WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie de Saint Gobain v. Com-Union Corp
Case No. D2000-0020
1. The Parties
Complainants are Compagnie de Saint Gobain S.A., and Saint-Gobain Vitrage S.A., both at: Avenue díAlsace 18, 92400 Courbevoie, France, and represented by Marion Barbier, Bird & Bird, 3 Centre díAffaires Edouard VII, Square Edouard VII, 75009 Paris, France, hereinafter the "Complainant".
Respondent is Com-Union Corp., 210 Club Drive, Palm Beach Gardens, FL 33418, U.S.A., represented by Jean Pierre Durand, 210 Club Drive, Palm Beach Gardens, FL 33418, U.S.A., hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is "saint-gobain.net", hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainantís complaint on January 28, 2000 (electronic version) and February 1, 2000 (hard copy). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is February 4, 2000.
On February 1, 2000, the Center transmitted via email to Network Solutions Inc. a request for registrar verification in connection with this case. On February 3, 2000, Network Solutions Inc. transmitted via email to the Center, Network Solutionsí Verification Response, confirming that the Respondent is the registrant and that the contact for both administrative and billing is Blanca Durant and that the technical contact is Freeservers.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on February 4, 2000, to the Respondent, Blanca Durant (firstname.lastname@example.org) and FreeServers (email@example.com) Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, facsimile and e-mail. The postal address used for Respondent was as follows:
Riachuelo 20 CG Bellavista
Antipazan, Mexico 54050
The Center advised that the Response was due by February 23, 2000.
On February 21, 2000, the Center received the Response in hardcopy. While it does not comply with all the requirements posed by paragraph 5 of the Rules, its content will be taken into account in the analysis of this matter.
On March 1, 2000, in view of the Complainantís designation of a single panelist (but without prejudice to any election to be made by the respondent) the Center invited M. Geert Glas to serve as a panelist.
Having received on February 28, 2000, M. Geert Glas' Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Geert Glas was formally appointed as the Sole Panelist. The Projected Decision Date was March 14, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Response, the e-mails exchanged, the evidence presented, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The complaint is based upon several trademark registrations for Saint-Gobain, copies of which appear in Exhibits 2, 3, 4 and 5 of the Complaint.
These trademarks include, among others:
Saint-Gobain (France) No. 1527823 March 29, 1989
Saint-Gobain (France) No. 1362805 July 08, 1986
Saint-Gobain (International) No. 551 682 May 23, 1990
It appears from an E-mail sent on February 3, 2000, by Network Solutions Inc. to the Center, that Respondent is the registrant of the Domain Name, having as address Riachuelo 20 CG Bellavista, Antipazan, Mexico 54050, Mexico. Respondent registered the Domain Name on April 10, 1999. Respondent registered also other domain names (airliquide.net, air-france.net) which are not at issue here. There is no relation between Respondent and Complainant and Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorization to use Complainantís marks. The Domain Name is connected to a web site initially containing limited information on Complainant and later on, on the history of the "forÍt de Saint-Gobain".
5. Parties Contentions
Complainant contends that Respondent has registered the Domain Name which is identical to Complainant's Saint-Gobain trademarks, that Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is used in bad faith.
Consequently, Complainant requires the transfer of the Domain Name registration to the Complainant.
Respondent, described as an association of North American shareholders (among which shareholders of Complainant), contends that Saint-Gobain is the name of a saint, a town and a forest. Respondent considers that he has no right to sell any merchandise under this name, but that the name, as a symbol of the fight against the oppression of the powerful, belongs to "Christianity, to history, to geography and to the world patrimony". According to Respondent, the Domain Name was originally only used to discuss business strategies and other matters relevant to shareholders of Complainant.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical to the trademark in which the Complainant has right; and,
(2) that the Respondent has no legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and used in bad faith.
The Domain Name is "saint-gobain.net".
Saint-Gobain is a registered trademark of the Complainant.
