The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Linpinfeng of Hangzhou, China.
The disputed domain name <michelinblockchain.xyz> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2018. On July 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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 July 30, 2018, the Respondent sent an email communication in Chinese regarding the proceeding. On August 1, 2018, the Complainant submitted a request to suspend the proceeding. The proceeding was suspended from August 2, 2018 and re-instituted on September 11, 2018 in accordance with the Complainant’s request of the same day.
On September 11, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on September 12, 2018. The Respondent didn’t 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 in English and Chinese, and the proceeding commenced on September 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2018. The Respondent did not submit any formal response. The Center notified the Parties that it would proceed to panel appointment on October 9, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 19, 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.
The Complainant is a company incorporated in France and is one of the world’s most prominent tire manufacturers.
The Complainant is the owner of numerous registrations in jurisdictions around the world for the trade mark MICHELIN (the “Trade Mark”), including international registration number 771031, designating China, registered on June 11, 2001; and several registrations in China, for example, registration number 136402, registered on April 5, 1980.
The Complainant is also the owner of the domain names <michelin.com>, registered on December 1, 1993, and <michelin.com.cn>, registered on June 16, 2001.
The Respondent is an individual located in China.
The disputed domain name was registered on March 25, 2018.
The disputed domain name has not been used.
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, on the grounds:
1. The Complainant is a French company and does not understand Chinese;
2. The disputed domain name includes only Latin characters which strongly suggests that the Respondent has knowledge of English;
3. Translating the Complaint would involve additional expense and delay, at a cost that is likely to be higher than the Complainant’s overall costs for the present proceeding; and
4. English is the primary language for international relations and it is one of the working languages of the Center.
The Respondent, having received the Center’s communication regarding the language of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding. Having received notice of the proceeding in both Chinese and English, the Respondent chose not to file a response.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel does not consider the first ground put forward by the Complainant convincing. Given the Complainant’s presence, as a leading global tire brand, in the Chinese market for several decades, it should not have significant difficulty arranging for translation of the Complaint. The Panel is also not persuaded by the second and fourth ground relied upon by the Complainant.
The Panel considers however that, in light of the Respondent’s decision to take no part in this proceeding, it would be inappropriate to conduct the proceeding in Chinese, which would necessarily involve extra costs on the part of the Complainant in translating the Complaint and Annexures into Chinese, and would delay the resolution of this proceeding.
The Panel also notes that, although there is insufficient evidence to support the conclusion that the Respondent is conversant in English, the Respondent’s representative law firm has communicated with the Complainant’s representatives in English prior to the filing of the Complaint.
In all the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the word “blockchain”, a dictionary term meaning “a system in which a record of transactions made in bitcoin or another cryptocurrency is maintained across several computers that are linked in a peer-to-peer network”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has not been used.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and therefore finds that the requirements of paragraph 4(a)(ii) of the Policy are met.
Given the notoriety of the Complainant and of its Trade Mark (including in China, where the Respondent is based), the lack of any explanation from the Respondent, and the passive use of the disputed domain name, the Panel finds that the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant’s well-known Trade Mark at the time it registered the disputed domain name.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
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 <michelinblockchain.xyz> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: November 2, 2018
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