WIPO Domain Name Decision D2021-1937 for saint-gabain.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compagnie De Saint-Gobain v. Mohammed Danu Case No. D2021-1937 1. The Parties

Complainant is Compagnie De Saint-Gobain, France, represented by Tmark Conseils, France.

Respondent is Mohammed Danu, Japan.

2. The Domain Name and Registrar

The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2021.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on September 3, 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

Complainant is a global construction company, based in France, with origins dating back to the seventeenth century. For a long period of time, and continuously for years before the registration of the disputed domain name, Complainant has offered its products and services under the SAINT-GOBAIN mark. Complainant owns several registrations for its SAINT-GOBAIN mark. These include, among others, France Registration No. 3005563 (registered February 4, 2000), International Registration No. 740183 (registered July 26, 2000), and United States of America Registration No. 4,669,229 (registered January 13, 2015).

Complainant additionally interacts with consumers and prospective consumers via its online presence. In this regard, Complainant owns the registration for the domain name (registered December 29, 1995). Complainant uses the URL associated with this domain name to inform prospective consumers about its products and services offered under the SAINT-GOBAIN mark.

The disputed domain name, , was registered on June 3, 2021. Although it appears to resolve to a currently inactive webpage, Respondent has used an email address associated with the disputed domain name to engage in potentially fraudulent behavior whereby Respondent, posing as an official representative of Complainant, contacted Complainant’s business associates. Respondent has no affiliation with Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions A. Complainant

Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it has established rights in its registered SAINT-GOBAIN mark. Complainant further contends that the disputed domain name is an obvious and deliberate misspelling of the SAINT-GOBAIN mark. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name, and rather has registered and is using it in bad faith. In particular, Complainant contends that Respondent has used the disputed domain name to set up an email account meant to confuse Complainant’s business associates into providing Respondent their sensitive personal and financial information. Complainant contends that Respondent has no rights or legitimate interests in the registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in sending out fraudulent emails, when Respondent was clearly aware of Complainant’s rights in the SAINT-GOBAIN mark.

B. Respondent

Respondent did not file a reply to Complainant’s contentions in this proceeding.

6. Discussion and Findings A. Identical or Confusingly Similar

The Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

The Panel finds that it is. The disputed domain name contains an obvious misspelling of Complainant’s established SAINT-GOBAIN mark. This indicates a practice commonly known as “typosquatting”, where a domain name registrant deliberately registers common misspellings of a well-known mark in order to divert consumer traffic. Other UDRP panels have routinely found typosquatted domain names like this to be “confusingly similar” for purposes of a finding under the UDRP. See Edmonds.com, Inc. v. Yingkun Guo, WIPO Case No. D2006-0694; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; seealso Credit Karma, Inc. v. Domain Admin, WhoIs Privacy Corp.,WIPO Case No. D2017-0194.

The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used an email account associated with the disputed domain name to engage in fraudulent behavior whereby Respondent has merely used the disputed domain name to set up email accounts in an apparent phishing scheme. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted.

The Panel therefore finds that Complainant has met its burden in accordance with paragraph (4)(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, although the disputed domain name resolves to an inactive web page, Respondent has used the disputed domain name to set up an email account in a manner apparently calculated to confuse Complainant’s business associates into providing Respondent their sensitive personal and financial information.

Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

Given the nature of the fraudulent email use, and the disputed domain name itself, which is a simple and deliberate misspelling of Complainant’s registered SAINT-GOBAIN mark, the Panel finds that despite the passive website use, Respondent has registered and used the disputed domain name with knowledge of Complainant’s prior rights, thereby evidencing bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3, which notes that the “non-use of a domain name” does not necessarily prevent a finding of bad faith, but rather, that a panel must examine “the totality of the circumstances”. Overall, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 Complainant.

Lorelei Ritchie
Sole Panelist
Dated: September 17, 2021

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