ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Compagnie de Saint-Gobain v. Paradis Lolo Case No. D2024-4409 1. The Parties The Complainant is Compagnie de Saint-Gobain, France, represented by Nameshield, France. The Respondent is Paradis Lolo, United Kingdom. 2. The Domain Name and Registrar The disputed domain name is registered with One.com A/S (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2024. On October 29, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2024, the Registrar transmitted by email to the Center its verification, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 30, 2024, 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 October 31, 2024. 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 October 31, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2024. The Center appointed Daniel Peña as the sole panelist in this matter on November 25, 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.
page 2 4. Factual Background The Complainant is a French company that produces, processes, and distributes materials for the construction and industrial markets. With a global customer base, the Complainant specializes in providing materials for sustainable habitat and construction markets. The Complainant had revenues of over EUR 47.9 billion in 2023 and has approximately 160,000 employees. The Complainant is the owner of several registered trademarks for the SAINT-GOBAIN mark worldwide, for example: - European Union Trademark Registration number 001552843 for the SAINT-GOBAIN word mark, registered on December 18, 2001; - International Trademark Registration number 740184 for the SAINT-GOBAIN word and design mark, registered on July 26, 2000; - International Trademark Registration number 740183 for the SAINT-GOBAIN word mark, registered on July 26, 2000; - International Trademark Registration number 596735 for the SAINT-GOBAIN word and design mark, registered on November 2, 1992; and - International Trademark Registration number 551682 for the SAINT-GOBAIN word and design mark, registered on July 21, 1989. The disputed domain name was registered on October 21, 2024. It resolves to a Registrar parked page. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain. The Complainant contends that the disputed domain name and the SAINT-GOBAIN trademark are confusingly similar. According to the Complainant’s contentions, the addition of the term “le group” does not prevent a finding of confusing similarity between the disputed domain name and the SAINT-GOBAIN trademark. No rights or legitimate interests. The Respondent has no connection with the Complainant or any of its affiliates and has no authorization to make any use of the SAINT-GOBAIN trademark. The Complainant does not carry out any activity for, nor has any business with, the Respondent. The Complainant further contends that the Respondent is not commonly known by the disputed domain name. As the disputed domain name is inactive, the Complainant contends that the Respondent did not make any use of the disputed domain name since its registration, and it confirms that Respondent has no demonstrable plan to use it. The Respondent, therefore, has no rights or legitimate interests in the disputed domain name.
page 3 The Complainant submits that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s well-known SAINT-GOBAIN trademark. The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and 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. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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 has been registered and is being used in bad faith. Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided evidence of its rights in the trademarks SAINT-GOBAIN on the basis of its multiple trademark registrations. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”, section 1.2.1). It has also been established by prior UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is confusingly similar to a trademark. Such findings were confirmed, for example, within section 1.7 of WIPO Overview 3.0. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s SAINT-GOBAIN mark. Noting the Respondent’s incorporation of the Complainant’s mark in full in the disputed domain name, the disputed domain name is confusingly similar to the Complainant’s mark. The mere addition of the expression “le group” to the Complainant’s trademark SAINT-GOBAIN does not prevent a finding of confusing similarity with the Complainant’s marks. Furthermore, the generic Top-Level Domain “(gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s mark and the Complainant has satisfied the first requirement of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 The Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Based on the information submitted by the Complainant, the Complainant has not granted the Respondent authorization to register or use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. The Panel also notes in this regard that the composition of the disputed domain name as such carries a risk of implied affiliation. Finally, the Respondent did not file a Response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the disputed domain name reproduces the Complainant’s mark SAINT-GOBAIN in its entirety. The addition of the term “le group” can be interpreted as a reference to the group of companies of the Complainant. Therefore, the Panel finds it likely that the Respondent was aware of the Complainant’s mark at the time of registration of the disputed domain name. On this subject, section 3.1.4 of the WIPO Overview 3.0 says: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar […] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” The Panel therefore holds that the disputed domain name was registered in bad faith. As to the requirement of use in bad faith, the Panel considers the matter to be a case of passive holding, i.e. a case where the disputed domain name was not connected to an active website. Panels 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. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although 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, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes that the Complainant has provided evidence regarding the reputation of its trademark. The Respondent did not file a Response to the Complaint. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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. /Daniel Peña/ Daniel Peña Sole Panelist Date: December 9, 2024
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