The Complainant is Compagnie de Saint-Gobain, France, represented by Tmark Conseils, France.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Joe Thomas, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2021. On November 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2021, 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 November 5, 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 November 8, 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 November 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 6, 2022. 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 is a construction materials manufacturer and reseller conglomerate, based in France as well as counting with operations in several countries around the world.
The Complainant, in addition to several domain names such as
- European Union trademark registration No. 001552843 for the word mark SAINT-GOBAIN, filed on March 9, 2000, registered on December 18, 2001, and subsequently renewed, in international classes 01, 02, 03, 06, 07, 08, 09, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40 and 42;
- Canadian trademark registration No. TMA423541 for the word mark SAINT-GOBAIN, filed on June 27, 1990, registered on February 25, 1994 and subsequently renewed;
- United States trademark registration No. 4,669,229 for the word mark SAINT-GOBAIN, filed on September 13, 2013, registered on January 13, 2015, in international classes 01, 02, 03, 06, 07, 08, 09, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40 and 42; and
- International trademark registration No. 1505901 for the word mark SAINT-GOBAIN, registered on September 23, 2019, in international classes 01, 02, 03, 06, 07, 08, 09, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24 and 37.
The disputed domain name
The Complainant asserts to be in business for more than 350 years, presently being a major actor in the field of construction materials, counting with more than 170 000 employees worldwide.
Under the Complainant’s view, the disputed domain name is almost identical to its well-known SAINT-GOBAIN trademark, only differing by the substitution of the letter “i” for an “l”, what is sufficient to establish confusing similarity under the Policy.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not commonly known by the disputed domain name;
(ii) the Respondent appears to make no genuine use of the disputed domain name; and
(iii) the Complainant has never licensed or otherwise authorized in any way the Respondent to use the SAINT-GOBAIN trademark as domain name or as element of a domain name or for any other kind of purpose.
Lastly, the Complainant asserts that the bad faith of the Respondent is evident given the Respondent’s choice of the disputed domain name, which cannot have been accidental and must have been influenced by the Respondent’s knowledge of the Complainant’s prior rights at the time of registration of the disputed domain name. In addition to that, the Complainant asserts that the disputed domain has active MX fields meaning that there is an email address linked to the disputed domain name (Annex 8 to the Complaint), probably with the purpose of launching a “spoofing” scam in a fraud attempt, what cannot be considered a bona fide commercial use of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements are present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly SimilarThe Complainant has established its rights in the registered SAINT-GOBAIN trademark.
The Panel finds that the disputed domain name only differs by one letter to the Complainant’s trademark and is therefore confusingly similar to it. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. The Panel finds that the Complainant’s SAINT-GOBAIN trademark is recognizable within the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7.
The first element of the Policy has therefore been established.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired 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.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has never licensed or otherwise authorized in any way the Respondent to use the SAINT-GOBAIN trademark as a domain name or as an element of a domain name or for any other kind of purpose.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name corroborates the absence of any rights or legitimate interests in the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The second element of the Policy has therefore been established.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has 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; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other 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 the Respondent’s website or location.
The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances:
(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;
(ii) the well-known status of the Complainant’s trademark and the nature of the disputed domain name, along with the potential use in connection with fraudulent email scams, suggests a rather clear indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with the implausibility of any good faith use to which the disputed domain name may be put;
(iii) the choice to retain a privacy protection service to conceal the Respondent’s true identity;
(iv) the present inactive use of the disputed domain name; and
(v) the indication of a false address in the WhoIs data and, consequently, the Center not being able to have communications fully delivered to it.
For the reasons stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The third element of the Policy has therefore been established.
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
Wilson Pinheiro Jabur
Sole Panelist
Date: January 14, 2022