Compagnie Générale des Etablissements Michelin v Name Redacted

WIPO Case No. D2023-4746

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Name Redacted

Case No. D2023-4746

1. The Parties

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

The Respondent is Name Redacted, United Kingdom (the “UK”).[1]

[1] The Respondent appears to have used the name of a third party when registering the disputed domain names. In light of the potential

2. The Domain Name and Registrar

The disputed domain name <michelintyre.info> (the “Disputed Domain Name”) is registered with

Squarespace Domains II LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15,

2023. On November 15, 2023, the Center transmitted by email to the Registrar a request for registrar amended Complaint on November 20, 2023.

verification in connection with the Disputed Domain Name. On November 16, 2023, 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 (Contact Privacy Inc. Customer
7151571251) and contact information in the Complaint. The Center sent an email communication to the
Complainant on November 16, 2023, providing the registrant and contact information disclosed by the

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2023. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on December 12, 2023.

The Center appointed Marilena Comanescu as the sole panelist in this matter on December 15, 2023. 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, established in 1889 in France, is currently a worldwide leading tire company, providing as

well digital services, maps, and guides to help enrich trips and travels and make them unique experiences,

and developing high technology materials that serve the mobility industry. The Complainant is present in 170

countries worldwide, has more than 124,000 employees and operates 117 tire manufacturing facilities and

sales agencies in 26 countries, including in North America, Europe, and the UK.

The Complainant received numerous recognitions and accolades in its industry and as an employer.

The Complainant owns worldwide trademark registrations for MICHELIN, such as the following:

- the International trademark registration number 771031 for the word MICHELIN, registered on June 11,

2001, covering goods and services in Nice classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, and

42 and designating numerous jurisdictions worldwide; and

- the UK trademark registration number UK00904836359 for the word MICHELIN, filed on January 4, 2006,

and registered on March 13, 2008, covering goods and services in Nice classes 1, 3, 5, 6, 7, 8, 9, 11, 12, 14,

16, 17, 18, 20, 21, 24, 25, 26, 28, 34, and 39.

The Complainant holds and operates numerous domain names comprising MICHELIN such as

<michelin.com> registered on December 1, 1993, and <michelintyre.com> registered on February 20, 2005.

The Disputed Domain Name was registered on August 8, 2023, and, at the time of filing of the Complaint, it

did not resolve to an active website.

Before commencing the present procedure, on August 21, 2023, the Complainant sent a letter to the

Registrar and the proxy service available on the Registrar’s platform, requesting the transfer of the Disputed

Domain Name to it. No response was received.

According to Annex 1 to the Complaint, email servers have been configured at the Disputed Domain Name

and thus, there may be a risk that the Respondent is engaged in a phishing scheme.

According to Annex 9 to the Amended Complaint, the name disclosed for the Respondent corresponds to an

infamous UK criminal, and the disclosed Organization name is identical to the name of the Complainant’s UK

subsidiary.

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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 to it.

Notably, the Complainant contends that the Disputed Domain Name is identical or confusingly similar to its

internationally well-known trademark and its domain names, adding to the MICHELIN trademark the

decriptive term “tyre”, closely related to the Complainant’s business; that the Respondent has no rights or

legitimate interests in the Disputed Domain Name; and that the Respondent registered and is using the

Disputed Domain Name in bad faith and the passive holding does not preclude a finding of bad faith.

Furthermore, the Respondent: did not react to the Complainant’s letters before the commencment of the

present proceedings; has employed a privacy shield in order to hide its identity; is most likely involved in

identity theft, since the name revealed by the Registrar belongs to an infamous UK criminal, and the entity

named as the Respondent belongs to the Complainant’s UK subsidiary, with a different address listed; and

the Disputed Domain Name is configured with multiple email servers, thus increasing the risk of phishing.

B. Respondent

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

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities 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 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 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.

Although the addition of other term, here “tyre”, 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.

Based on the available record, the Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exhaustive 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 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 notes that the composition of the Disputed Domain Name itself carries a risk of implied affiliation

given that the Complainant’s distinctive trademark has been combined with the descriptive term “tyre”.

According to the evidence provided in the Complaint, the Respondent has registered the Disputed Domain

Name using false identity and active MX records are associated with the Disputed Domain Name. In the

event emails were to be sent using the Disputed Domain Name, it is recalled that panels have held that the use of a domain name for illegal activity (such as phishing or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Based on the available record, 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 Respondent registered the Disputed Domain Name in bad faith

since the MICHELIN mark is registered since at least 2001 and it is well-known worldwide, and furthermore

the Respondent fraudulently used the name of the Complainant’s UK subsidiary as listed contact information

in the WhoIs.

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.

At the time of filing the Complaint, the Disputed Domain Name directs towards an inactive page.

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. Having reviewed the available record,

the Panel finds the non-use of the Disputed Domain Name does not prevent a finding of bad faith in the

circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each

case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the

degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a

response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s

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concealing its identity or use of false contact details (noted to be in breach of its registration agreement).

WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the international

reputation of the Complainant’s trademark; the composition of the Disputed Domain Name which includes

the Complainant’s trademark together with the term “tyre”, closely related to the Complainant’s activity, and

being virtually identical to the Complainant’s domain name <michelintyre.com>; the Respondent’s failure to

respond to the Complainant’s letters and to the present proceedings; and the use of privacy shield and false

contact details in the WhoIs, and finds that, in the circumstances of this case, the passive holding of the

Disputed Domain Name does not prevent a finding of bad faith under the Policy.

Further, Panels have held that using privacy or proxy services merely to avoid being notified of a UDRP

proceeding filed against it and using a domain name for illegal activity (here, claimed phishing activities, but

also the seeming impersonation of the Complainant through the very registration details used for the

Disputed Domain Name) constitute bad faith. WIPO Overview 3.0, sections 3.6 and 3.4.

Based on the available record, 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 <michelintyre.info> be transferred to the Complainant.

/Marilena Comanescu/

Marilena Comanescu

Sole Panelist

Date: December 29, 2023

identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this

decision an instruction to the Registrar regarding transfer of the disputed domain names, which includes the name of the Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated

Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v.

FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.