Compagnie Générale des Etablissements Michelin v Second Second

WIPO Case No. D2025-0127

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Second Second

Case No. D2025-0127

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 (the “U.S”).

2. The Domain Name and Registrar

The disputed domain name <michelincorp.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 January 14, 2025. connection with the disputed domain name. On January 14, 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 January 21, 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 January 22, 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 January 27, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2025.

The Center appointed Delia-Mihaela Belciu as the sole panelist in this matter on February 21, 2025. 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

The Complainant is a leading tire company, designing and distributing tires, services and solutions for its clients’ needs, providing digital services, maps and guides to help enrich trips and travels and to make them unique experiences, developing high technology materials that serve the mobility industry.

Headquartered in Clermont-Ferrand, France, the Complainant is present in 170 countries, having more than

124,000 employees and operating 117 tire manufacturing facilities and sales agencies in 26 countries.

Since 1889, the Complainant has innovated constantly to facilitate the mobility of people and goods. The “America's Best Large Employers” list, with 88 total awards for initial quality from J.D. Power & Associates, four times more awards than all other tire manufacturers combined, and ranking highest in “original equipment tires” category in the U.S. for 2018.

The Complainant is also present in North America, where its subsidiary is located, and where the Respondent is allegedly located. Headquartered in Greenville, South Carolina, U.S, Michelin North America has approximately 23,500 employees and operates 35 production facilities in the U.S and Canada. A vital extension of the research and development community is the Michelin on-vehicle test facility located in Laurens, South Carolina. This 3,300-acre site maintains over twelve special tracks of varying lengths and surfaces for testing tires, suspension system, driver training and event management.

The MICHELIN Guide was first launched in 1920 in order to help motorists plan their trips, thereby boosting well as the abandonment of paid-for advertisements in the guide. During the rest of 20th century, thanks to its serious and unique approach, the MICHELIN Guides became best-sellers without equals: the guide now rates over 30,000 establishments in over 30 territories across three continents, and more than 30 million MICHELIN Guides have been sold worldwide since.
car sales and in turn, tire purchases. In 1926, the guide began to award stars for fine dining establishments,
initially marking them only with a single star. Five years later, a hierarchy of zero, one, two, and three stars

was introduced, and in 1936, the criteria for the starred rankings were published. For the first time, the

The Complainant is in particular the owner of the following MICHELIN trademark registrations:

- the International trademark registration No. 771031 for MICHELIN, registered on June 11, 2001, for goods

and services in classes 5, 7, 8, 9,10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, 42;

- the U.S. national trademark No. 4126565 for MICHELIN, registered on April 10, 2012, for services in

classes 36, 37 and 39;

- the U.S. national trademark No. 892045 for MICHELIN, registered on June 2, 1970, for goods in class 12;

- the U.S. national trademark No. 3329924 for MICHELIN, registered on November 6, 2007, for services in

class 39.

In addition, the Complainant operates, among others, the domain name <michelin.com> registered on
December 1, 1993, in order to promote its services.

The disputed domain name <michelincorp.com> was registered on December 13, 2024, and resolves to an inactive webpage. According to the evidence available in the file, an e-mail server has been configured in relation to the disputed domain name which appears to have been used in phishing activities.

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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.

Notably, the Complainant contends that:

(i) the disputed domain name is confusingly similar to the Complainant’s MICHELIN mark as it contains the
MICHELIN mark in its entirety, with the addition of the term “corp” (i.e., abbreviation for “corporation”), which
is not sufficient to escape the finding that the disputed domain name is confusingly similar to the
Complainant’s mark MICHELIN. The Complainant also sustained that, the Complainant and its MICHELIN
mark enjoy a worldwide reputation and that previous panels have considered the MICHELIN mark to be

“well-known” or “famous”;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name for a number
of reasons, among which that, (1) the Respondent is not commonly known by the disputed domain name or
the name “MICHELIN”, (2) the Respondent is neither affiliated with the Complainant in any way nor was
authorized by the Complainant to use and register its trademark, or to seek registration of any domain name
incorporating its trademark, (3) the Respondent cannot claim prior rights or legitimate interest in the disputed
domain name as the MICHELIN marks precede the registration of the disputed domain name for years, (4)
the disputed domain name directs to an inactive page, while an e-mail server has been configured in relation
to the disputed domain name which appears to have been used in phishing activities;

