The Complainant is Compagnie de Saint-Gobain, France, represented by Tmark Conseils, France.
The Respondent is Contact Privacy Inc. Customer 1249589662, Canada / Latonya Peterson, 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 3, 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 3, 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 8, 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 amended Complaint on November 9, 2021.
The Center verified that the Complaint together with the amended Complaint satisfy 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2021.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on December 27, 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 is a French company doing business worldwide with more than 170,000 employees. Being the owner of a portfolio of trademarks, notably SAINT-GOBAIN with registered rights in a number of jurisdictions. As such:
European Union Intellectual Property Office (EUIPO), for SAINT-GOBAIN with registration number 001552843, filed March 9th, 2000, and covering notably construction materials and services in classes 17, 19-21, and 37,
United States Patent and Trademark Office (USPTO) SAINT-GOBAIN with registration number 4669229, filed on September 13th, 2013, and covering notably construction materials and services in classes 17, 19-21, and 37,
The disputed domain name
The Complainant registered and uses
The Complainant asserts that the disputed domain name
The Complainant contends that Respondent’s lack of rights or legitimate interest results notably from the following: SAINT-GOBAIN has been in use for a long time and is enjoying reputation worldwide in the construction material field. Further, the Respondent was not known as “saint-gobain” whereas the Complainant has long standing rights in the trademarks which predate the registration of the disputed domain name. The disputed domain name is inactive. The Complainant points out that has never licensed or otherwise authorized in any way the Respondent to use SAINT-GOBAIN trademark as a domain name or as an element of a domain name or for any other kind of purpose. The Complainant also denies any commercial or relationship between the parties.
With respect to the third element, the Complainant states that being SAINT-GOBAIN a well-known trademark the Respondent had no legitimate reason to register the disputed domain name but with the aim to take advantage of the confusion created by its fraudulent registration. That is to say, the Respondent knew about Complainant’s prior rights and use of SAINT-GOBAIN.
Finally, the Complainant looks at the “passive holding” doctrine on the following findings: The long-standing use and well-known character of the trademark SAINT-GOBAIN, the fact that this trademark is not a descriptive or a dictionary word, and the lack of use of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must satisfy 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;
(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.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration.
A. Identical or Confusingly SimilarThe Complainant holds registered trademarks on SAINT-GOBAIN that satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. Thus, the Panel looks at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9: “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”. The Panel finds that the addition of the letter “b” within the disputed domain name falls within the typosquatting practice.
Besides, it is well established that a gTLD, in this case “.com”, is typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Accordingly, the Panel finds that the disputed domain name
The Panel is convinced that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. Indeed the Complainant has shown evidence that it has long standing rights in the trademarks which predates the registration of the disputed domain name and that no commercial or business relationship between the parties have ever accrued. Thus, the Respondent has not been licensed or otherwise authorized to use Complainant´s trademark in the corresponding disputed domain name. Neither is the Respondent known as “saint-gobain”.
It is well established that once the prima facie is made the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a 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 domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a 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.
The records in the case file evidence notification of the procedure and the Complaint to the Respondent. However the Respondent did not answer and therefore, the Respondent has not demonstrated rights or legitimate interests in the disputed domain name. The disputed domain name is not being used and the typosquatting nature of the disputed domain name suggests that the Respondent sought to confuse Internet users seeking the Complainant. Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests.
Under the circumstances described the Panel finds that the Complainant has carried out its burden in terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithWhile paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that shall be evidence of the registration and use of a domain name in bad faith, Panels have been prepared in appropriate cases to draw inferences concerning a respondent’s (bad faith) intent from the relevant facts and circumstances. As stated in section 3.1 WIPO Overview 3.0: “…evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden”.
In the present case, the Complainant asserts that the Respondent was aware of SAINT-GOBAIN and the Complainant’s prior rights and use and that the Respondent’s aim was to act in bad faith by taking advantage of the voluntary confusion created by its registration of the disputed domain name.
Having in mind the recognition of SAINT-GOBAIN trademark, the Panel cannot find any other reasonable reason for the Respondent to register the disputed domain name other than to disturb or to take advantage of the Complainant or its trademarks. Prior panels have held that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Section 3.1.4, WIPO Overview 3.0.
With regard to the use of the disputed domain name, the Panel looks at section 3.3 WIPO Overview 3.0: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. SeeTelstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003
The Panel notes the following factors that have been considered relevant in applying the passive holding doctrine: (i) the reputation of SAINT-GOBAIN (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the lack of legitimate interests or rights in the disputed domain name and therefore, the implausibility of any good faith use to which the domain name may be put, and (iv) the Respondent’s use of a privacy service to mask its identity.
The Panel concludes that the Complainant has established the third element of the Complaint and therefore, the disputed domain name was registered and used in bad faith.
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,
Manuel Moreno-Torres
Sole Panelist
Date: January 10, 2022