The Complainant is Compagnie de Saint-Gobain of Courbevoie, France, represented by Nameshield, France.
The Respondent is Reza Bahadori of Ahvaz, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2016. On September 27, 2016, the Center transmitted by email to IRNIC a request for verification in connection with the disputed domain name. Hard copies of the Complaint were received by the Center on September 30, 2016. On October 2, 2016, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 11, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2016. The Respondent did not file any response. On November 1, 2016, the Center notified the Respondent’s default.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on November 4, 2016. 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 the registered owner of many trademark registrations consisting of or containing the term “Saint-Gobain”, in particular International Trademark Registration SAINT-GOBAIN No. 740183 registered on July 26, 2000. It further results from the Complainant’s undisputed evidence and allegations that the Complainant is the owner of the domain name (created on December 29, 1995).
The disputed domain name was registered on July 18, 2015. It results from the Complainant’s documented allegations that no content is displayed on the website to which the domain name resolves, in particular it is displayed the message “Adresse introuvable”.
On August 22, 2016 the Complainant sent a cease and desist letter to the Respondent asserting its trademark rights and requesting the Respondent to transfer the disputed domain name to the Complainant at no cost. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it is a French company specialized in the production, processing and distribution of materials and organized into three sectors – Innovative Materials, Construction Products and Building Distribution. The Complainant further contends that for 350 years it has consistently demonstrated its ability to invent products that improve quality of life and that it is now one of the top 100 industrial groups in the world and one of the 100 most innovative companies.
The Complainant ascertains that the disputed domain name is identical to its trademark SAINT-GOBAIN, since it totally incorporates said trademark without any adjunction or deletion. Furthermore, the addition of the country code Top-Level Domain (“ccTLD”) “.ir” is not sufficient to exclude the likelihood of confusion between the disputed domain name and the Complainant’s trademarks.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, the Respondent is not known as “Saint-Gobain”, nor is affiliated with the Complainant or authorized by the Complainant in any way to use its trademark SAINT-GOBAIN. The Complainant does not carry out any activity for, nor has any business with the Respondent. The website in relation with the disputed domain name is inactive since its registration. There is therefore no evidence that the Respondent has used, or has made any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or for noncommercial or fair use purposes. Finally, according to undisputed allegation of the Complainant, in his response to the cease-and-desist letter sent by the Complainant, the Respondent purposed to sell the domain name to the Complainant for EUR 1,200. Thus, the Complainant contends that the Respondent has registered the disputed domain name with the aim to deprive it of its intellectual property right on the trademark SAINT-GOBAIN by preventing it to register it, and then to try to sell it for an excessive price.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In particular, the Complainant alleges that the disputed domain name is identical to its well-known trademark SAINT-GOBAIN. Therefore, the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark SAINT-GOBAIN. Moreover, the website under the disputed domain name is inactive since its registration. Furthermore, the Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name. On the contrary, in the response to the cease-and-desist letter, the Respondent purposed to sell the disputed domain name for EUR 1,200, being this price far in excess of the out of pocket expenses for registering the disputed domain name. This confirms the Respondent’s bad faith. Finally, the Respondent has been considered as a cyber squatter in a precedent irDRP dispute. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires the complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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 or is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademarks consisting of or including the term “Saint-Gobain”. Reference is made in particular to International Trademark Registration SAINT-GOBAIN No. 740183 registered on July 26, 2000 that predates the creation date of the disputed domain name, which is July 18, 2015.
Many Uniform Domain Name Resolution Policy (“UDRP”)1 panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910). This is the case in the present proceeding where the Complainant’s registered trademark is fully included in the disputed domain name.
The Panel has therefore no doubt that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the Complainant’s undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
No content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor 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 at issue in the sense of paragraph 4(c)(1) and (3) of the Policy (see Sanofi v. kiyuni,WIPO Case No. D2016-1190; Sanofi, Genzyme Corporation v. Domain Privacy,WIPO Case No. D2016-1193; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, supra; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra).
Furthermore, the Panel does not dispose of any elements that could lead the Panel to the conclusion that the Respondent is commonly known by the disputed domain name or that he has acquired trademark rights pursuant to paragraph 4(c)(2) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered or is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
The trademark SAINT-GOBAIN has been recognized by UDRP panels as being well reputed (e.g., Compagnie de Saint-Gobain v. Giovanni Laporta, Yoyo.Email,WIPO Case No. D2014-2156; Compagnie de Saint Gobain v. Saint Gobain Inc.WIPO Case No. D2006-1420). This panel joins the view of these previous panels. Therefore, it is the view of this Panel that the Respondent knew or should have known that the disputed domain name included the Complainant’s SAINT-GOBAIN trademark when he registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed SAINT-GOBAIN mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra and The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra).
The disputed domain name does not resolve to an active website. In this regard, the Panel notes that passive holding does not preclude a finding of bad faith (see e.g. KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Finally, according to undisputed allegation of the Complainant, in his response to the cease-and-desist letter, the Respondent purposed to sell the disputed domain name to the Complainant for EUR 1,200. Indeed the Respondent replied to the cease and desist letter on August 24, 2016 in Persian language but, no English translation of the text has been provided to the Panel. It is true that upon a further request sent by the Complainant in English language on August 25, 2016 asking: “How much does it represent?”, the Respondent replied “1200 EUR” on the same day. However, the Panel has no proper evidentiary basis to evaluate whether or not the Respondent effectively tried to sell the disputed domain name to the Complainant, since the text of the alleged proposal is written in a language different form the language of the proceedings. However, this Panel finds that there is no need to come to a final conclusion on this last point since the further elements of this case are sufficient to affirm both, that the disputed domain name has been registered and is being used in bad faith.
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: November 17, 2016
1 The Policy is a variation of the UDRP and the Panel finds it appropriate to cite past UDRP decisions.
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