Compagnie Générale des Etablissements Michelin v Melissa Foo, Mydentist

WIPO Case No. D2024-5300

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Melissa Foo, Mydentist

Case No. D2024-5300

1. The Parties

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

The Respondent is Melissa Foo, Mydentist, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <premichelin.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 December 24, 2024. On December 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 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 (Domains By Proxy, LLC, DomainsByProxy.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 27, 2024, 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 December 27, 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 the Respondent of the
Complaint, and the proceedings commenced on January 6, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 26, 2025. The Response was filed with the Center on January
24, 2025.

On January 29, 2025, upon the suspension request of the Complainant, the proceeding was suspended for purposes of settlement discussions. On February 24, 2025, the Complainant submitted a supplemental filing

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(the “Complainant’s Supplemental Filing”). On the same day, the Center received a supplemental filing from the Respondent (the “Respondent’s Supplemental Filing”). The proceeding was reinstituted on February 28, 2025.

The Center appointed James Wang as the sole panelist in this matter on March 11, 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.

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. 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. The MICHELIN 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 also present in Malaysia, where the Respondent is allegedly located, with 143 Michelin

Star awarded restaurants.

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

- United States of America trademark registration No. 892045 for MICHELIN, registered on June 2, 1970;
- Malaysian trademark No. M/082267 for MICHELIN, registered on February 22, 1982; and

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

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 was registered on November 9, 2022, and resolved to a Registrar parking webpage with pay-per-click (“PPC”) links at the time when the Complaint was filed. Presently, the disputed domain name resolves to a Registrar parking webpage displaying the image of a dog and the words “Unleash the Fun!”.

The Complainant sent a cease-and-desist letter and multiple reminders in attempts to resolve the dispute over the disputed domain name but received no reply from the Respondent.

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.

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Notably, the Complainant contends that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered and is being used in bad faith.

The Complainant requested that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent contends that the Complaint is frivolous and unsubstantiated. The Respondent’s main arguments include:

- The disputed domain name was registered to honor the Respondent’s prematurely born pet dog, with the name composed of “premi” (representing “premature”) and “chelin”, corresponding to the Chinese characters

策 (che) and 麟 (lin).

- Due to the unfortunate death of the pet dog and other personal circumstances, the disputed domain name

has never been used.

- The Respondent has not gained any monetary or non-monetary benefits from the disputed domain name.

- The Respondent’s use of privacy protection services to register the disputed domain name was for
safeguarding personal data privacy and not an act of bad faith concealment.

- Upon notification of the Complaint, on a goodwill basis towards an amicable resolution of the matter, the Respondent has used a new AI tool provided by GoDaddy to select a category relevant to her pet for the webpage.

The Respondent requested that the Complaint be dismissed.

6. Discussion and Findings

According to 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;

(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 Complainant has provided evidence that the Complainant owns numerous trademark registrations for
MICHELIN.

The applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD; the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element. Therefore, the extension “.com”, as the TLD of the disputed domain name, shall be disregarded under the confusing similarity test in this case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

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The disputed domain name incorporates the entirety of the Complainant’s MICHELIN trademark. As the MICHELIN trademark is recognizable within the disputed domain name, the disputed domain name is confusingly similar to the Complainant’s trademark. The addition of “pre” into the disputed domain name does not prevent a finding of confusing similarity. See WIPO Overview 3.0, sections 1.7 and 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.

According to the Complainant, the Respondent is neither affiliated with the Complainant nor has been authorized to use and register the Complainant’s trademark, or to seek registration of any domain name incorporating the Complainant’s trademark. There is no evidence that the Respondent has used or is preparing to use the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has been commonly known by the disputed domain name.

According to the Respondent, the disputed domain name was registered to honor the Respondent’s prematurely born pet dog. The Respondent claims that “premi” represents “premature” and “chelin” corresponds to the Chinese characters 策 (che) and 麟 (lin).

Given that “premi” is not a common abbreviation for “premature” and that pinyin for the Chinese character 策 is actually “ce” instead of “che”, the Panel finds the Respondent’s allegations unconvincing. Moreover, as noted by the Complainant in observations submitted in the Complainant’s Supplemental Filing, the existence of the alleged pet dog could have been corroborated through documents such as veterinary records, photos, or social media posts. The Respondent failed to submit these easily obtainable and verifiable documents, instead providing far-fetched and weak explanations, which demonstrates that the Respondent’s claim of registering the disputed domain name to honor a prematurely born pet dog does not hold up.

In addition, the Respondent’s previous use of the disputed domain name to display PPC links which compete with or capitalize on the reputation and goodwill of the Complainant’s mark, and are therefore likely to confuse Internet users, does not represent a bona fide offering. See WIPO Overview 3.0, section 2.9.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent failed to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Given the long history and international fame of the Complainant’s MICHELIN trademark and given the fact the Complainant is present in Malaysia, where the Respondent is allegedly located, it would be inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s

trademark at the time of the registration. The Panel finds that the disputed domain name was registered in
bad faith.

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The Panel noticed that the disputed domain name previously resolved to a Registrar parking webpage containing PPC links related to the Complainant’s business. This indicates the Respondent’s intent to profit in some fashion from or otherwise exploit the Complainant’s trademark.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The change of the content at the disputed domain name does not change this finding.

The Panel therefore 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 <premichelin.com> be transferred to the Complainant.

/James Wang/ James Wang Sole Panelist Date: March 25, 2025