Compagnie Générale des Etablissements Michelin v huang yun

WIPO Case No. D2025-0239

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. huang yun

Case No. D2025-0239

1. The Parties

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

The Respondent is huang yun, Japan.

2. The Domain Name and Registrar

The disputed domain name <michelinae.com> is registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2025. On January 23, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2025, 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 (Redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 24, 2025, 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 27, 2025.

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 28, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2025.

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The Center appointed Delia-Mihaela Belciu as the sole panelist in this matter on February 21, 2025. 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 tire company, designing and distributing tires, services and solutions for its clients’ needs, providing digital services, maps and guides to help enrich trips and travels and to make them unique experiences, and developing high technology materials that serve the mobility industry.

Headquartered in Clermont-Ferrand, France, the Complainant is present in 170 countries, having more than
124,000 employees and operating 117 tire manufacturing facilities and sales agencies in 26 countries.
Since 1889, the Complainant has innovated constantly to facilitate the mobility of people and goods.

The Complainant is also present in Japan, where the Respondent is allegedly located. The Complainant began selling tires in Japan in 1964. Michelin Japan Tire Co., Ltd., an affiliate company of the Complainant, was established in 1975 and was a pioneer in introducing studless tires and eco-tires, which are now widely used, thereby increasing its presence in the Japanese market.

The MICHELIN Guide was first launched in 1920 in order to help motorists plan their trips, thereby boosting car sales and in turn, tyre purchases. In 1926, the guide began to award stars for fine dining establishments, initially marking them only with a single star. Five years later, a hierarchy of zero, one, two, and three stars was introduced, and in 1936, the criteria for the starred rankings were published. For the first time, the MICHELIN Guide included a list of hotels in Paris, lists of restaurants according to specific categories, as well as the abandonment of paid-for advertisements in the guide. During the rest of 20th century, thanks to its serious and unique approach, the MICHELIN Guides became best-sellers without equals: the guide now rates over 30,000 establishments in over 30 territories across three continents, and more than 30 million MICHELIN Guides have been sold worldwide since.

The Complainant is in particular the owner of the following MICHELIN trademark registrations:

- the International Trademark No. 1713161 for MICHELIN, registered on June 13, 2022, for goods and

services in classes 6, 7, 9, 12, 16, 20, 35, 37, 39, 41, and 42;

- the International Trademark No. 1780534 for MICHELIN, registered on October 20, 2023, for goods and

services in classes 9, 10, 11, 19, 20, 22, 35, 41, 42, and 43;

- the International Trademark No. 1595635 for MICHELIN, registered on March 26, 2021, for goods in class

10;

- the International Trademark No. 771031 for MICHELIN, registered on June 11, 2001, for goods and

services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, and 42.

In addition, the Complainant operates, among others, the domain name <michelin.com> registered on
December 1, 1993 in order to promote its services.

The disputed domain name <michelinae.com> was registered on November 12, 2024, and resolved at the time when the Complaint was filed to a webpage containing a warning as being a dangerous page.

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5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

(i) the disputed domain name is confusingly similar to the Complainant’s MICHELIN mark as it contains the MICHELIN mark in its entirety, with the addition of the letters “ae”, representing in the Complainant’s view a suffix, namely the two-letter International Organization for Standardization (“ISO”) country code and the two- letter country code Top-Level Domain (“ccTLD”) abbreviation corresponding to the United Arab Emirates,

which is not sufficient to escape the finding that the disputed domain name is confusingly similar to the
Complainant’s mark MICHELIN. The Complainant also sustains that, the Complainant and its MICHELIN
mark enjoy a worldwide reputation and that previous panels have considered the MICHELIN mark to be
“well-known” or “famous”;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name for a number of reasons, among which that: (1) the Respondent is not commonly known by the disputed domain name or the name “Michelin”, (2) the Respondent is neither affiliated with the Complainant in any way nor was

authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating its trademark, (3) the Respondent cannot claim prior rights or legitimate interest in the disputed domain name as the MICHELIN marks precede the registration of the disputed domain name for years, (4)

the disputed domain name directs to an webpage containing a warning as being a dangerous page, and (5) the Respondent has never answered the Complainant’s letter regarding the disputed domain name despite the Complainant’s reminders;

, and (6) the disputed domain name directs to an webpage containing a warning as being a dangerous page.

