ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Compagnie de Saint-Gobain v. 上海萨帛机电控制系统有限公司 (shang hai sa bo ji dian kong zhi xi tong you xian gong si) Case No. D2024-2854 1. The Parties Complainant is Compagnie de Saint-Gobain, France, represented by Nameshield, France. Respondent is 上海萨帛机电控制系统有限公司 (shang hai sa bo ji dian kong zhi xi tong you xian gong si), China. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2024. On July 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 18, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (NOT IDENTIFIED) and contact information in the Complaint. The Center sent an email communication to Complainant on July 19, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on July 22, 2024. On July 19, 2024, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the Domain Name is Chinese. On July 19, 2024, Complainant requested English to be the language of the proceeding. Respondent did not submit any comment on Complainant’s submission. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 19, 2024. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on August 22, 2024. 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 Complainant is a French company that produces, processes, and distributes materials for the construction and industrial markets. With a global customer base, Complainant specializes in providing materials for sustainable habitat and construction markets. Complainant has a revenue of over EUR 47.9 billion in 2023 and approximately 160,000 employees. Complainant is the owner of several registered trademarks for the SAINT-GOBAIN mark worldwide, for example: - European Union registered trademark number 001552843 for the SAINT-GOBAIN word mark, registered on December 18, 2001; - International registered trademark number 740184 for the SAINT-GOBAIN word and design mark, registered on July 26, 2000; - International registered trademark number 740183 for the SAINT-GOBAIN word mark, registered on July 26, 2000; - International registered trademark number 596735 for the SAINT-GOBAIN word and design mark, registered on November 2, 1992; and - International registered trademark number 551682 for the SAINT-GOBAIN word and design mark, registered on July 21, 1989. In addition, Complainant has a subsidiary SAINT-GOBAIN PERFORMANCE PLASTICS CORPORATION that owns a registered trademark for the FURON mark, more specifically, European Union registered trademark number 000342071 for the FURON word mark, registered on February 24, 2000. The SAINT-GOBAIN and FURON trademarks will hereinafter be referred to as Complainant’s trademarks. Complainant also owns several domain names that includes its trademark SAINT-GOBAIN, such as the domain name , registered on December 29, 1995. The Domain Name was registered on July 11, 2024, and at the time of filing of the Complaint, it resolved to an inactive website. At the time of the Decision, the Domain Name resolves to an error or inactive page. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
page 3 In particular, Complainant contends that it has trademark registrations for SAINT-GOBAIN and that Respondent registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide and well-known SAINT-GOBAIN products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use the Domain Name, which includes Complainant’s trademarks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue - Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Complainant submitted its Complaint in English. In its email dated July 19, 2024, Complainant requested that the language of the proceeding be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese. Complainant contends that: the Domain Name is registered in Latin characters and not Chinese script, that English is the language most widely used in international relations, that the proceedings in Chinese would require Complainant to retain specialized translation services, and the time and costs required for translation of the proceedings would unfairly burden Complainant and delay the proceedings and adjudication of this matter. Complainant further states that the Center has communicated with Respondent in Chinese and English and Respondent has been provided the opportunity to respond in Chinese. In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs. The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that the Center notified the Parties in Chinese and English of the language of the proceeding as well as notified Respondent in Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a Response. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding.
page 4 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence of its rights in the SAINT-GOBAIN and FURON trademarks, as noted above. Complainant has also submitted evidence, which supports that the SAINT-GOBAIN trademarks are widely known and a distinctive identifier of Complainant’s products and services With Complainant’s rights in the SAINT-GOBAIN and FURON trademarks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant’s SAINT-GOBAIN and FURON trademarks. These trademarks are recognizable in the Domain Name. In particular, the Domain Name includes Complainant’s SAINT-GOBAIN and FURON trademarks in their entirety, with the absence of a hyphen “-” between “saint” and “gobain” and the addition of a hyphen “-” after “saintgobain” in the Domain Name. The absence of the hyphen between “saint” and “gobain” and the addition of the hyphen “-” after “saintgobain” in the Domain Name as noted does not prevent a finding of confusing similarity between the Domain Name and Complainant’s SAINT-GOBAIN and FURON trademarks. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its trademarks, and does not have any rights or legitimate interests in the Domain Name. Complainant has
page 5 confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use Complainant’s trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with the SAINT-GOBAIN or FURON trademarks and there is no evidence showing that Respondent has been commonly known by the Domain Name. Further, the nature of the Domain Name comprising Complainant’s trademarks in their entirety, connected by a hyphen “-”, indicates an awareness of Complainant. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, at the time of filing of the Complaint, the Domain Name resolved to an inactive website. At the time of the Decision, the Domain Name directs to an error page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The Panel finds that Complainant provided ample evidence to show that registration and use of the SAINT-GOBAIN trademarks long predate the registration of the Domain Name. Complainant is also well established and known. Indeed, the record shows that Complainant’s SAINT-GOBAIN trademarks and related products and services are widely known and recognized. Therefore, Respondent was likely aware of the SAINT-GOBAIN trademarks when it registered the Domain Name, or knew or should have known that the Domain Name was confusingly similar to Complainant’s trademarks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
page 6 The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007. Further, the Domain Name also incorporates the FURON trademarks in its entirety owned by one of Complainant’s subsidiaries, which suggests Respondent’s actual knowledge of Complainant, its business and trademarks at the time of registration of the Domain Name and its effort to opportunistically capitalize on the fame of Complainant’s trademarks. In the present circumstances, although the Domain Name is inactive, considering the distinctiveness and reputation of the SAINT-GOBAIN or FURON trademarks, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, and the implausibility of any good faith use to which the Domain Name may be put particularly noting the Domain Name clearly targets Complainant, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy. 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 Domain Name be transferred to Complainant. /Kimberley Chen Nobles/ Kimberley Chen Nobles Sole Panelist Date: September 4, 2024
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