Compagnie Générale des Etablissements Michelin v Khang Nguyen

WIPO Case No. D2025-0831

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Khang Nguyen

Case No. D2025-0831

1. The Parties

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

The Respondent is Khang Nguyen, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <michelinstay.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2025. On February 28, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 3, 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 March 3, 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 March 4, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was March 24, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 25, 2025.

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The Center appointed Alistair Payne as the sole panelist in this matter on April 30, 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 tyre company that also offers other services and products and publishes travel guides, hotel and restaurant guides, maps and road atlases. The Complainant has operations worldwide and in Europe, North America and Asia, including in Viet Nam where the Respondent is located. In 2022, the Complainant announced that Hanoi and Ho Chi Minh City would join the international selection of the MICHELIN Guide.

The Complainant owns numerous trade mark registrations worldwide for its MICHELIN mark including
International trade mark MICHELIN No. 771031, registered on June 11, 2001, designating a range of
countries and Viet Nam; and Vietnamese trade mark No. 4-0302024-000 registered on June 18, 2018. The
Complainant also operates various websites to promote its goods and services including its website at

<michelin.com>.

The disputed domain name was originally registered on December 27, 2023. It resolves to an inactive page.

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 it owns registered trade mark rights for its MICHELIN trade mark and that the disputed domain name wholly contains this mark. It says that the addition of a generic term such as the common English word “stay” does not prevent a finding of confusing similarity.

The Complainant further submits that the Respondent is not affiliated with the Complainant in any way, nor has he been authorised by the Complainant to use and register its MICHELIN trade mark, or to seek registration of any domain name incorporating that mark. Furthermore, the Complainant says that the Respondent has no prior rights in the disputed domain name as the registration of its MICHELIN trade mark preceded the registration of the disputed domain name by many years.

It notes that the disputed domain name currently resolves to an inactive page. It asserts that the and that there is no evidence of the Respondent’s intention to make a noncommercial or fair use of the disputed domain name. Further, in circumstances that the Respondent never answered the Complainant’s agent’s cease and desist letter, in spite of the Complainant’s reminders, the Complainant says that this is further evidence that the Respondent has no rights or legitimate interest in the disputed domain name.

As far as registration and use in bad faith is concerned the Respondent submits that in view of the degree of renown attached to the MICHELIN mark and the ubiquitous nature of its brand internationally and on the Internet, it is implausible that the Respondent was unaware of the Complainant’s rights in the MICHELIN trade mark when it registered the disputed domain name. The Complainant submits that the Respondent either did, or should have known, of the Complainant’s trade mark before it registered the disputed domain name.

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It says that the Complainant’s MICHELIN trade mark registrations significantly predate the registration date of the disputed domain name and that a quick “MICHELIN” trade mark search would have revealed to the Respondent the existence of Complainant and of its trade mark and similarly that a Google search would have shown that that all the first results relate to the Complainant’s products or news. Therefore, says the Complainant, the Respondent probably registered the disputed domain name based on the notoriety and attractiveness of the Complainant’s trade mark and for its own purposes.

The Complainant submits that the disputed domain name initially directed to the registrar’s default page but subsequently resolves to an inactive page. It says that this amounts to a passive holding in that the Complainant’s MICHELIN trade mark has a very strong reputation and is widely known, the Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name and the Respondent did not register the disputed domain name in its own name but sought to mask its name.

It further submits that reproducing a famous trade mark such as the MICHELIN in a disputed domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good and that it is likely that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in the disputed domain name. The Complainant submits that overall this type of

conduct amounts to evidence of the Respondent’s use of the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

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 trade mark 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 trade mark 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.

Although the addition of other terms, here the common English word “stay”, 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.

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

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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.

The Complainant has submitted that the Respondent is not affiliated with the Complainant in any way nor has it been authorised by the Complainant to use and register its MICHELIN trade mark, or to seek registration of any domain name incorporating that mark. Furthermore, the Complainant has asserted that the Respondent has no prior rights in the disputed domain name as the registration of its MICHELIN trade mark preceded the registration of the disputed domain name by many years.

The Complainant has also submitted that the disputed domain name currently resolves to an inactive page and that the Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name and that there is no evidence of the Respondent’s intention to make a noncommercial or fair use of the disputed domain name. Further, in circumstances that the Respondent never answered the

Complainant’s cease and desist letter in spite of the Complainant’s reminders, the Complainant has submitted that this is indicative that the Respondent has no rights or legitimate interest in the disputed domain name.

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.

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.

In the present case, the Panel notes that the disputed domain name was registered long after the registration
of the Complainant’s MICHELIN trade mark. The MICHELIN trade mark is distinctive and extremely well
reputed worldwide and appears to have covered venues in two major Vietnamese cities for some years prior
to the registration of the disputed domain name by the Respondent based in Viet Nam. In these
circumstances and also considering that the Respondent failed to provide any explanation for its registration
of the disputed domain name whether before or after these proceedings, the Panel finds that it is more likely
than not that the Respondent was well aware of the Complainant’s business and MICHELIN trade mark
when it registered the disputed domain name.

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 found that the non-use of a domain name (including a blank or “coming soon” page or a parking page such as in this case), 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 of the Complainant’s MICHELIN trade mark and the very considerable use and degree of international renown attaching to it by the date of registration of the disputed domain name. In these circumstances and noting that there is no evidence of use of the disputed domain name by the Respondent, that the Respondent sought to mask its identity by using a privacy service and that it has not responded to the Complainant’s pre-action letter or sought to explain its conduct in registering the disputed domain name, the

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Panel finds any good faith use of the disputed domain name is implausible and that its passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

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 name <michelinstay.com> be transferred to the Complainant.

/Alistair Payne/
Alistair Payne
Sole Panelist
Date: May 6, 2025