(iii) the disputed domain name was registered and is being used in bad faith for a number of reasons, among which that, (1) the Complainant’s MICHELIN mark is widely known, including in the United States of America, where the Respondent is allegedly located. The Complainant alleged that several UDRP panels have

previously acknowledged the Complainant’s reputation worldwide. A quick “MICHELIN” trademark search
would have revealed to the Respondent the existence of the Complainant and its trademarks as well as
simple search via Google or any other search engine using the keyword “MICHELIN”, where all the first
results relate to the Complainant’s products or news, making it unlikely that the Respondent was not aware
of the Complainant’s rights in the MICHELIN trademark at the time of registering the disputed domain name,
(2) the composition of the disputed domain name, which entirely reproduces the Complainant’s MICHELIN
mark associated with the term “corp”, which makes it impossible for the Respondent not to have had in mind
the Complainant’s mark and company name while registering the disputed domain name, (3) the disputed
domain name directs to an inactive page, while an e-mail server has been configured in relation to the
disputed domain name which appears to have been used in phishing activities, as fraudulent emails
impersonating the Complainant’s subsidiary Michelin North America, Inc. were sent, the fraudulent emails
aimed at stealing valuable information such as credit card information from the Complainant’s clients, (4) the
Complainant’s MICHELIN mark registrations significantly predate the registration date of the disputed
domain name, (5) in the absence of any license or permission from the Complainant to use the widely known
MICHELIN mark, no actual or contemplated bona fide or legitimate use of the disputed domain name could
reasonably be claimed, (6) the Respondent registered the disputed domain name to prevent the

Complainant from using their MICHELIN marks in the disputed domain name.

B. Respondent

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

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6. Discussion and Findings

In order for the Complainant to succeed, such must prove, according to paragraph 4(a) of the Policy, that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

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

In case all three elements above have been fulfilled, the Panel is able to grant the remedy requested by the

Complainant. Thus, the Panel will deal with each of the requirements in turn.

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 Panel finds that the entirety of the MICHELIN mark is reproduced within the disputed domain name with the addition of the term “corp”, which is not sufficient to escape the finding that the disputed domain name is confusingly similar to the Complainant’s trademark MICHELIN. 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, in this case “corp”, may bear on assessment of the second and third elements, the Panel finds, as underlined above as well, that, 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.

In what concerns the addition of the generic Top-Level Domain (“gTLD”) “.com” in relation to the disputed domain name, such is viewed as a standard registration requirement, and is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

Based on the available record, the Panel finds that 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 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

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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.

Thus, based on the available evidence, the Respondent does not appear to be commonly known by the name “michelin”, and is not affiliated with the Complainant, nor has the Complainant’s authorization to use the MICHELIN mark.

Moreover, the disputed domain name resolves to an inactive webpage, while it was configured with an email server used to send fraudulent emails aimed at stealing valuable information such as credit cards information from the Complainant’s clients, which suggests that the disputed domain name was used for phishing

purposes.

Panels have held that the use of a domain name for an illegal activity, as in this case in relation to a phishing
scheme, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section
2.13.1.

Furthermore, the composition of the disputed domain name, incorporating the Complainant’s MICHELIN mark with the addition of the descriptive term “corp”, might lead to confusion for Internet users and as such, carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1.

All the above does not amount to a bona fide offering of goods or services, or to a legitimate noncommercial or fair use of the disputed domain name.

Based on the available record, the Panel finds that 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 Complainant’s rights in the MICHELIN mark predate the registration date of the disputed domain name.

In light of the above as well as of the high distinctive character of the MICHELIN mark, the Panel finds that it is not conceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s MICHELIN mark, which supports a finding of bad faith registration. WIPO Overview 3.0, section 3.2.2.

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.

In the present case, the Panel notes that, while the disputed domain name resolves to an inactive webpage, such was configured with an email server which was used to send fraudulent emails impersonating the Complainant’s subsidiary Michelin North America, Inc, aimed at stealing valuable information such as credit cards information from the Complainant’s clients, which suggests that, the disputed domain name was used for phishing purposes. Moreover, the disputed domain name incorporates in its entirety the Complainant’s distinctive MICHELIN mark with the addition of the descriptive term “corp”, leading thus to confusion and misleading Internet users into believing that any email which might be sent using the disputed domain name is sent by the Complainant or by an affiliated entity with the Complainant’s consent.

Panels have held that the use of a domain name for an illegal activity, as in this case in relation to a phishing scheme, constitutes bad faith. WIPO Overview 3.0, section 3.4.

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Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy and 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 <michelincorp.com> be transferred to the Complainant.

/Delia-Mihaela Belciu/
Delia-Mihaela Belciu
Sole Panelist
Date: March 7, 2025