The Complainant is Compagnie de Saint-Gobain, France, represented by Tmark Conseils, France.
The Respondent is Domain ID Shield Service, Domain ID Shield Service CO., Limited, Hong Kong, China / zhang yan sheng, GNAME. COM PTE. LTD., Singapore.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2021. On November 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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 11, 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 12, 2021.
The Center verified that the Complaint together with the amended 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2021.
The Center appointed Gareth Dickson as the sole panelist in this matter on December 14, 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 manufacturing company specialising in construction materials, which has been based in and operating from France for just over 350 years, having celebrated its 350th anniversary in 2015. The Complainant is established as a construction materials manufacturer worldwide and has over 170,000 global employees.
The Complainant has been using the "SAINT-GOBAIN" name for over 350 years and has been using the domain name
- Canadian trade mark registration number TMA423541, filed on June 27, 1990;
- French trade mark registration number 3005563, filed on February 4, 2000;
- European Union trade mark registration number 001552843, filed on March 9, 2000;
- International trade mark registration number 740183, registered on July 26, 2000, designating several countries including Morocco;
- United States of America trade mark registration number 4669229, filed on September 13, 2013;
- International trade mark registration number 1505901, registered on September 23, 2019 and designating several countries including Australia, Japan and Singapore.
The Complainant's use and registration as a trade mark of the Mark pre-dates the registration of the disputed domain name, which was registered on February 25, 2021. The disputed domain name is currently inactive and does not point to any active website.
5. Parties’ Contentions A. ComplainantThe Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name) with the addition after the Mark of the number "350" and the word "jahre", being the German word for "years", under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant submits that the addition of the phrase "350jahre" is a direct reference to the 350th anniversary celebrated by the Complainant in 2015.
The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant.
The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services.
The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name. The Mark, according to the Complainant, is not descriptive or a dictionary word, and has acquired distinctiveness and a secondary meaning over the course of its 350 years of use, and is well-known throughout the world.
Finally, the Complainant contends that the current passive holding of a domain name remains a use in bad faith under the Policy, and notes that the Respondent has been found to have engaged in bad faith registration and use of another French company's trade mark in a UDRP decision dated May 19, 2021 (SODEXO v. Domain ID Shield Service, Domain ID Shield Service CO, Limited / zhang yan sheng, GNAME. COM PTE. LTD.,
WIPO Case No. D2021-0790.)
Together, the Complainant submits that the Respondent is using the disputed domain name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Section 1.8 of the WIPO Overview 3.0 further provides that: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the disputed domain name incorporates the Mark in its entirety. The addition in the disputed domain name of "350jahre", being German for "350 years" and a reference to the 350-year anniversary of the Complainant, does not prevent a finding of confusing similarity, nor does the gTLD ".com".
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsAlthough a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is neither generic nor descriptive but enjoys a degree of inherent distinctiveness that makes a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name.
There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate but, will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithThe Panel notes that the Complainant has been using the Mark since long before the Internet or domain names existed, and that the disputed domain name was registered many years after the Mark was registered.
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name, and did so register it because of its similarity to the Mark.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The disputed domain name is also being used in bad faith.
Although the disputed domain name dos not currently resolve to a website, this does not alter the Panel’s findings above and the Panel finds that the disputed domain name is being used in bad faith under the doctrine of passive holding.
Section 3.3 of the WIPO Overview 3.0 states that relevant factors to finding bad faith in cases of passive holding 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 […]; and
(iv) the implausibility of any good faith use to which the domain name may be put.”
The Panel notes that the Mark is distinctive of the Complainant, through its extensive use over nearly four centuries, and further notes that the Respondent: has not participated in these proceedings or sought to explain its registration and use of the disputed domain name; has sought to conceal its identity through a privacy service; and has very recently been found to have engaged in the bad faith registration and use of a domain name which incorporated another French company's trade marks. Furthermore, there is no apparent use of the disputed domain name by the Respondent that would not be illegitimate.
Therefore, and on the basis of the information available to it, the Panel finds that the Respondent’s use of the disputed domain name is in bad faith.
The Panel finds that the Respondent has registered and is using the disputed domain name 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,
Gareth Dickson
Sole Panelist
Date: December 29, 2021