Compagnie Générale des Etablissements Michelin v Joseph Lee

WIPO Case No. D2025-2257

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Joseph Lee

Case No. D2025-2257

1. The Parties

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

The Respondent is Joseph Lee, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain names <bfgoodrich.one>, <bfgoodrichtires.one>, and <bfgoodrichtrucktires.one> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2025.
On June 10, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On June 12, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain names
which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for
Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the
Complainant on June 13, 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 June 13, 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 June 20, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2025.

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The Center appointed Anita Gerewal as the sole panelist in this matter on July 22, 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, founded in 1889, is one of the world’s leading tire companies. Beyond tires, it offers digital services, maps, and travel guides to enrich journeys and develop innovative high-tech materials for the mobility industry. It is headquartered in Clermont-Ferrand, France and operates nine research and development centers, 123 production sites across 26 countries, and maintains a commercial presence in 170 countries, supported by a global workforce of 125,000 employees. BFGOODRICH is one among the numerous tire brands owned by the Complainant.

The Complainant is the owner of numerous BFGOODRICH trademark registrations internationally, including the following:

• International trademark registration No.1662353, registered on December 30, 2021 designating inter alia United Arab Emirates, Canada, United Kingdom, Indonesia, Singapore and covering goods in classes 03, 06, 07, 08, 09, 11, 12, 14, 16, 18, 20, 21, 22, 24, 25, 27, 28;

• United States trademark registration No. 1087694, registered on March 21, 1978 and covering goods in

class 12;

• French trademark registration No. 3447866, registered on February 2, 2007, and covering goods in class

12.

The Complainant is also the owner of among others, the following domain names:

• <bfgoodrich.com> registered on August 15, 1996; and
• <bfgoodrichtires.com> registered on June 19, 1997.

The disputed domain names were registered on March 1, 2025. All three disputed domain names resolve to inactive pages.

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 names.

Notably, the Complainant contends that the disputed domain names are identical to the Complainant’s trademark BFGOODRICH and its official domain names, wherein the disputed domain names reproduce the Complainant’s trademark in its entirety. By registering the disputed domain names, the Respondent has created a likelihood of confusion with the Complainant’s trademark, potentially misleading Internet users into believing that the disputed domain names are associated with the Complainant.

The Complainant further contends that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark. The Respondent has no prior rights or legitimate interest in the disputed domain names. The registration of the BFGOODRICH trademarks preceded the registration of the disputed domain names for years.

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The Complainant alleges that the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain names and consequently, the Respondent fails to show any intention of noncommercial or fair use of the disputed domain names.

The Complainant finally asserts that the disputed domain names were registered and are being used in bad faith. The Complainant submits that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain names considering that the Complainant is well-known throughout

the world, including the United States, where the Respondent is located; the composition of the disputed
domain names entirely reproduces Complainant’s trademark BFGOODRICH differing only in the extension
from the Complainant’s official domain names; and the Complainant’s BFGOODRICH trademark
registrations significantly predate the registration date of the disputed domain names.

The Complainant also submits that the Respondent’s act of reproducing famous trademarks in the disputed domain names to attract Internet users to an inactive website or engage in passive holding cannot be considered fair use or use in good faith. It is likely that the Respondent registered the disputed names to prevent the Complainant from using their trademarks, which constitutes evidence of bad faith. Additionally, the configuration of email servers on the disputed domain names raises concerns that the Respondent may be involved in a phishing scheme, posing a significant risk of stealing sensitive information, such as credit card details, from the Complainant’s clients or employees.

The Complainant also submitted that it sent a cease-and-desist notice and reminders to the Respondent concerning its improper use of the disputed domain names but received no reply.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which

the Complainant has rights;

(ii) the Respondent has no rights or legitimate interest 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

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 names. 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 BFGOODRICH trademark 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 names. Accordingly, the disputed domain name <bfgoodrich.one> is identical to the Complainant’s mark, while <bfgoodrichtires.one> and <bfgoodrichtrucktires.one> are confusingly similar to it for purposes of the Policy. WIPO Overview 3.0, section 1.7.

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Although the addition of other terms, here, “tires” and “truck”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms do 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.

The addition of the generic Top-Level Domain (“gTLD”) “.one” shall be disregarded for the purposes of assessing confusing similarity, as it is a standard requirement of registration.

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 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.

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 names. The Complainant has asserted that the Respondent has no connection or affiliation with the Complainant, nor has the Complainant consented to the Respondent’s use of the disputed domain names, which incorporate the Complainant’s trademark in its entirety. 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 names such as those enumerated in the Policy or otherwise.

The Panel finds 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.

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.

The Panel notes that the widespread reputation of the Complainant’s BFGOODRICH mark was recognized
in previous UDRP decisions, for example WIPO Case No. D2016-1924, Compagnie Générale des
Etablissements Michelin v. Shuitu Chen, WIPO Case No. D2015-1787, Compagnie Générale des
Etablissements Michelin v. Isaac Goldstein, Hulmiho Ukolen, Poste restante/Domain Admin, Whois
protection, this company does not own this domain name s.r.o., WIPO Case No. D2014-1240, Compagnie

Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu.

In the present case, the disputed domain names include the Complainant’s well-known trademark in its
entirety, with two of them adding descriptive terms, “tires” and “trucks,” which directly target the
Complainant’s field of activity. The disputed domain names were registered long after the registration of the

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Complainant’s distinctive BFGOODRICH mark. This suggests that the Respondent knew or should have known of the Complainants’ trademark rights.

The Panel also notes that the disputed domain names resolve to inactive pages. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available

record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, and the
composition of the disputed domain names, and finds that in the circumstances of this case the passive

holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

Thus, the Panel concludes that the disputed domain names were registered and are being used in bad faith.

The Panel 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 names <bfgoodrich.one>, <bfgoodrichtires.one>, and

<bfgoodrichtrucktires.one> be transferred to the Complainant.

/Anita Gerewal/
Anita Gerewal
Sole Panelist
Date: August 4, 2025