Compagnie Générale des Etablissements Michelin v Tariq Rashid, JSK

WIPO Case No. D2024-5024

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Tariq Rashid, JSK
TRADING LLC

Case No. D2024-5024

1. The Parties

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

The Respondent is Tariq Rashid, JSK TRADING LLC, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <michelintyres-pk.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2024. On December 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 9, 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 9, 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 December 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2025. The Respondent sent email communications to the Center on several occasions in December 2024.

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On December 12, 2024, the Center sent a Possible Settlement email to the Parties, inviting the Complainant to submit a request for suspension if the Parties wished to explore settlement options. No request for suspension was received from the Complainant.

Pursuant to paragraph 6 of the Rules, on January 2, 2025, the Center informed the Parties that it would proceed with the panel appointment process.

The Center appointed Mehmet Polat Kalafatoğlu as the sole panelist in this matter on January 9, 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 company founded in 1889 and headquartered in Clermont-Ferrand, France. The Complainant is a leading tire company, and it also provides digital services, maps, and guides. Particularly, the Complainant is the owner of the well-known MICHELIN guide which awards stars for fine dining establishments worldwide. The Complainant is present in 170 countries, has more than 124,000 employees, and operates 117 tire manufacturing facilities and sales agencies in 26 countries.

The Complainant asserts that it owns numerous MICHELIN trademark registrations worldwide, such as the European Union trademark MICHELIN No. 001791243, registered on October 24, 2001, for goods in classes 6, 7, 12, 17, and 28. The Complainant also has registered trademarks in the US where the Respondent is located: the MICHELIN trademark with registration number 892045, registered on June 2, 1970, for goods in class 12; and the MICHELIN trademark with registration number 4126565, registered on April 10, 2012, for services in classes 36, 37, and 39.

Several prior UDRP decisions recognized that the Complainant’s MICHELIN trademark is well-known
(including, Compagnie Générale des Etablissements Michelin v. Oncu, Ibrahim Gonullu, WIPO Case No.
D2014-1240; Compagnie Générale des Etablissements Michelin v. Vyacheslav Nechaev, WIPO Case No.
D2012-0384).

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

The disputed domain name was registered on September 5, 2024. At the time of filing the Complaint, it was resolving to a parked website that contains pay-per-click (“PPC”) links related to automotive products and services, including tires of the Complainant and its competitors.

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 disputed domain name is identical or confusingly similar to the MICHELIN trademark. It reproduces the Complainant’s well-known MICHELIN trademark in its entirety associated with the terms “tyres” and “pk” intersected by a hyphen. The Complainant affirms that these generic terms directly target the Complainant’s field of activity. Thus, this might lead Internet users to be influenced by the confusing similarity between the disputed domain name and the Complainant’s trademarks

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as well as with its legitimate websites. The addition of the letters “pk” significantly increases the likelihood of confusion that the consumers may believe the products offered are associated with a Pakistani affiliate of the Complainant.

The Complainant also submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant asserts that the Respondent is not affiliated with the Complainant, and it has not authorized the Respondent to use and register its trademark or to seek registration of any domain name incorporating the MICHELIN trademark. The Complainant also contends that the Respondent cannot claim prior rights or legitimate interests in the disputed domain name, and it is not commonly known under the disputed domain name or the name “MICHELIN”. The Respondent cannot assert that, before any notice of this dispute, it was using or had made demonstrable preparations to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. The Complainant highlights that the disputed domain name resolves to a parking page displaying several links related to the Complainant’s activities. The Respondent has not made any reasonable and demonstrable preparations to use the disputed domain name and, therefore, it fails to show any intention to make a noncommercial or fair use of the disputed domain name.

Finally, the Complainant affirms that the disputed domain name was registered and is being used in bad faith. In this regard, the Complainant, inter alia, asserts that it is implausible that the Respondent was unaware of the Complainant or its well-known MICHELIN trademark when it registered the disputed domain name. A quick online search would have revealed to the Respondent the existence of the Complainant and its trademark. The Respondent’s failure to do so contributes to its bad faith. The Respondent probably registered the disputed domain name to divert Internet traffic to its website and generate clicks, which, in turn, generate revenue. The Respondent likely registered the disputed domain name to prevent the Complainant from reflecting its trademarks in the disputed domain name. The Complainant claims that the Respondent is taking undue advantage of the Complainant’s well-known trademark and uses the disputed domain name to direct Internet users to a webpage displaying PPC links (related to the Complainant’s products and services) that are likely to generate revenue. According to the Complainant, the eventuality that the parked page with a clear connection to the Complainant and its activities may have been automatically generated or that the Respondent may not have directly profited from such page does not prevent a finding of bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions, but it did send four informal email communications before the due date for Response.

In the first two emails, the Respondent mainly asked for further information about the ongoing proceedings.

In its third email, dated December 12, 2024, the Respondent especially noted the following: “We are a tyre company operational in Pakistan since 1948. This domain we bought as a domain that in future if we work with Michelin for Pakistan market we can have a domain to set up a local Pakistan webpage. I did not have an idea that its an issue for Michelin as we have domains for many brands like that, and no one had an

issue. We dont use the domain for anything its just there in case in future we do business with Michelin so
we bought the domain. If its this much of an issue for Michelin then they can buy the domain from me. I have
no problem. I paid to register it to work with Michelin. I have no issue tell them please buy it back.”

Finally, on December 15, 2024, the Respondent, inter alia, noted that the disputed domain name was available online when they bought it, and they will consult this issue with their lawyer and the Registrar.

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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 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, “tyres” and “pk” intersected by a hyphen, 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 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.

Particularly, the Panel notes that the disputed domain name resolves to a website containing PPC links related to the Complainant’s or its competitors’ products. In this respect, WIPO Overview 3.0, section 2.9 states that “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.

In addition, the Respondent merely asserted that it registered the disputed domain name because “in future if we work with Michelin for Pakistan market we can have a domain to set up a local Pakistan webpage”.

Accordingly, the Panel finds that the current use of the disputed domain name, resolving to a website containing PPC links referring to or competing with the Complainant’s products, and the Respondent’s comments regarding its anticipated use cannot be considered as use or demonstrable preparations to use

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the disputed domain name in connection with a bona fide offering of goods or services. Therefore, the Panel
concludes that the Respondent does not have rights or legitimate interests in the disputed domain name

under the Policy.

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.

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 considers the registration date and the well-known nature of the MICHELIN trademark, the registration date of the disputed domain name, the composition of the disputed domain name, and especially, the Respondent’s statement that it registered the disputed domain name so that if, in the future, it works with the Complainant for the Pakistan market it could have a domain name to set up a local website. Therefore, the Panel finds it clear that the Respondent had the Complainant’s trademark and products in mind when it registered the disputed domain name.

The Panel also finds that the mere registration of the disputed domain name that is confusingly similar to the well-known MICHELIN trademark by the Respondent, who has no affiliation with the Complainant, creates a presumption of bad faith under the Policy. WIPO Overview 3.0, section 3.1.4.

Finally, the record shows that the disputed domain name, which is confusingly similar to the Complainant’s trademark, resolves to a website containing PPC links referring to or competing with the Complainant’s products. The Panel finds that such use is sufficient evidence that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its website, pursuant to paragraph 4(b)(iv) of the Policy.

Based on the available record, the Panel finds that the disputed domain name has been registered and is being used in bad faith, and 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 <michelintyres-pk.com> be transferred to the Complainant.

/Mehmet Polat Kalafatoglu/
Mehmet Polat Kalafatoglu
Sole Panelist
Date: January 23, 2025