The Complainant is Compagnie de Saint-Gobain of Courbevoie, France, represented by Nameshield, France.
The Respondent is Online Admin, DotBadger Domains of Prague, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2018. On June 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 12, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 June 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2018.
The Center appointed Jacques de Werra as the sole panelist in this matter on July 11, 2018. 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 company incorporated in France. Founded 350 years ago, it has become a leading company specialized in the production, processing and distribution of construction materials. It is now one of the top 100 industrial groups in the world and one of the 100 most innovative companies.
The Complainant has exclusive rights in the SAINT-GOBAIN trademark (which reflects its company name). The Complainant is the exclusive owner of many SAINT-GOBAIN trademarks worldwide, including an International Trademark (international Reg. No. 551682) registered since July 21, 1989 (the “Trademark”). Complainant also owns and operates domain names which reflect the SAINT-GOBAIN trademark, such as which is registered since December 29, 1995.
The Disputed Domain Name was registered on May 19, 2018. The website associated to the Disputed Domain Name points to a parking page with a search bar and several links unrelated to the Disputed Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant claims in substance that the Disputed Domain Name is confusingly similar to the Trademark as it only differs from it by one single letter so that it constitutes a clear case of typosquatting (omission of the letter “a” in the Disputed Domain Name by comparison to the Trademark).
The Complainant further claims that the Respondent is not commonly known by the Disputed Domain Name as the WhoIs information is not similar to the Disputed Domain Name. It also claims that the Disputed Domain Name is a typosquatted version of the Trademark, whereby typosquatting can be evidence that a respondent lacks rights and legitimate interests in the Disputed Domain Name.
The Complainant finally alleges that the bad faith registration of the Disputed Domain Name by the Respondent is evidenced by the fact that, given the distinctiveness of the Complainant’s Trademark and reputation, it is reasonable to infer that the Respondent has registered the Disputed Domain Name with full knowledge of the Complainant’s Trademark. The Respondent’s bad faith also results from the misspelling of the Complainant’s Trademark in the Disputed Domain Name (typosquatting). The Complainant further contends that the Respondent has attempted to attract Internet users for commercial gain to its own website thanks to the Complainant’s Trademark, which is an evidence of bad faith.
The bad faith of the Respondent further results from the involvement of the Respondent as respondent in prior UDRP proceedings which were decided against the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding:
(i) the respondent’s 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 in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark.
A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name is clearly confusingly similar to the Complainant’s Trademark, the only difference consisting in the removal of the letter “a” in the Disputed Domain Name. The Panel notes in this respect that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.19. This is clearly the case here. Moreover, the Panel notes in this respect that the confusing similarity is very strong given that the removal of the letter “i” does not affect the phonetical identity between the Trademark and the Disputed Domain Name.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the complainant bears the ultimate burden of providing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that the burden of production shifts to the respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which misspells the Trademark owned by the Complainant and uses it in connection with a Pay-Per-Click (“PPC”) landing page.
The Complainant has also established that the Respondent has not been commonly known by the Disputed Domain Name.
The Panel thus accepts the Complainant’s prima facie showing and finds that it was consequently up to the Respondent to come forward with evidence of its rights or legitimate interests in the Disputed Domain Name, which has not been done given the Respondent’s absence of participation in these proceedings.
In addition, the Panel notes that the Respondent has used the Disputed Domain Name in connection with a parking page pointing to the third party websites.
The Panel approves the finding made by other UDRP panels that have decided 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. WIPO Overview 3.0, section 2.9. The Panel notes that this is the case here given the reputation of the Trademark and of the Complainant and given the fact that the misspelling of the Trademark made in the Disputed Domain Name is misleading Internet users.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain name;
(ii) circumstances indicating that the Respondent registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark is distinctively identifying the Complainant and the Complainant’s activities so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademark of the Complainant.
The Respondent’s bad faith in the registration and use of the Disputed Domain Name is confirmed by the fact that the Disputed Domain Name constitutes an intentional misspelling of the Trademark and that the Disputed Domain Name is used in connection with a PPC parking page, thereby evidencing circumstances indicating that the Respondent is intentionally using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The Panel further notes that the Respondent was a respondent in different prior cases where decisions were made in favor of the respective complainants in circumstances in which the Respondent was found to have registered and used in bad faith various domain names corresponding to well-known trademarks owned by third parties (see, e.g., Compagnie Générale des Etablissements Michelin v. Online Admin, DotBadger Domain,WIPO Case No. D2016-0426).
For these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) 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 be transferred to the Complainant.
Jacques de Werra
Sole Panelist
Date: July 16, 2018
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