Compagnie Générale des Etablissements Michelin v Contact Privacy Inc

WIPO Case No. D2022-0130

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Contact Privacy Inc.
Customer 1245105188 / Chris Sataline

Case No. D2022-0130

1. The Parties

The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by Dreyfus & associés, France.

The Respondent is Contact Privacy Inc. Customer 1245105188, Canada / Chris Sataline, United States of

America (“United States” or “U.S.”).

2. The Domain Name and Registrar

The disputed domain name <michelinmiles.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2022. On January 14, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 20, 2022.

The Center verified that the Complaint together with the amended 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 January 21, 2022. In accordance with the Rules, paragraph
5, the due date for Response was February 10, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 11, 2022.

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The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on February 17, 2022. 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 one of the worldwide leaders in tire technology for every type of vehicle, present in 171 countries and with 114.000 employees.

The “MICHELIN guide” was launched in 1920 to help motorists plan their trips and in 1936 the criteria for the starred rankings were published. Also, in 2021 “ViaMichelin” was set up to develop digital services for travel assistance, giving users all the information they need to prepare their trips, including calculating the routes in miles. In the 2010’s, other digital services were developed by the Complainant such as Michelin MyCar,

Michelin Navigation, Michelin Restaurants, Michelin Hotels, and Michelin Travel.

The Complainant owns numerous trademark registrations in different jurisdictions for MICHELIN, which enjoy a worldwide reputation, including the following registrations:

- International trademark MICHELIN registered on June 11, 2001, under No. 771031; and

- U.S. trademark MICHELIN registered on November 6, 2007, under No. 3329924.

In addition, the Complainant also owns many domain names, among which <michelin.com>, registered on

December 1, 1993, and <michelin.us>, registered on April 4, 2002.

The disputed domain name was registered on July 21, 2019, and is inactive.

5. Parties’ Contentions
A. Complainant

The Complainant informs that it has registered numerous trademarks comprising the element “michelin” throughout the world and that it has no relationship with the Respondent.

The Complainant alleges that the disputed domain name entirely reproduces its trademark MICHELIN with mislead users into thinking that it belongs to or it is, in some way, associated with Complainant.

the addition of the generic term “miles”, which is not sufficient to avoid the confusing similarity with the
Complainant’s trademark and may even increases the likelihood of confusion since it corresponds to the

Additionally, the Complainant argues that its trademark and domain name registrations predate the disputed domain name, that the Respondent has not been authorized to use its trademarks, that it is not commonly known by the disputed domain name, and that it has no rights or legitimate interests in respect of it.

The Complainant mentions that on August 19, 2019, sent a letter to the Respondent in an attempt to solve this conflict amicably and that no reply was received, despite several reminders.

Furthermore, the Complainant argues that the Respondent registered the disputed domain name in opportunistic bad faith since it is implausible that the Respondent was unaware of the Complainant, who is worldwide well known and enjoys high reputation and the disputed domain name reproduces its famous trademark entirely.

According to the Complainant, the Respondent is also using the disputed domain name in bad faith, as it resolves to an inactive website and it is likely that the Respondent registered it to prevent the Complainant from using its trademarks in the disputed domain name.

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Finally, the Complainant requests the transference of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

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

(ii)         the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The evidence demonstrates that the Complainant is the owner of several trademark registrations for
MICHELIN in different jurisdictions.

The disputed domain name incorporates the famous Complainant’s trademark MICHELIN in its entirety. The addition of the term “miles” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

It is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name would not avoid a finding of confusing similarity under the first element of the UDRP (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

As numerous prior UDRP panels have also recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview 3.0.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted any response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the Complainant’s famous trademark MICHELIN.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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. Moreover, the construction of the disputed domain name itself is such to carry a risk of implied affiliation that cannot constitute fair use. See section 2.5.1, WIPO Overview 3.0.

The Panel finds that the use of the disputed domain name, which incorporates the famous Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

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C. Registered and Used in Bad Faith

The trademark MICHELIN is registered by the Complainant in several jurisdictions and has been used since
a long time. The disputed domain name incorporates the Complainant’s trademark MICHELIN and the
Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant’s MICHELIN mark is distinctive, widely well known, and is also considered a highly reputed trademark worldwide. Thus, a domain name that comprises such a mark is undoubtedly suggestive of the registrant’s bad faith.

In addition, the Panel notes that the disputed domain name includes the term “miles”, which in this case may serve as an additional evidence of the registration of the disputed domain name in bad faith, considering that such term relates to the Complainant’s business activities.

The disputed domain name resolves to an inactive page. When weighing the circumstances, prior UDRP panels have found that the non-use of a domain name would not necessarily prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.

Finally, the Respondent has chosen not to respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610: “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. Moreover, the Respondent used a privacy service to hide its details, further supporting an inference of bad faith registration and use. See section 3.6 of the WIPO Overview 3.0.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause any confusion with the
Complainant’s trademark and that the Respondent’s attempt of taking undue advantage of the trademark
MICHELIN for as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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 <michelinmiles.com> be transferred to the Complainant.

/Mario Soerensen Garcia/
Mario Soerensen Garcia
Sole Panelist
Date: February 28, 2022