Compagnie Générale des Etablissements Michelin v Second Second

WIPO Case No. D2025-0968

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Second Second

Case No. D2025-0968

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 (“USA”).

2. The Domain Name and Registrar

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

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2025. On March 10, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 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 named Respondent (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 11, 2025, 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 March 11, 2025.

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 March 14, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 3, 2025. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 8, 2025.

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The Center appointed Jane Lambert as the sole panelist in this matter on April 15, 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 public company incorporated in France with subsidiary and associate companies in in the USA and Canada, including a 3,300 acre on-vehicle test facility at Laurens, South Carolina.

170 countries. Founded in 1889, those companies employ 124,000 workers in 117 manufacturing plants and
36 sales agencies. The principal business of the companies is tire manufacturing, but they also publish the
well-known red guides to hotels and restaurants and green guides to tourist destinations. The companies
have won awards for innovation, employment practices, product quality and other achievements. The

The Complainant is the registered proprietor of the following trademarks:

Mark	Jurisdiction	Number	Date	Classes
MICHELIN	International	771031	June 11, 2001	05, 07, 08, 09, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, 42
MICHELIN	USA	4126565	April 10, 2012	36, 37, 39
MICHELIN	USA	892045	June 2, 1970	12

The disputed domain name was registered on December 11, 2024. By an email to Wild West Domains LLC dated 23 January 2025, the Complainant’s lawyers called upon the owner of the disputed domain name to transfer the same to the Complainant free of charge or face “all necessary measures” including legal proceedings, if it failed to respond within 8 days. Despite several reminders, the Respondent failed to respond to the Complainant.

The disputed domain name was held by the privacy service Domains by Proxy LLC on behalf of Second Second. According to Annex 1 to the Complaint, no server IP address could be found when the Complainant typed the disputed domain name into a browser on March 10, 2025, nor on April 20, 2025, when the Panel tried to do the same.

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.

First, the Complainant submits that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. It cites the registrations of the word MICHELIN mentioned in the above table as well as US trademark number 3329924. It notes that the disputed domain name reproduces that word mark in its entirety. Referring to L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No.

D2011-1627Rapidshare AG, Christian Schmid v InvisibleRegistration.com, Domain Admin

, , WIPO Case No. Third Edition (“WIPO Overview 3.0”), the Complainant observes that it is well established that “Where a domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark”.

D2010-1059, The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No.

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The Complainant suggests that the insertion of the letters “n”, “o”, “r”, “t” and “h” after “michelin” indicates an intention to target the Complainant’s North American subsidiary. Whether or not that is the case, it is settled that the insertion of a geographical term fails to distinguish a disputed domain name from a confusingly

similar trademark. The Complainant cites Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No.
D2017-0287, L’Oréal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd, WIPO
Case No. D2008-1640 , L’Oréal v. Liao Quanyong, WIPO Case No. D2007-1552, Accor v. Serdar Ceylan,
WIPO Case No. D201-2231, and LeSportsac Inc. v. Zhao Zhao, WIPO Case No. D2012-2505, in support of
that submission. The same is true of the addition of the abbreviation “inc” after “north” and the generic
Top-Level Domain “com”.

Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. It states that the Respondent is neither affiliated with the Complainant nor authorized by it to use its trademark. The Respondent has no right to apply for the registration of any domain name that

incorporates its tradmark. There is no evidence that the Respondent is commonly known as “Michelin” or by that contention.

any name that incorporates that word. As the disputed domain name does not appear to have been used,
the Respondent is unlikely to be making demonstrable preparations to use the disputed domain name or a
name corresponding to it with a bona fide offering of goods or services. Failure by a respondent to respond
to a complainant’s cease and desist letter has been regarded as a tacit admission that the respondent has
no rights or legitimate interests. The Complainant relies on Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,

Thirdly, the Complainant contends that the disputed domain name was registered and is being used in bad faith.

In support of its contention that the disputed domain name was registered in bad faith, the Complainant argues that bad faith can be found where a respondent knew or should have known of a complainant’s trademark but nevertheless registered a confusingly similar domain name knowing that he or she had no

rights or legitimate interests in such domain name. In support of that argument the Complainant relies on Respondent was unaware of the Complainant. Indeed, the reproduction of the Complainant’s trademark in full and its juxtaposition with the word “north” strongly suggests that it had the Complainant’s North American business in mind.

Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 and, The Gap,

The Complainant adds that paragraph 2 of the Policy requires an applicant for the registration of a domain name to warrant and represent that its registration will not infringe upon or otherwise violate the rights of any third party. Such warranty and representation required the Respondent to carry out a trademark search, Even if the Respondent was unaware of the Complainant, its products and advertisements, it would have found the Complainant upon making the most cursory of trademark searches.

Alstom, Bouygues v. WebmasterD2008-0281Guerlain S.A. v. Peikang,

Relying on , WIPO Case No. , and excuse no actual or contemplated bona fide or legitimate use of the domain name could possibly be claimed.

Referring to MasterCard International Incorporated (“MasterCard”) v. Wavepass AS, WIPO Case No. D2012-1765, and Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095, the Complainant argued that previous panels had held that where a disputed domain name is confusing similar

to a complainant’s trademark “a likelihood of confusion is presumed, and such confusion will inevitably result
in the diversion of Internet traffic from Complainant’s site to Respondent’s site”.

Inactivity of a domain name does not preclude a finding of use in bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, bad faith was found where (1) the complainant’s trademark had a strong reputation and was widely known; (2) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) the respondent had taken active

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steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) the respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement.

B. Respondent

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

6. Discussion and Findings

The agreement for the registration of the disputed domain name incorporated paragraph 4 (a) of the Policy:

“Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that
a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure,
that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the
complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.”

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.

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 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, namely “north” and “inc”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms 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.

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.

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

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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 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.

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. WIPO Overview 3.0, section 3.3. Having
reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s
trademark, the composition of the disputed domain name, the use a privacy service masking apparently fake
registration details relating to the physical address of a large third-party corporation, and Respondent’s
failure to respond to the cease and desist letter or to file a response 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.

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 <michelinnorthinc.com> be transferred to the Complainant.

/Jane Lambert/
Jane Lambert
Sole Panelist
Date: April 29, 2025