Compagnie Générale des Etablissements Michelin v Milen Radumilo

WIPO Case No. D2022-4192

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Milen Radumilo

Case No. D2022-4192

1. The Parties

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

Respondent is Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <michelinlaw.com> (the “Domain Name”) is registered with Long Drive Domains

LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2022. On November 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 8, 2022, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Perfect Privacy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on November 9, 2022, 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 November 10, 2022.

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 November 30, 2022. In accordance with the Rules, paragraph 5, the
due date for Response was December 20, 2022. Respondent did not submit any response. Accordingly,

the Center notified Respondent’s default on December 27, 2022.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 18, 2023. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant is a tire company headquartered in France, which designs, develops and distributes tires, provides digital services, maps and guides for trips and travels and develops materials for the travel industry. Complainant is present in 170 countries, with over 124,000 employees and operates 117 tire manufacturing facilities and sales agencies in 26 countries, including in the United States of America (“United States”).

The MICHELIN Guide was first launched in 1920 in order to help motorists plan their trips. In 1926, the guide began to award stars for fine dining establishments and later, the MICHELIN Guide included a list of hotels in Paris, lists of restaurants according to specific categories, without paid-for advertisements in the guide. The guide now rates over 30,000 establishments across three continents, with over 30 million MICHELIN Guides sold worldwide.

Complainant owns numerous registered MICHELIN trademarks around the world, including:

- United States registered trademark No. 0892045, for MICHELIN, registered on June 2, 1970;

- United States registered trademark No. 4126565, for MICHELIN, registered on April 10, 2012; and Complainant and its affiliates also operate several domain names including <michelin.com>, registered on
December 1, 1993, to promote its services. - International Trademark No. 771031, for MICHELIN, designating, among others, Romania, registered
on June 11, 2001.

The Domain Name was registered on August 9, 2022. At the time of the filing of the Complaint, the Domain Name redirected to various websites including a webpage displaying commercial links to third party websites featuring various contents, including links related to software products and/or legal services, for example

“Best Lawyers for Camp Lejeune Law”, “Lawyers Florida”, and “Mycase Software”. At the time of the name Michelinlaw.com may be for sale. Click here to enquire about this domain.”
Decision, the Domain Name resolves to a webpage displaying links to third party sites such as “Workable

On September 12, 2022, Complainant sent a cease-and-desist letter to the registrant via email, to attempt to resolve the current matter. Several reminders followed, but, according to Complainant, no response was received. Complainant then proceeded to file the Complaint.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.

In particular, Complainant contends that it has trademark registrations for MICHELIN and that Respondent registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide and well-known MICHELIN products and services.

Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s trademark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent

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has acted in bad faith in registering and setting up the Domain Name, when Respondent clearly knew of

Complainant’s rights.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name was registered and is being used in bad faith.

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself
mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an

admission that the complainant’s claims are true.

Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the MICHELIN trademarks, as noted above. Complainant has also submitted evidence which supports that the MICHELIN trademarks are widely known and a source identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the MICHELIN trademarks.

With Complainant’s rights in the MICHELIN trademarks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s trademark.

See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No.

D2010-0842.

Here, the Domain Name is confusingly similar to Complainant’s MICHELIN trademark. This trademark is
recognizable in the Domain Name. In particular, the Domain Name includes Complainant’s trademark
MICHELIN in its entirety, with an addition of the word “law” following the MICHELIN mark in the Domain
Name, which does not prevent a finding of confusing similarity between the Domain Name and the

MICHELIN trademark. See WIPO Overview 3.0, section 1.8.

Thus, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad

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v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a
prima facie showing, the burden of production shifts to the respondent, though the burden of proof always
remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or
legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its MICHELIN trademarks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the MICHELIN trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with the MICHELIN trademarks, and there is no evidence showing that Respondent has been commonly known by the Domain Name.

bona fide

In addition, Respondent has not used the Domain Name in connection with a offering of goods or name Michelinlaw.com may be for sale. Click here to enquire about this domain”. This has not been rebutted by Respondent. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875.

services or a legitimate noncommercial or fair use. Rather, at the time of the filing of the Complaint, the
Domain Name redirected to various websites including a webpage displaying commercial links to third party
websites featuring various contents, including links related to software products and/or legal services, for
example “Best Lawyers for Camp Lejeune Law”, “Lawyers Florida” and “Mycase Software”. At the time of
the Decision, the Domain Name resolves to a webpage displaying links to third party sites such as “Workable

Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does

not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under

paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain
Name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is
the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration

in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your website or other online location, by creating a likelihood of confusion with the complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or
service on your website or location.”

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The Panel finds that Complainant has provided ample evidence to show that registration and use of the established and known. Indeed, the record shows that Complainant’s MICHELIN trademarks and related products and services are widely known and recognized. Therefore, Respondent was likely aware of the MICHELIN trademarks when it registered the Domain Name, or knew or should have known that the Domain Name was confusingly similar to Complainant’s trademarks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v.

Serena, Axel, WIPO Case No. D2006-0007.

Further, the registration of the Domain Name incorporating Complainant’s MICHELIN trademark in its entirety suggests Respondent’s actual knowledge of Complainant’s rights in the MICHELIN trademarks at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name.

Moreover, the Domain Name diverted users to various websites including a webpage displaying commercial links to third party websites featuring various contents, including links related to software products and/or legal services, for example “Best Lawyers for Camp Lejeune Law”, “Lawyers Florida” and “Mycase Software” at the time of filing of the Complaint, and later, at the time of the Decision, the Domain Name resolves to a webpage displaying links to third party sites such as “Workable Ats”, “The Best Injury Lawyers” and “Criminal Lawyers Nearby”. Such use of the Domain Name demonstrates that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with Complainant’s MICHELIN trademark.

At the time of the Decision, the site also features a link stating “The domain name Michelinlaw.com may be for sale. Click here to enquire about this domain”. This further shows Respondent’s bad faith in capitalizing on the reputation and goodwill of Complainant’s trademark.

The Complainant has also provided evidence to show that Respondent has been named as a respondent in multiple proceedings under the UDRP, which constitutes Respondent’s pattern of bad faith conduct.

Moreover, an email server has been configured on the Domain Name and thus, there might be a risk that
Respondent would be engaged in a phishing scheme.

Finally, the Panel also notes the reputation of the MICHELIN trademarks, Respondent’s use of a privacy service, and the failure of Respondent to submit a response.

Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and

Complainant succeeds under the third element of paragraph 4(a) 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 Domain Name, <michelinlaw.com>, be transferred to Complainant.

/Kimberley Chen Nobles/
Kimberley Chen Nobles
Sole Panelist
Date: February 1, 2023