The Complainant is Compagnie Générale des Etablissements Michelin of Clermont-Ferrand, France, represented by Dreyfus & associés, France.
The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Xu YunJun of Shanghai, China, self-represented.
The disputed domain name <michelinsh.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (previously HiChina Zhicheng Technology Ltd.) (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2018. On July 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 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 August 6, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, 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 August 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2018. The Response was filed with the Center on August 13, 2018. On the same day, the Center acknowledged receipt of the Response and requested the Respondent to confirm whether the communication on August 13, 2018 may be regarded as its complete Response, to which the Respondent did not reply. On September 3, 2018, the Center notified the Parties that it would proceed to appoint the Panel.
The Center appointed Douglas Clark as the sole panelist in this matter on September 11, 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 trademark upon which the Complaint is based is MICHELIN. According to the documentary evidence and contentions submitted, the Complainant owns several trademark registrations of the MICHELIN trademark worldwide, including three in China where the Respondent is resident (e.g., Registration No 6167649, registered on January 7, 2010). The Complainant uses the MICHELIN trademark in connection with its manufacturing and sale of tires, maps, guides and various other goods and services. The Panel notes that previous UDRP panels have found the Complainant’s trademark to be “well known”. Moreover, the Complainant is the owner of two domain names, <michelin.com> and <michelin.cn>, reflecting its trademarks.
The Respondent is an individual with an address in Shanghai, China.
According to the documentary evidence and contentions submitted, the disputed domain name <michelinsh.com> was registered by the Respondent with the Registrar on September 6, 2017 using a privacy service “Nexperian Holding Limited”. The disputed domain name resolves to an inactive webpage. The Complainant by its lawyers sent a cease and desist letter to the privacy service on October 5, 2017 via registered mail and by email. The Complainant states that no response was ever received and the Respondent states that no letter was received from the Complainant.
The Complainant’s contentions are as follows:
Identical or confusingly similar
The disputed domain name is confusingly similar to the MICHELIN trademark because it incorporates in its entirety the MICHELIN trademark with only the addition of “sh” as a suffix, which is the geographic descriptor of Shanghai. Moreover, the addition of the letters “sh” to the trademark is not distinctive and does not mitigate confusion, but instead contributes to the likelihood of confusion that the domain is registered by a Shanghai affiliate of the Complainant.
No rights or legitimate interests
The Complainant further argued that the Respondent has no rights or legitimate interests in the disputed domain because the Respondent: (i) is not affiliated with or otherwise authorized by the Complainant to use the MICHELIN trademark; (ii) did not have any prior rights or legitimate interests in the disputed domain name as the MICHELIN trademarks were registered before the disputed domain name; (iii) cannot reasonably assert it was intending to develop any legitimate activity through the disputed domain name because it is essentially identical to the Claimant’s trademark; (iv) fails to show any intention of non-commercial or fair use of the disputed domain name because it resolves to an inactive webpage.
Registration and use in bad faith
It is highly likely that the Respondent knew of the Complainant’s trademark rights before registering the disputed domain name because the MICHELIN trademark is well known in China and worldwide and it is therefore more likely than not that the Respondent’s motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights by creating confusion.
The Respondent’s contentions were as follows:
The MICHELIN trademark has international notoriety in connection with tires, but this does not infer that all domain names incorporating the word “michelin” will be owned by the Complainant. In China generally and in Shanghai specifically “michelin” stands for fine dining and the disputed domain name was registered on the basis of “fine dining in Shanghai.”
The Respondent therefore had no intention of using the disputed domain name to create confusion with the well-known brand of tires. The Respondent also promised that it would not put the disputed domain name to commercial use in connection with the tire industry.
The language of the Registration Agreement is Chinese. 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 Complainant requested the language of the proceeding to be English on grounds the grounds that it is based in France and does not understand Chinese and that it would be expensive for the Complainant to translate the Complaint into Chinese. Further, English is an international business language.
The Respondent did not respond to this request, but submitted its contentions in Chinese and quoted from the Complaint in English, thus demonstrating its ability to comprehend written English.
The Center made a preliminary determination to:
(1) accept the Complaint as filed in English;
(2) accept a Response in either English or Chinese;
(3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent did not respond to the Center’s preliminary determination. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
Further, translating the Complaint would cause unnecessary delay in this matter.
The contentions made in the Respondent’s Chinese language pleading have been carefully considered and summarized in the Panel’s decision.
These factors lead the Panel to determine to follow the Center’s preliminary determination and accept the Complaint in English and the Response in Chinese. Therefore, the Panel will render its decision in English.
The disputed domain name <michelinsh.com> is confusingly similar to the Complainant’s MICHELIN trademark. It incorporates the MICHELIN trademark in its entirety with the geographic descriptor for Shanghai “sh”. The addition of the letters “sh” to the trademark does not avoid confusing similarity between the disputed domain name and the MICHELIN trademark. According to previous UDRP decisions, the “addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. (See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The first element of paragraph 4(a) of the Policy is therefore satisfied.
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has contended that (i) in China generally and in Shanghai specifically “michelin” stands for fine dining and the disputed domain name was registered on the basis of “fine dining in Shanghai”; (ii) it cannot be inferred from the international notoriety of the MICHELIN trademark in connection with tires, that all domain names incorporating the word “michelin” will be owned by the Complainant; and (iii) it would not put the disputed domain name to commercial use in connection with the tire industry.
The Respondent did not, however, produce any evidence to show that it had done any business or made any preparations to do business under the disputed domain name.
The Respondent also did not appreciate that the Complainant in fact is the publisher of the Michelin Guide books that associate the Michelin name with fine dining. (This can to an extent be attributable to the failure of the Complainant to specifically state this in its Complaint, although, it did make this assertion its cease and desist letter, which was sent to the privacy service “Nexperian Holding Limited” via registered mail and by email on October 5, 2017. It was also sent to the Respondent by email at as Annex 9 to the Complaint together with Notification of Complaint and Commencement of Administrative Proceeding on August 13, 2018.)
Considering the Respondent’s response to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“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 web site or location or of a product or service on your web site or location.”
The fact the disputed domain name does not resolve to an active page does not preclude a finding that it has been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0 section 3.3).
The Respondent clearly stated that it was its intention to use the disputed domain name in connection with “fine dining in Shanghai”. It is clear to the Panel that the Respondent knew of the Complainant’s well‑known guides to fine dining. The use of a domain name for such a purpose with “Michelin” as part of the domain name will only lead to confusion amongst consumers.
The Panel finds that the disputed domain name <michelinsh.com> was registered in bad faith and is being used in bad faith.
The third part of paragraph 4(a) of the Policy 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 <michelinsh.com> be transferred to the Complainant.
Date: September 24, 2018
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