The Complainant is Compagnie de Saint-Gobain, France, represented by Tmark Conseils, France.
The Respondent is Name Redacted. 1
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2021, 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 November 9, 2021. On November 23, 2021, a third party contacted the Center regarding the claimed unauthorized use of its identity and postal address in relation to the disputed domain name in the present proceedings.
In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2021. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed to Panel Appointment on November 30, 2021.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 7, 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 BackgroundThe Complainant in this proceeding is COMPAGNIE DE SAINTGOBAIN, a French joint stock company registered in the French commercial register of Paris since July 21, 1954, under No. 542 039 532.
The Complainant is one of the major players in the field of construction materials. It has been active in France for over 350 years. According to a corporate presentation, SAINT-GOBAIN has more than 170,000 employees worldwide.
The Complainant owns the SAINT-GOBAIN mark, which enjoys thorough protection through many registrations worldwide.
The Complainant is, inter alia, the owner of:
European Union Trade Mark registration number 001552843 for the SAINT-GOBAIN mark, filed March 9, 2000 and registered on December 18, 2001.
French trademark registration number 3005563 for the SAINT-GOBAIN mark, filed and registered on February 4, 2000.
Canadian trademark registration number TMA423541 for the SAINT-GOBAIN mark, filed on June 27, 1990 and registered on February 25, 1994.
United States of America trademark registration number 4669229 for the SAINT-GOBAIN mark, filed on September 13, 2013 and registered on January 13, 2015.
International registration number 1505901 for the SAINT-GOBAIN mark, registered on September 23, 2019.
In addition, the name “Saint-Gobain” is part of the registered company name of the Complainant, and the domain name
The disputed domain name was registered on September 21, 2021.
The disputed domain name does not direct to any active website.
The Complainant’s trademark registrations predate the registration of the disputed domain name.
5. Parties’ Contentions A. ComplainantThe Complainant claims that the disputed domain name is almost identical or at least confusingly similar to the above-cited SAINT-GOBAIN trademark.
The Complainant further states that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name. No license, or authorization of any other kind, has been given by the Complainant to the Respondent to use the SAINT-GOBAIN trademark.
Moreover, the Complainant asserts that SAINT-GOBAIN is a renowned trademark, and consequently the Respondent was aware of the rights the Complainant has in the SAINT-GOBAIN trademark at the time of the registration.
The Complainant also noticed not only that the disputed domain name was intentionally registered to create confusion for Internet users with the Complainant’s trademark (as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website) but also that the disputed domain has active MX fields, meaning that there is an email address linked to the disputed domain name, probably with the purpose of launching a “spoofing” scam in a fraud attempt.
The Complainant thus concludes that the Respondent tried to benefit from the Complainant’s world famous trademark, and that the disputed domain name has been registered and is being used in bad faith.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions.
In fact on November 23, 2021, in response to the communication informing the parties of the present proceeding sent by the Center via courier, a third party sent an email to the Center claiming the unauthorized use of its identity and postal address in relation to the disputed domain name in the present proceedings, thus implying that this is likely a case of identity theft.
6. Discussion and FindingsIn order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has established rights in the SAINT-GOBAIN trademark.
The disputed domain name, which is almost identical to the Complainant’s trademark, differs from the latter by the replacement of the letter “g” with the letter “q” in the word “gobain”.
This substitution in the disputed domain name does not prevent a finding of confusing similarity with the SAINT-GOBAIN trademark.
Indeed, it appears to be a clear case of typosquatting, where the Respondent is trying to take advantage from typing errors made by Internet users when looking for a desired name, in this case the Complainant’s trademark.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the SAINT-GOBAIN trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThis Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithBased on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the SAINT-GOBAIN mark when it registered the disputed domain name.
In fact, the Complainant’s SAINT-GOBAIN trademark is a fanciful name with no meaning aside from referring to the Complainant’s goods and services. It has been registered and used for many decades and is a renowned trademark worldwide, especially in the construction sector. Hence, the registration of the disputed domain name does not seem to be a coincidence, and thus indicates that the Respondent knew of the Complainant’s mark and intentionally intended to create an association with the Complainant and its business at the time of the registration of the disputed domain name. The typosquatting nature of the disputed domain name further supports this inference.
Inference of bad faith can also be found in the failure to respond to the Complainant’s contentions, and the Respondent’s lack of any rights or legitimate interests in the disputed domain name.
Another factor supporting the conclusion of bad faith registration and use of the disputed domain name is the fact that the Respondent deliberately chose to conceal its identity. In fact it appears that the Respondent has misused the identity of a third party to register the disputed domain name.
In these circumstances, the passive holding of the disputed domain name would not prevent a finding of bad faith. See section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain names in bad faith.
Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy
7. DecisionFor 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
Fabrizio Bedarida
Sole Panelist
Date: December 16, 2021
1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.