Compagnie Générale des Etablissements Michelin v Second Second

WIPO Case No. D2025-1322

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Second Second

Case No. D2025-1322

1. The Parties

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

Dreyfus & associés, France.

The Respondent is Second Second, United States of America.

2. The Domain Name and Registrar

The disputed domain name <michelinusainc.com> is registered with Wild West Domains, LLC

(the “Registrar”).

3. Procedural History

The Complaint was f iled with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2025. On the same day, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On April 2, 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 name and the contact information of the Respondent (Domains By Proxy, LLC) provided in the Complaint. The Center sent an email to the Complainant on April 3, 2025, providing
the information disclosed by the Registrar, and inviting the Complainant to submit an amendment to

the Complaint. The Complainant f iled an amended Complaint on April 4, 2025.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of
the Complaint, and the proceedings commenced on April 8, 2025. In accordance with the Rules,
paragraph 5, the due date for Response was April 28, 2025. The Respondent did not submit any response.
Accordingly, the Center notif ied the Respondent’s default on May 2, 2025.

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The Center appointed Simone Lahorgue Nunes as the sole panelist in this matter on May 14, 2025. the Rules, paragraph 7.

The Panel f inds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

4. Factual Background

The Complainant, founded in 1889, is headquartered in Clermont-Ferrand, France and also operates in North America, where its subsidiary is located. The company is “dedicated to enhancing its clients’ mobility, sustainably, designing and distributing the most suitable tires, services and solutions for its clients’ needs, providing 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.”

According to the Complaint, the Complainant is present in more than 171 countries worldwide, has more than 124,000 employees and operates 117 tire manufacturing facilities and sales agencies in 26 countries.

The Complainant has provided evidence of being the right holder of the trademark MICHELIN in several jurisdictions. For instance, in the United States of America, the registration date is June 2, 1970, for the registration number 892045; in the European Union, the registration date is October 24, 2001, for the registration number 001791243; and the International registration date June 11, 2001, for

the registration number is 771031.

Furthermore, the Complainant registered the domain name <michelin.com> on December 1, 1993.

The disputed domain name, which resolves to an inactive webpage, was registered by the Respondent on
December 13, 2024.

The Complainant sent out a cease-and-desist letter to the Respondent and the Registrar asserting its trademark rights and requesting the transfer of the domain name f ree of charge, on January 24, 2025. The Respondent did not reply to the Complainant’s cease-and-desist letter.

5. Parties’ Contentions
A. Complainant

The Complainant contends that “the disputed domain name reproduces Complainant’s trademark in its entirety, which previous panels have considered to be ‘well-known’ or ‘famous’”.

The Complainant argues that “many other Panels have consistently determined that a domain name which consists of a trademark combined with a geographical term is still confusing and does not provide additional specif ication or suf f icient distinction f rom Complainant or its marks”.

The Complainant af f irms that the “Respondent associates Complainant’s trademark MICHELIN with the abbreviation ‘inc’, not dispelling any likelihood of confusion. On the contrary, it increases the risk of confusion […]”.

The Complainant points out that it “has consistently used the trademark MICHELIN in connection with a wide variety of products and services around the world. Consequently, the public has learnt to perceive the goods and services offered under this trademark as being those of Complainant. Therefore, the public would reasonably assume that the disputed domain name would be owned by Complainant or at least assume that it is related to the Complainant”.

Moreover, the Complainant argues that “the mere adjunction of a generic Top-Level-Domain (“gTLD”) such as ‘.com’ is irrelevant as it is well established that the gTLD is insuf f icient to avoid a f inding of confusing similarity”.

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The Complainant contends that “by registering said domain name, Respondent created a likelihood of confusion with Complainant’s trademark”.

In addition, the Complainant affirms that the “Respondent is neither affiliated with Complainant in any way, nor has he been authorized by Complainant to use and register its trademark, or to seek registration of any domain name incorporating said trademark”.

The Complainant argues that the “Respondent cannot claim prior rights or legitimate interest in the domain name, as the MICHELIN trademarks precede the registration of the disputed domain name for years”.

Furthermore, the Complainant contends that there is “simply no evidence that Respondent may be commonly known by the name MICHELIN”.

The Complainant argues that “Panels found that in the absence of any license or permission f rom
the Complainant to use such widely-known trademarks, no actual or contemplated bona f ide or legitimate
use of the domain name could reasonably be claimed”.

The Complainant points out that the “Respondent fails to show any intention of non-commercial or fair use of the disputed domain name”.

In addition, the Complainant affirms that the “e-mail server has been conf igured on the disputed domain name and thus, there might be a risk that Respondent is engaged in a phishing scheme”.

The Complainant contends that it “is implausible that Respondent was unaware of Complainant when he registered the disputed domain name” and that the “Complainant is well-known throughout the world, including U.S.A. where Respondent is located”.

The Complainant affirms that “reproducing famous trademarks in a domain name in order to attract Internet users to an inactive website cannot be regarded as fair use or use in good faith” and that “it is likely that Respondent registered the domain name to prevent Complainant from using their trademarks in the disputed domain name”.

Finally, the Complainant argues that “the use of an email address with the disputed domain name presents a significant risk where Respondent could aim at stealing valuable information such as credit cards f rom Complainant’s clients or employees”.

B. Respondent

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

6. Discussion and Findings

The analysis of the Complainant’s arguments and of the presented evidence leads to the conclusion that the Complaint should be upheld, based on the following grounds:

A. Identical or Confusingly Similar

It is well accepted that the f irst 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.

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.

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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, “usa” and “inc” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a f inding 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 f inds the f irst 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 of ten 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 shif ts 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.

As asserted by the Complainant, the Panel notes that the Respondent does not appear to hold any trademark rights to use the MICHELIN term. There is also no evidence that the Respondent retains unregistered trademark rights to the term MICHELIN, neither has the Respondent received any license f rom the Complainant to use domain names featuring the MICHELIN Trademark.

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 further notes that the disputed domain name is composed of the MICHELIN Trademark combined with a geographical term (“usa”) where the Complainant’s subsidiary is present and the generic corporate designation (“inc.”). Therefore, the nature of the disputed domain name may mislead Internet users into believing that the disputed domain name belongs to or is associated with the Complainant, contrary to the fact.

In light of these factors, the Panel f inds the second element of the Policy has been met.

C. Registered and Used in Bad Faith

The Panel notes that, for the purpose of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the same Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and is being 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.

In the present case, the Panel notes that the Respondent’s bad faith registration and use of the disputed domain name for the following reasons:

First, the use of the trademark in the disputed domain name with the inclusion of the name of the country where the Complainant’s subsidiary is headquartered together and the generic corporate designation “Inc.”, suggests that the Respondent has registered the disputed domain name with the actual knowledge of

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the Complainant and its trademarks, and has done so in an attempt to create a likelihood of confusion with

the Complainant.

Second, the Respondent concealed its identity when registering the disputed domain name.

Third, the Respondent has never replied to the cease-and-desist letter sent by the Complainant.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a f inding 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 or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and f inds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a f inding of bad faith under the Policy.

The Panel f inds 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 <michelinusainc.com> be transferred to the Complainant.

/Simone Lahorgue Nunes/
Simone Lahorgue Nunes
Sole Panelist
Date: May 28, 2025