Compagnie Générale des Etablissements Michelin v second second

WIPO Case No. D2024-5312

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. second second

Case No. D2024-5312

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 (“United States”).

2. The Domain Name and Registrar

The disputed domain name <michelinorth.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 December 26, 2024. On December 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 2024, 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 December 27, 2024, 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 December 27, 2024.

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 2, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 22, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 23, 2025.

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The Center appointed Andrea Cappai as the sole panelist in this matter on January 31, 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, Compagnie Générale des Etablissements Michelin, is a leading global tyre manufacturer employing over 124,000 people worldwide and operating 117 manufacturing facilities and sales agencies in 26 countries. In North America, the Complainant’s subsidiary employs approximately 23,500 people and

manages 35 production facilities in the United States and Canada.

Michelin owns and uses various domain names that reflect its trademark, including <michelin.com>

(registered on December 1, 1993) and <michelinnorthamerica.com> (registered on March 10, 2010).

The Complainant owns, among the others, the following:

- International Registration No. 771031 MICHELIN registered on June 11, 2001, covering classes 5, 7, 8, 9, 10, 11, 12, 16, 17, 18, 20, 21, 24, 25, 39, and 42.

- United States Trademark Registration No. 4126565 MICHELIN, registered on April 10, 2012 for

services in classes 36, 37, and 39.

- United States Registration No. 892045 MICHELIN, registered on June 2, 1970 for goods in class 12.

The disputed domain name <michelinorth.com> was registered on July 5, 2024. According to the
Complainant, the disputed domain name was used to send a fraudulent email impersonating the
Complainant’s North America affiliate in an attempt to collect sensitive financial data.

No further information is available regarding the Respondent.

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 the Respondent is neither affiliated with, nor authorised by, the
Complainant to register or use its well-known trademark and that the disputed domain name fully reproduces
the Complainant’s MICHELIN mark combined with the term “north” (while the letter “n” is omitted) directly
targeting the Complainant’s North American subsidiary. The Complainant highlights that omitting the
additional “n” between “Michelin” and “North” amounts to typosquatting, creating a confusingly similar
domain name.

Stressing its worldwide reputation, the Complainant maintains that the Respondent could not have been unaware of the Complainant’s rights at the time of registration. The Complainant also asserts that the Respondent’s passive holding of the disputed domain name, coupled with evidence of phishing activity impersonating the Complainant’s North American affiliate, demonstrates both bad faith and a lack of rights and legitimate interests. Attempts by the Complainant to contact the Respondent through a cease-and- desist letter went unanswered, which, in the Complainant’s view, indicates that any party with bona fide rights would have promptly responded to defend its position.

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B. Respondent

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

6. Discussion and Findings

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 MICHELIN 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, such as “orth”, in this case, 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.

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 recognised
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 record provides no evidence that the Respondent is in any way connected with the Complainant or commonly known by the disputed domain name. In light of the Complainant’s globally recognised mark and the explicit incorporation of “MICHELIN” alongside the term “orth” (which seems to be a typo of the term “north”), the Respondent appears to have been aware of the Complainant’s rights at the time of registration, and deliberately targeted on the Complainant’s trademark.

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Panels have held that the use of a domain name for illegal activity, such as phishing, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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 Complainant’s trademark has a strong reputation worldwide, intentionally exploited that reputation. No evidence suggests the Respondent has any legitimate rights or interests in the disputed domain name; and there is no license or permission from the Complainant, and the Respondent never attempted to justify the registration or contest the Complainant’s cease-and-desist demands.

making it improbable that the Respondent was unaware of it at the time of registration. By incorporating the

Moreover, the Respondent’s alleged phishing scheme, in which it impersonates the Complainant’s subsidiary
to gather sensitive data, is another crucial factor that must be taken into account. The Panel finds that the
Respondent’s registration and use of the disputed domain name constitutes bad faith.

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.

Panels have held that the use of a domain name for illegal activity, such as phishing, constitutes bad faith. and use of the disputed domain name constitutes 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 <michelinorth.com> be transferred to the Complainant.

/Andrea Cappai/
Andrea Cappai
Sole Panelist
Date: February 16, 2025