Compagnie Générale des Etablissements Michelin v johnn leed

WIPO Case No. D2024-5025

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. johnn leed

Case No. D2024-5025

1. The Parties

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

Respondent is johnn leed, China.

2. The Domain Name and Registrar

The disputed domain name <michelinkronos.net> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2024. On December 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2024, 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 (above_privacy) and contact information in the Complaint. The Center sent an email communication to Complainant on December 6, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 9, 2024.

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 Respondent of the Complaint, and the proceedings commenced on December 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2024.

The Center appointed Enrique Ochoa de G. Argüelles as the sole panelist in this matter on January 15,
2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of

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Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a leading tire company, which is headquartered in Clermont-Ferrand, France and present in
170 countries.

The MICHELIN Guide was first launched in 1920 in order to help motorists plan their trips - thereby boosting car sales and in turn, tire purchases.

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.

The disputed domain name directs towards a parking website displaying commercial links mostly related to HR and payroll systems, which apparently derives from a pay-per-click scheme, as reviewed by the Panel.

Before starting the present proceeding, Complainant made some efforts to resolve this matter amicably by sending a cease-and-desist letter to Respondent via email, asserting its trademark rights and requesting the transfer of the disputed domain name free of charge on April 23, 2024.

Despite multiple reminders, Complainant did not receive any response.

Complainant and its MICHELIN trademarks (hereinafter MICHELIN TRADEMARKS, referring to the described trademark registrations below and others throughout the world) enjoy a worldwide reputation.

Complainant owns numerous MICHELIN trademark registrations, among others.

• International Trademark MICHELIN No. 771031, designating among others China, Egypt, Morocco,

Russian Federation, Singapore, registered on June 11, 2001, duly renewed since then and covering goods and services in classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, 42; and

• International Trademark MICHELIN No. 574577, designating among others China, Mongolia, Viet

Nam, registered on May 6, 1991, duly renewed since then and covering goods and services in classes 6, 16,

18, 21, 25 filed on 1996.

Complainant has also been the holder of the domain name <michelin.com> since December 1, 1993.

The disputed domain name was registered on March 29, 2024.

5. Parties’ Contentions

A. Complainant

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

Notably, Complainant contends that:

MICHELIN TRADEMARKS enjoy a worldwide reputation. Complainant owns numerous MICHELIN trademark registrations around the world and domain names including the word MICHELIN.

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The disputed domain name <michelinkronos.net> is virtually identical or at least confusingly similar to
Complainant’s trademark MICHELIN.

The disputed domain name reproduces Complainant’s MICHELIN TRADEMARKS in its entirety. Previous panels have considered the Complainant’s MICHELIN TRADEMARKS to be “well-known” or “famous”.

The disputed domain name associates Complainant’s trademark to the term “kronos”1.

Numerous WIPO decisions have established that adding a generic and descriptive term to a Complainant’s mark doesn’t influence the similarity between a trademark and a domain name.

Complainant has consistently used the MICHELIN TRADEMARKS in connection with a wide variety of products and services around the world.

The public would reasonably assume that the disputed domain name would be owned by Complainant or at least assume that it is related to Complainant.

Regarding the “.net” generic Top-Level Domain (“gTLD”) in the disputed domain name, it has been held in numerous decisions that the addition of the gTLD suffix does not affect the likelihood of confusion.

By registering the disputed domain name Respondent created a likelihood of confusion with MICHELIN it is, in some way, associated with Complainant.

Respondent is neither affiliated with Complainant in any way, nor has he been authorized by Complainant to use its trademark, or to seek registration of any domain name incorporating said trademark and cannot claim prior rights or legitimate interests in the disputed domain name, as the MICHELIN TRADEMARKS precede

the registration of the disputed domain name by many years.

In previous Decisions, panels found that in the absence of any license or permission from Complainant to use such widely-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.

The disputed domain name resolves to a parking page displaying several links related to HR and employment, which may mislead users to believe they could find employment opportunities with Complainant’s company.

It is implausible to assert that there has been any bona fide offering of goods or services associated with the disputed domain name by Respondent.

It appears that Respondent likely derives pay-per-click revenue from the links present on the parking page and this type of activity does not constitute a legitimate interest in the disputed domain name, as it does not involve the actual offering of goods or services in a manner that genuinely aligns with the purported business

identity or function indicated by the disputed domain name itself.

Bad faith can be found where respondent “knew or should have known” of Complainant’s trademark rights and, nevertheless registered a domain name in which he had no rights or legitimate interests, and it is implausible that Respondent was unaware of Complainant when he registered the disputed domain name.

1 Kronos (ˈkrəʊnɒs ) noun a variant of Cronus Collins English Dictionary. Copyright © HarperCollins Publishers Cronus (krəʊnəs),

Cronos or Kronos (ˈkrəʊnɒs) noun Greek mythology a Titan, son of Uranus (sky) and Gaea (earth), who ruled the world until his son
Zeus dethroned him.

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Complainant is well-known throughout the world, including China where Respondent is located. In this regard, many panels have previously acknowledged Complainant’s reputation worldwide, making it unlikely that Respondent was not aware of Complainant’s rights in the MICHELIN TRADEMARKS.

Considering the composition of the disputed domain name entirely reproduces Complainant’s trademark MICHELIN associated to the term “kronos”, it is impossible that Respondent did not have Complainant’s trademark and company name in mind while registering the disputed domain name.

In fact, bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. Given the reputation of the MICHELIN TRADEMARKS, registration in bad faith can be inferred.

The MICHELIN TRADEMARKS registrations significantly predate the registration date of the disputed domain name.

Previous panels have considered that in the absence of any license or permission from complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to the disputed domain name:

(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.

The burden of proof of each element is borne by the Complainant.

Respondent's failure to respond does not automatically result in a ruling in favor of Complainant, as indicated in WIPO Overview 3.0, section 4.3.

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.

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 entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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Although the addition of other terms such as “kronos” may bear on assessment of the second and third elements, the Panel finds the addition of such term 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.

Common practice dictates that the inclusion of a gTLD like “.net” is merely a technical registration
requirement and is generally overlooked in the initial confusing similarity test. WIPO Overview 3.0, section
1.11.1; see also Sodexo v. johnnleed, WIPO Case No. D2024-1420 referring to domain name

<sodexokronos.net>.

The Panel finds 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 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.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted 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.

The Panel finds that Complainant has established the second element of the Policy.

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, among others, that: Respondent did not file a response; Complainant
is a globally recognized tire company; the disputed domain name is confusingly similar to the MICHELIN
TRADEMARKS and redirects to a pay-per-click website; the disputed domain name was registered by an
individual with a history of cybersquatting; and the disputed domain name was registered after the
MICHELIN TRADEMARKS.

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.

Panels have held that the use of a domain name for a pay-per-click scheme constitutes bad faith when such use is built to benefit from the goodwill of a complainant’s trademark. WIPO Overview 3.0, section 3.5. The Panel finds that that has been the Respondent’s intention here. Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

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The Panel finds that 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 <michelinkronos.net> be transferred to Complainant.

/Enrique Ochoa de G. Argüelles/
Enrique Ochoa de G. Argüelles
Sole Panelist
Date: January 29, 2025