Complainant's trademark in any way, and cannot claim any bona fide or legitimate use of the disputed domain name. The Respondent is Huangjiaguoji and is not commonly known by the Complainant's trademark or by the disputed domain name. The disputed domain name resolves to a website offering online games apparently for payment and cannot be in noncommercial or fair use.

The Complainant says the Respondent is associated with more than 5,000 domain names incorporating trademarks such as EBAY and MINECRAFT, and therefore appears to be a cybersquatter.

The Complainant says it sent cease-and-desist letters to the Respondent that have not been replied to, from which it may be inferred that the Respondent does not have rights or legitimate interests to defend in the disputed domain name.

The Complainant further contends that the disputed domain name was registered in bad faith and is being used in bad faith by the Respondent.

The Complainant says it is so well-known internationally and in China that it is implausible the Respondent was unaware of the Complainant at the time of registration of the disputed domain name. It is submitted that the registration and use of a domain name obviously connected with a well-known trademark by someone having no connection with that trademark suggests opportunistic bad faith.

The Complainant contends that at the time of registration, the Respondent had an obligation under paragraph 2 or the Policy to verify that the disputed domain name would not infringe the rights of any third party, and that a search of trademarks, or a Google search, would have revealed the Complainant and its trademark.

The Complainant says the use of the disputed domain name by the Respondent has been to direct visitors to Chinese webpages that provide online games in return for payment. The Respondent is therefore exploiting the Complainant's trademark in bad faith for commercial gain.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith."

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The disputed domain name is <michelinprize.com>. Disregarding the gTLD ".com", the disputed domain name is "michelinprize", which may be read naturally as the two words "michelin prize". The word "michelin" is identical to the Complainant's trademark MICHELIN and to that extent the disputed domain name is found to be confusingly similar to the Complainant's trademark. The Panel does not find the qualifying and generic word "prize" to detract from confusing similarity between the disputed domain name and the Complainant's trademark. Accordingly the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent has no connection with the Complainant and has no rights or legitimate interests in respect of the disputed domain name. Since proof by the Complainant of the Respondent's lack of rights or legitimate interests in the disputed domain name would require the proving of a negative, paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Respondent has not contested the Complainant's prima facie case or made any reply. The incorporation of the Complainant's trademark in the disputed domain name without the Complainant's authorisation would negate its use as being for a bona fide provision of goods or services. The Respondent has given its name as Huangjiaguoji and has not claimed to be commonly known by the disputed domain name. The disputed domain name resolves to a website that is evidently commercial in nature. On the evidence, and on the balance of probabilities, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and accordingly finds for the Complainant under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

"(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; or

(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; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location."

The screen capture produced by the Complainant of the website to which the disputed domain name has resolved, made on November 9, 2017, runs to 5 pages and is in Chinese with few English words, one of which is "microgaming". Gaming chips and cash are displayed. In the exercise of its powers to undertake limited factual research into matters of public record (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.8), the Panel visited the website of the disputed domain name on December 22, 2017 and found internal links to a wide selection of games such as virtual slot machines and card games. The Panel finds on the balance of probabilities that the website to which the disputed domain name resolved was a commercial gaming website. Internet users may find themselves confronted with this website after following a link or search result comprising the disputed domain name, which features prominently the Complainant's trademark. Thus it may reasonably be concluded on the evidence, and on the balance of probabilities, that the Respondent has intended that Internet users who have been attracted by the disputed domain name containing the Complainant's trademark, and the word "prize", shall be misled to the Respondent's online commercial gaming operation. In the terms of paragraph 4(b)(iv) of the Policy, the Panel finds that the Respondent has intended to attract Internet users by confusion with the Complainant's trademark for commercial gain. The Panel further finds, on the evidence and on the balance of probabilities, that the disputed domain name was registered for the bad faith purpose for which it has been used.

The Complainant attempted to communicate with the Respondent by sending cease-and-desist letters on April 5, 13, 20 and 27, 2017, to the Respondent's email address. The Respondent's failure to reply is found to be an aggravating factor in the Respondent's bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000 1632).

Accordingly the Panel finds for the Complainant under paragraph 4(a)(iii) of the Policy.

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 <michelinprize.com> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: January 1, 2018