ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Compagnie de Saint-Gobain v. Hyder Jane Case No. D2023-1988 1. The Parties The Complainant is Compagnie de Saint-Gobain, France, represented by Nameshield, France. The Respondent is Hyder Jane, United States of America. 2. The Domain Name and Registrar The disputed domain name (the "Disputed Domain Name") is registered with Gandi SAS (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 4, 2023. On May 4, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2023, 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 (Inconnu/Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 5, 2023 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 May 5, 2023. On May 5, 2023, the Center sent an email communication to the Complainant informing them that the language of the registration agreement for the disputed domain name is English, and inviting the Complainant to provide satisfactory evidence of an agreement between the Parties to the effect that the proceedings should be in French; or to submit the Complaint translated into English; or to submit a request for French to be the language of the administrative proceedings. The Complainant submitted the Complaint translated into English on May 5, 2023. 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"). page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2023. The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 8, 2023. 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 Background The Complainant is a French multinational corporation specialized in the production, processing, and distribution of materials for the construction and industrial markets. The Panel notes that the Complainant operates in 75 countries and owns several brands that sell abrasives for domestic and industrial use, such as CARBORUNDUM and FLEXOVIT. The Complainant holds a number of trademark registrations for or containing "SAINT-GOBAIN" ("the Complainant's Trademark") around the globe. The relevant trademarks include, inter alia, International Trademark Registration No. 551682 for the mark " " in Classes 1, 6, 7, 9, 11, 12, 16, 17, 19, 20, 21, 22, 23, 24, 37, 39, 41 registered on July 21, 1989, International Trademark Registration No. 596735 for the mark " " in Classes 1, 6, 9, 11, 12, 16, 17, 19, 20, 21, 22, 23, 24 registered on November 2, 1992, International Trademark Registration No. 740184 for the mark " " in Classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, 42 registered on July 26, 2000 and International Trademark Registration No. 740183 for the mark "SAINT-GOBAIN" in Classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, 42 registered on July 26, 2000. The Complainant's Trademark is also fully incorporated in the Complainant's domain name which resolves to the Complainant's website at "https://www.saint-gobain.com/" (the "Complainant's Website"). The Complainant claims to have a dedicated website at "www.saint-gobain-abrasives.com" for the marketing of abrasives. The Panel notes that the relevant domain name was registered in the name of "Saint-Gobain High-Performance Materials" instead of the Complainant. No evidence has been adduced by the Complainant concerning its relationship with Saint-Gobain High-Performance Materials or the Complainant's right to use the said domain name. Nevertheless, based on the Complainant's submission and as the dedicated website contains a hyperlink to the Complainant's Website, the Panel is satisfied that the dedicated website belongs to the Complainant or its group. The Disputed Domain Name was registered on April 20, 2023, over 30 years after the Complainant first registered the Complainant's Trademark. The Disputed Domain Name currently resolves to a parking page which displays a message stating that "this domain name has been registered with Gandi.net" and advertises the Registrar's domain name registration and website hosting services. 5. Parties' Contentions A. Complainant The Complainant's primary contentions can be summarized as follows: (a) The Disputed Domain Name is identical or confusingly similar to the Complainant's Trademark. The Complainant's Trademark is reproduced in its entirety. Apart from the Complainant's Trademark, the only element in the Disputed Domain Name is the word "abrasives", which does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant's Trademark. page 3 (b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not obtained any authorization from the Complainant to use the Complainant's Trademark as part of a domain name or otherwise. The Respondent is not known by the Disputed Domain Name. Moreover, the Disputed Domain Name is not being used in relation to a bona fide offering of goods or services and the Respondent is not making legitimate or fair use of the Disputed Domain Name. (c) Both the Respondent's registration and use of the Disputed Domain Name establish the Respondent's bad faith. Given the history of the SAINT-GOBAIN brand and reputation that the Complainant has acquired in the Complainant's Trademark, the Respondent must have been fully aware of the existence of the Complainant's rights in the Complainant's Trademark when the Respondent registered and used the Disputed Domain Name. The Disputed Domain Name resolves to a parking page with no activity and amounts to passive holding. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (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 by the Respondent in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in the Complainant's Trademark, based on its various trademark registrations such as, inter alia, the International trademarks listed in Section 4. The Panel agrees with the Complainant that the additional term "abrasives" in the Disputed Domain Name is insufficient to distinguish the Disputed Domain Name from the Complainant's Trademark. Furthermore, it is well established that the generic Top-Level Domain ("gTLD"), ".net" in this case, may be disregarded. See 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's Trademark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Identical or Confusingly Similar The Panel accepts that the Complainant has not authorized the Respondent to use the Complainant's Trademark. There is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the Complainant's Trademark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a page 4 complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Respondent did not submit a formal Response. The fact that the Respondent did not submit a formal Response does not automatically result in a decision in favor of the Complainant. However, the Respondent's failure to file a formal Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) Before any notice to the Respondent 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 has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no 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 Panel agrees with the Complainant that there is no evidence to show that the Respondent has trademark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name. The Disputed Domain Name resolves to a website which advertises the Registrar's domain name registration and web hosting services. There is therefore no evidence to suggest that the Respondent has used, or has made any demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name is in connection with a bona fide offering of goods or services, or that the Respondent is making legitimate, noncommercial or fair use of the Disputed Domain Name, without the intent to misleadingly divert Internet users from the Complainant's website and/or services. The Panel also notes that the nature of the Disputed Domain Name, which incorporates the Complainant's Trademark in its entirety with the addition of a descriptive term, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Disputed Domain Name incorporates the Complainant's Trademark in its entirety. After reviewing the supporting evidence submitted by the Complainant, the Panel agrees that the Complainant's Trademark appears to be well-known. A quick Internet search conducted by the Panel shows that the top search results returned for the keyword "SAINT-GOBAIN" are the Complainant's Website and third-party websites providing information about the Complainant and/or its products. Therefore, the Panel agrees that the Respondent must have been aware of the Complainant and its rights in the Complainant's Trademark when registering and using the Disputed Domain Name. The Disputed Domain Name resolves to a website promoting the Registrar's services. This does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0. The Panel finds that the following factors support a finding that the Disputed Domain Name was registered and has been used by the Respondent in bad faith: page 5 (i) The Complainant's Trademark appears to be well-known. (ii) The incorporation of the Complainant's Trademark with the term "abrasives", which clearly refers to the Complainant's business and products, indicates that the Respondent must have been aware of the Complainant and the Complainant's Trademark when registering the Disputed Domain Name (see Dansko, LLC v. Client Care, Web Commerce Communications Limited, WIPO Case No. D2023-0425). (iii) The Complainant's Trademark is also used as the domain name of the Complainant's Website. The Panel also notes that the Respondent failed to respond to the Complainant's contentions and has provided no evidence of any actual or contemplated good faith use of the Disputed Domain Name. This further supports a finding of bad faith registration and use of the Disputed Domain Name. In the circumstances, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision For 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, be transferred to the Complainant. /Gabriela Kennedy/ Gabriela Kennedy Sole Panelist Date: June 16, 2023
Full & Egal Universal Law Academy