The Complainant is Compagnie de Saint-Gobain, France, represented by Tmark Conseils, France.
The Respondent is Clay Rogers, 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 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 December 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 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 addition of the letter “e”, which 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 disputed domain name is being passively held, there being no plausible bona fide use to which it could be put given the well-known character of the Complainant’s SAINT-GOBAIN trademark.
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 is 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 the addition of the letter “e” as a suffix 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 domain name or as 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 Complainants’ 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 Panel notes that the disputed domain name is currently inactive. Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Section 3.3 of the already quoted WIPO Overview 3.0 states that “[f]rom 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. While UDRP panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put”.
In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith, given that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. In addition to that, and as decided in past cases under the Policy, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
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