(iii) the disputed domain name was registered and is being used in bad faith for a number of reasons, among the Complainant’s reputation worldwide. A quick MICHELIN trademark search would have revealed to the Respondent the existence of the Complainant and its trademarks as well as simple search via Google or any other search engine using the keyword “MICHELIN”, where all the first results relate to the Complainant’s products or news, making it unlikely that the Respondent was not aware of the Complainant’s rights in the MICHELIN trademark at the time of registering the disputed domain name, (2) the composition of the disputed domain name, which entirely reproduces the Complainant’s MICHELIN mark associated with the letters “ae”, which makes it impossible for the Respondent not to have had in mind the Complainant’s mark and company name while registering the disputed domain name, (3) the Complainant’s MICHELIN mark registrations significantly predate the registration date of the disputed domain name, (4) in the absence of any license or permission from the Complainant to use the widely-known MICHELIN mark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed, (5) the Respondent likely registered the disputed domain name to prevent the Complainant from using their MICHELIN marks in the disputed domain name

which that: (1) the Complainant’s MICHELIN mark is widely known, including in Japan, where the

B. Respondent

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

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6. Discussion and Findings

In order for the Complainant to succeed, it must prove, according to paragraph 4(a) of the Policy, 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 with respect to the disputed domain name; and

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

In case all three elements above have been fulfilled, the Panel is able to grant the remedy requested by the

Complainant. Thus, the Panel will deal with each of the requirements in turn.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds that the entirety of the MICHELIN mark is reproduced within the disputed domain name with the addition of the letters “ae”, which is not sufficient to escape the finding that the disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, in this case the letters “ae”, may bear on assessment of the second and third elements, the Panel finds, as underlined above as well, that, the addition of these letters does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

In what concerns the addition of the generic Top-Level Domain (“gTLD”) “.com” in relation to the disputed domain name, such is viewed as a standard registration requirement, and is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

Based on the available record, the Panel finds that the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

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Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Based on the available evidence, the Respondent does not appear to be commonly known by the name “Michelin”, and is not affiliated with the Complainant, nor has the Complainant’s authorization to use the MICHELIN mark.

Moreover, the disputed domain name resolves to webpage containing a warning as being a dangerous page, namely: “Dangerous site. Attackers on the site you tried visiting might trick you into installing software or revealing things like your passwords, phone, or credit card numbers. Chrome strongly recommends going back to safety”, which suggests that this webpage might be used to host malicious or fraudulent activity.

When the disputed domain name may be used for malicious or fraudulent activity as in this case, panels have held that the use of a domain name for an illegal activity, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Furthermore, the composition of the disputed domain name, incorporating the Complainant’s MICHELIN
mark with the addition of the letters “ae”, might lead to confusion for Internet users and as such, carries a risk
of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1.

All the above does not amount to a bona fide offering of goods or services, nor to a legitimate noncommercial or fair use of the disputed domain name.

Based on the available record, the Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Complainant’s rights in the MICHELIN mark predate the registration date of the disputed domain name by years.

In light of the above as well as of the high distinctive character of the MICHELIN mark, and of the composition of the disputed domain name, the Panel finds that it is not conceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s MICHELIN mark, which supports a finding of bad faith registration. WIPO Overview 3.0, section 3.2.2.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel notes that, the disputed domain name resolves to webpage containing a warning as being a dangerous page, which suggests that this webpage might be used to host malicious or fraudulent activity.

When the disputed domain name may be used for malicious or fraudulent activity as in this case, panels have held that the use of a domain name for an illegal activity constitutes bad faith. WIPO Overview 3.0, section 3.4.

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Furthermore, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark, as in this case, a trademark with a high distinctive character, by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy and finds that the Complainant has established the third element 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 <michelinae.com> be transferred to the Complainant.

/Delia-Mihaela Belciu/
Delia-Mihaela Belciu
Sole Panelist
Date: March 7, 2025