In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark Saint-Gobain of the Complainant.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks. In addition to that, as pointed out by Complainant, it appears that Respondent has not registered nor used the name "Saint-Gobain" as a trademark, nor has it ever been known by this name.
Respondent alleges in substance that the name Saint-Gobain belongs to the whole world, but does not, however, show its own right or legitimate interest in the Domain Name.
The Administrative Panel therefore finds that Respondent has no right or legitimate interest in the Domain Name.
c. Registration and Use in Bad Faith
"Com-union registered on April 10 and April 16, 1999,in the ".Net" TLD category the names of three French companies they had invested in: airliquide.net, airfrance.net and sint-gobain.net. These three corporations had in common their poor performance in term of MVA (Market Value Added) and in our view in term of communication with their shareholders. Dissatisfied with the content of the information provided by these foreign corporations, com-union wanted to take advantage of the publishing facilities of the Internet to share their concern with the management: we were asking for more relevant figures and we had questions regarding their strategies which were implemented in the context of the new e-economy." Response received on February 21, 2000.
It goes without saying that shareholders or other interested parties have the right to voice opinions, concerns and criticism with respect to a listed company and that the Internet constitutes an ideal vehicle for such activities.
The issue at hand is however not as Respondent seems to contend, the freedom of speech and expression but the mere choice of the domain name used to exercise this inalienable freedom of speech and expression.
When registering the Domain Name, Respondent knowingly chose a name which is identical and limited to the trademark of Complainant and which is identical to the domain name registered by Complainant in the .com gTLD ("More to the point, in April 1999, the Compagnie de Saint-Gobain had already registered all the domain names that were of any use for its business. If the DNS Saint-Gobain.net was available then, it was because it was of no value to their operation" Response received on February 21.2000).
Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names.
By failing to do so, and by knowingly choosing a domain name which solely consists of Complainantís trademark, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties.
"In North America, Shareholders are permitted to question the business model of the corporations they have invested in. Unfortunately, the shareholders rights are not equally recognized on the other side of the Atlantic (and particularly in France). (Ö)
Consequently, com-union decided at the end of September 1999, to censor the content of the sites air-france.net, ariliquide.net and saint-gobain.net (Ö). It was also decided not to renew the registrations of the different DNS and only to keep the site saint-gobain.net for its symbolic value". Response received on February 21,2000).
Today (March 14,2000) the website identified by the Domain Name merely contains some paragraphs devoted to the history of the "forÍt de Saint-Gobain" where allegedly the Picardian resistance found shelter against tyranny in the eleventh century. It also contains a number of commercial banners including an on-line gambling banner ad.
In its Response received on February 21, 2000, the Respondent described this symbolic value as "Saint-Gobain, a symbol of light against the oppression of the powerful, belongs to all" and "we wish to keep our right to the domain name Saint-Gobain.net, not to engage in any commercial activity or to be parasitic to anybody, but to keep it as a symbol of our freedom and dignity."
Respondentís current intention to commemorate the role of the "forÍt de Saint-Gobain" in the 11th century Picardian resistance movement can of course not be criticized.
The Administrative Panel however fails to understand the link between this as such laudatory goal to commemorate the "forÍt de Saint-Gobain" and Respondentís determination "to keep (the Domain Name) as a symbol of our freedom and dignity."
It therefore seems that Respondentís real current goal is to prevent Complainant which Respondent does not seem to hold in high esteem from reflecting its trademark in the Domain Name. It is thereby illustrative that while Respondent registered three domain names in similar circumstances and with a similar goal, it has indicated not to renew the registrations for the domain names air-france.net and airliquide.net, only keeping the saint-gobain.net registration.
In conclusion and in view of the above, the Administrative Panel finds that Respondent has registered and used the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name "saint-gobain.net" registered by Respondent is identical to the trademark of Complainant, that the Respondent has no right or legitimate interest in respect of the Domain Name, and that the Respondentís Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4, i of the Policy, the Administrative Panel requires that the registration of the Domain Name "saint-gobain.net" be transferred to Complainant.
Date: March 14, 2000