WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie Générale des Etablissements Michelin v. Ibrahim Alesayi

Case No. D2021-2021

1. The Parties

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

The Respondent is Ibrahim Alesayi, Saudi Arabia.

2. The Domain Name and Registrar

The disputed domain name <michelinest.com> (the “Domain Name”) 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 June 25, 2021. On June 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 29, 2021, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 30, 2021, 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 July 7, 2021.

The Center verified that the Complaint together with the amended Complaint (together, the “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 July 9, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was July 29, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 30, 2021.

The Center appointed D. Brian King as the sole panelist in this matter on August 9, 2021. 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

A. The Parties

The Complainant is Compagnie Générale des Etablissements Michelin (“Michelin”), a tire and travel services company based in Clermont-Ferrand, France. According to the Complaint, the Complainant employs over 100,000 people in 17 countries. Michelin has been in business since 1889 and is a top-selling tire brand. The Complainant also offers travel guides and digital services for travel assistance, including a suite of Michelin apps and a famous restaurant guide, the Guide Michelin.

The Respondent has not provided the Panel with any information on his history or activities.

B. The Mark

The Complainant owns numerous trademarks for MICHELIN. An illustrative list of these registered marks follows (Annex 4 to the Complaint):

The Complainant also owns and uses numerous domain names incorporating the MICHELIN mark. These include <michelin.com>, which the Complainant registered on December 1, 1993 (Annex 5 to the Complaint).

C. The Domain Name

The Domain Name was registered on February 8, 2021 (Annex 1 to the Complaint). The Complaint contains evidence that at the time the Complaint was filed, the Domain Name resolved to a website (the “Website”) hosting Pay-Per-Click (“PPC”) links to tire offerings and maps (Annex 1 to the Complaint). The Domain Name’s email servers have been activated, which allows emails to be sent from email accounts associated with the disputed domain name (Annex 1 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant first argues that the MICHELIN mark is well known internationally. The Complainant notes that it has registered the MICHELIN mark in various jurisdictions and uses domain names incorporating the mark in connection with its business. According to the Complainant, the Domain Name entirely incorporates the MICHELIN mark, with the addition of the term “est,” which means “east” in French. This generic addition, the Complainant contends, does not prevent a finding of confusing similarity. The Complainant also argues that the “.com” generic Top-Level Domain (“gTLD”) is not considered when determining confusing similarity.

The Complainant next argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. To demonstrate this, the Complainant represents that it has no business relationship with the Respondent and has not authorized the Respondent to use the MICHELIN mark in any way. The Complainant also submits that the Respondent is not known by a name corresponding to the Domain Name. Further, the Complainant argues that the Respondent cannot claim to be making a bona fide offering of goods and services via the Domain Name, given the confusing similarity of the Domain Name and the worldwide notoriety of the Complaint’s business and associated trademarks. On the same grounds, according to the Complainant, there is in fact no plausible legitimate use to which the Respondent could put the Domain Name.

Finally, the Complainant argues that the Domain Name was registered and is being used in bad faith. The Complainant first argues that the Respondent must have known of the Complainant’s rights in the MICHELIN mark when registering the Domain Name, because: (i) the MICHELIN brand is well known globally; (ii) the Domain Name entirely incorporates the MICHELIN mark; and (iii) the Complainant’s registration of the MICHELIN mark significantly predates the registration of the Domain Name. The Complainant continues by submitting that the Respondent had a duty to ensure that the Domain Name did not infringe on the rights of any third parties when registering it. Any attempt to do so, the Complainant argues, would surely have led to the Respondent’s actual knowledge of the Complainant’s registered marks. These factors, the Complainant says, demonstrate that the Domain Name was registered in bad faith. As to bad faith use, the Complainant argues that the Respondent is using the Domain Name’s confusing similarity to the MICHELIN mark to attract Internet users for commercial gain, noting that the Website contains PPC links to products similar to those offered by the Complainant. Furthermore, the Domain Name’s email servers have been configured, which, according to the Complainant, suggests that the Domain Name may be part of a phishing scam.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

(i) the Domain Name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.

Paragraph 4(b) of the Policy sets out illustrative circumstances that may demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above.

A. Identical or Confusingly Similar

The Domain Name entirely incorporates the Complainant’s MICHELIN mark, appending to it the term “est” and the “.com” gTLD. It is well established that the addition of the “.com” gTLD does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. Similarly, the addition of the term “est” does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.

Accordingly, the Panel finds that the Complaint succeeds as to the first element under the Policy.

B. Rights or Legitimate Interests

Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a)(ii) of the Policy (see, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205). Once a prima facie showing is made, the burden of production shifts to the respondent to demonstrate that it possesses rights or legitimate interests in respect of the domain name in dispute.

The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard here. In the absence of any contrary evidence, the Panel accepts the Complainant’s representation that the Respondent has no connection to the Complainant and has not received permission to use the Complainant’s MICHELIN mark. The Panel also finds no indication that the Respondent is commonly known by a name corresponding to the Domain Name.

In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent has failed to provide any contrary evidence, despite having had the opportunity to do so. The Panel accordingly finds that the Complaint succeeds as to the second element of the test under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element of the test under paragraph 4(a) of the Policy requires proof that the Domain Name has been registered and is being used in bad faith. The Panel finds that to be sufficiently established here.

The Panel has already found above that the Domain Name is confusingly similar to the Complainant’s MICHELIN mark. Noting the distinctiveness and reputation of the Complainant’s MICHELIN mark, the Panel finds it likely that the Respondent had the Complainant and its mark in mind when registering the confusingly similar Domain Name. Furthermore, the record shows that the Website to which the Domain Name resolved includes PPC links to products or services highly similar to those offered by the Complainant (Annex 1 to the Complaint). In these circumstances, the Panel concludes that the Respondent has attempted to attract Internet users to its Website for commercial gain by creating a likelihood of confusion with the Complainant’s mark. This is sufficient to establish bad faith registration and use under the Policy (see WIPO Overview 3.0, section 3.1).

On these grounds, the Panel finds that the Complaint likewise succeeds as to the third element of paragraph 4(a) 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 Domain Name, <michelinest.com>, be transferred to the Complainant.

D. Brian King
Sole Panelist
Date: August 17, 2021