The Complainant is Compagnie de Saint-Gobain, France, represented by Tmark Conseils, France.
The Respondent is Andrea Chi, Andrea Chi Chi, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2020. On December 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 4, 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 amendment to the Complaint on January 4, 2021. The Center verified that the Complaint together with the amendment to 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 January 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2021. Due to an administrative oversight, the Center notified the Complaint again on February 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2021. The Respondent did not submit any response. The Center notified the commencement of Panel appointment process on February 23, 2021. The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on March 2, 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 The Complainant, Compagnie de Saint-Gobain, is a French company leader in the production and sale of construction materials worldwide with headquarters in Paris. It claims to have been doing business in France for over 350 years and has more than 170.000 employees worldwide. The Complainant owns many trademark registrations for SAINT-GOBAIN in several jurisdictions, such as Canada, China, European countries and in the United States of America, where the Respondent seems to be established, including the following: - European Trade Mark Registration SAINT-GOBAIN No. 001552843 filed on March 9, 2000 and registered on December 18, 2001, covering notably construction materials and services in classes 17, 19, 21 and 37; - French Trademark Registration SAINT-GOBAIN No. 3005563, filed and registered on February 4, 2000, covering notably construction materials and services in classes 17, 19, 21 and 37; - Canadian Trademark Registration SAINT-GOBAIN No. TMA423541, filed on June 27, 1990 and registered on February 25, 1994, covering notably construction materials and services in classes 17, 19, 21 and 37. SAINT-GOBAIN is the registered company name of the Complainant, who also owns the domain name The disputed domain name The Complainant contends that the disputed domain name is confusingly similar with the trademark SAINT- GOBAIN in which the Complainant has rights; that the Respondent has no rights or legitimate Interests with respect to the disputed domain name, which was registered and is being used in bad faith. More specifically, the Complainant asserts that the Respondent is not generally known by the disputed domain name and, nor is the Respondent affiliated to the Complainant who has not authorized the Respondent to use the trademark SAINT-GOBAIN or to seek registration of any domain name incorporating said trademark. The Complainant was already extensively using the trademark SAINT-GOBAIN worldwide well before the Respondent registered the disputed domain name. By registering the disputed domain name the Respondent seeks to take advantage of the Complainant’s prior rights in the well-known trademark SAINT- GOBAIN by creating confusion therewith. Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that: i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Panel is satisfied that the Complainant has proved that it has rights in the trademark SAINT-GOBAIN. The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The disputed domain name totally incorporates the Complainant’s trademark SAINT-GOBAIN, with the sole addition of the generic Top-Level Domain (gTLD) “.tech”, which the Panel shall disregard for the purpose of their comparison. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.tech”, as it is viewed as a standard registration requirement, as noted in section 1.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the disputed domain name is identical to the trademark SAINT-GOBAIN in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses: - before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or - the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or - the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein. Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name. Likewise, and as further discussed under section 6.C of this decision, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, but rather it registered the disputed domain name with the intention to confuse Internet users and thereby obtain illegal monetary compensation for its own benefit. As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” As indicated in Section 6.A above, the disputed domain name is identical to the SAINT-GOBAIN trademark. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled. C. Registered and Used in Bad Faith The Complainant has submitted evidence to support its claim that the trademark SAINT-GOBAIN was widely known and enjoyed good reputation much before the Respondent registered the disputed domain name on May 21, 2020. The Complainant is the registrant and uses the domain name In a previous similar UDRP case involving the Complainant and the domain names The disputed domain name was registered many years after the Complainant had registered and used its trademark SAINT-GOBAIN and the domain name The Respondent when registering the disputed domain name included the Complainant’s trademark for the purpose of confusing Internet users and capitalize on the fame of the Complainant’s name and trademark for its own monetary benefit. The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0). Panelists have found that non-use of a domain name does not prevent a finding of bad faith under the doctrine of “passive holding” when circumstances exist such as the distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the disputed domain name may be put. The Panel finds that all these circumstances are relevant to this administrative proceeding and therefore that a finding of bad faith lies under the doctrine of “passive holding” (section 3.3 of WIPO Overview 3.0). The Panel finds that the Respondent has registered and uses the disputed domain in bad faith, which means that the requirements of paragraph 4(a)(iii) of the Policy have also been fulfilled. 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 Miguel B. O’Farrell
ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: March 8, 2021
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