Compagnie Générale des Etablissements Michelin v Micheline Julien

WIPO Case No. D2024-0318

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Micheline Julien

Case No. D2024-0318

1. The Parties

The Complainant is Compagnie Générale des Etablissements Michelin, France, represented by

Dreyfus & associés, France.

The Respondent is Micheline Julien, France.

2. The Domain Name and Registrar

The disputed domain name <michelinenterprise.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 January 25, 2024. On January 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 29, 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 January 30, 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 February 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2024.

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The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on March 5, 2024.
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, a French company with roots in 1889, is a world leader in the tire industry. Headquartered in Clermont-Ferrand, France, it operates in 171 countries with more than 124,000 employees and has 117 tire manufacturing facilities and sales agencies in 26 countries. In addition, the Complainant offers digital services, maps, and high-technology materials for the mobility industry, and publishes yearly the Michelin Guide (30 million copies sold) which awards since 1926 stars to fine dining establishments.

The Complainant owns a large portfolio of registered trademarks, including, inter alia, French trademark No. 3073702 for MICHELIN, registered on December 22, 2000, and International trademark registration No. 771031 for MICHELIN, registered on June 11, 2001 (together referred to hereinafter as: the “Mark”).

The Complainant is also the owner of a large portfolio of domain names containing the element “michelin”, including <michelin.com>, registered on December 1, 1993.

The Respondent, according to the disclosed WhoIs information for the disputed domain name, is located in
France.

The disputed domain name was registered on September 20, 2023, and resolved initially to a site under construction in French, repeatedly displaying the term “MichelinEnterprise”, and subsequently to a parking page of the Registrar featuring pay-per-click commercial links redirecting to websites of unrelated third parties and targeting inter alia the Complainant’s main field of activity, i.e., tires, and finally to the Registrar’s site. At the time of this decision, the disputed domain name still resolves to the Registrar’s site.

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.

(i) Notably, the Complainant contends that the disputed domain name reproduces the Mark, in which it has rights, and is confusingly similar to the Mark insofar as the disputed domain name contains the Mark in its entirety and that the addition of the term “enterprise” after the Mark is not capable of dispelling the confusing

similarity.

(ii) The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never authorized the Respondent to use the Mark in any manner and that the Respondent has never had any affiliation with the Complainant.

(iii) The Complainant submits that the Respondent has registered the disputed domain name in bad faith. The Complainant alleges that the Respondent had knowledge of the Mark when registering the disputed domain name.

(iv) The Complainant submits that the Respondent is using the disputed domain name in bad faith.

(v) The Complainant requests that the disputed domain name be transferred to the Complainant.

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B. Respondent

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

6. Discussion and Findings

6.1. Procedural Aspects - Failure to Respond

As aforementioned, no Response was received from the Respondent.

Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

The Panel does not find any exceptional circumstance in this case which would cause the Panel to proceed differently.

Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.

Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the

Respondent’s default as it considers appropriate under the circumstances.

In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the
reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In
particular, by failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set
forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent
has any rights or legitimate interests in the disputed domain name, such as making legitimate
noncommercial or fair use of the disputed domain name.

Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.

6.2. Requirements of Paragraph 4(a) of the Policy

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.

Based on the available record, the Panel finds 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 the Mark is recognizable 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.

While the addition of another term here, such as the English word “enterprise”, 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.

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Regarding the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name, it is well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity. WIPO Overview 3.0, section 1.11.1.

Based on the available record, 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.

While 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 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. WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the 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 record, the Panel finds the second element of the Policy has been established.

C. Registered and Used 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.

As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name.

First, the registration of a domain name that is confusingly similar to a famous or widely-known trademark by an entity that has no relationship to that mark may be, depending on the circumstances, evidence of opportunistic bad faith. See section 3.1.4, WIPO Overview 3.0.

Second, it is well-established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, evidence of bad faith registration. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No.

D2001-0775.

Prior UDRP panels have found that the Mark is well known or famous. See for instance Compagnie
Générale des Etablissements Michelin v. Vyacheslav Nechaev, WIPO Case No. D2012-0384;
Compagnie Générale des Etablissements Michelin v. Milan Kovac/Privacy--Protect.org, WIPO Case No.
D2012-0634; Compagnie Générale des Etablissements Michelin (Michelin) v. Zhichao Yang, WIPO Case
No. D2013-1418; Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu, WIPO Case
No. D2014-1240; Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host
Master / Above.com Domain Privacy, WIPO Case No. D2015-1671; Compagnie Générale des
Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios,

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WIPO Case No. D2017-0234; Compagnie Générale des Etablissements Michelin v. Kanoksak Puangkham,
WIPO Case No. D2018-2331 and Compagnie Générale des Etablissements Michelin v. World Industrial,

LNQ, WIPO Case No. D2019-0553.

In this case, considering the fact that the Respondent is located in France (where the Complainant is
headquartered), and the evidence provided by the Complainant that the disputed domain name, at some
point in time, resolved to a page featuring pay-per-click links, the Panel finds that it is impossible to believe
that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark.
See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter
Designs, WIPO Case No. D2001-1384; citing Cellular One Group v. Paul Brien, WIPO Case No.
D2000-0028; and Sembcorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.

Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have a duty to abstain from registering and using a domain name, which is either identical or confusingly similar to a prior trademark held by others and which would infringe upon or otherwise violate the rights of a third party.

See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries
Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO
Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media
General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible

Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

In the present case, the Panel finds that the Respondent used the disputed domain name to attract, for
commercial gain, Internet users by creating a likelihood of confusion with the Mark, thus infringing the

Complainant’s rights.

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 <michelinenterprise.com> be transferred to the Complainant.

/Louis-Bernard Buchman/
Louis-Bernard Buchman
Sole Panelist
Date: March 14, 2024