WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie de Saint-Gobain v. Saint Gobain Inc.
Case No. D2006-1420
1. The Parties
The Complainant is Compagnie de Saint-Gobain, Courbevoie, France, represented by Ballard Spahr Andrews & Ingersoll, LLP, Philadelphia, United States of America.
The Respondent is Saint Gobain Inc., Procity, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <stgobaininc.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2006. On November 9, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On November 10, 2006, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2006.
The Center appointed Clive Elliott as the Sole Panelist in this matter on December 20, 2006. 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 has been in business since the 17th century. It is a large, international company that conducts business around the world under the “Saint-Gobain” name and mark. It trades in a number of countries through various wholly owned and controlled subsidiaries. It owns more than 1200 consolidated companies engaged in a wide range of business activities including the manufacture of building materials, construction products and packaging products.
In 2005, Complainant had worldwide sales of approximately € 35 billion and a net income of approximately € 1.3 billion.
Complainant operates 46 different wholly owned and controlled subsidiary companies in the U.S., many of which use the “Saint-Gobain” name and mark and is the proprietor of the “Saint-Gobain” name and mark in that country. Furthermore, Complainant owns several federal registrations for its SAINT GOBAIN marks including U.S. Registration Nos.: 2,423,511; 2,073,374; 1,648,605; and 1,626,954.
According to whois records, Respondent is listed as “Saint Gobain Inc” located at 125 Protown, Procity, Colorado, USA. Apart from this not too much is known of the Respondent.
5. Parties’ Contentions
Complainant contends that as a result of its worldwide promotional efforts and business activities, all of which predate Respondent’s registration of the <stgobaininc.com> domain name, the “Saint-Gobain” mark and name is very well recognized all over the world, including in the United States.
Further, Complainant submits that given the international recognition and strength of Complainant’s SAINT GOBAIN mark, combined with the length of time it has been used, that Complainant’s SAINT GOBAIN mark should be accorded extensive protection.
Complainant then argues that on any view the <stgobaininc.com> domain name is nearly identical and confusingly similar to Complainant’s “Saint-Gobain” mark and name, noting that “st” is a common and recognized abbreviation for “saint”.
In terms of the Respondent, Complainant states that there is no corporate record of an entity by the name of “Saint Gobain Inc” registered to do business in Colorado, nor is there a known town, city or any other type of organized municipality named “Procity” in the State of Colorado. On this basis, it is contended that the Panel should conclude that the name and address provided to the registrar by Respondent is false.
Complainant argues out that providing false whois information may provide a basis for finding bad faith. See, AT&T Corp. v. ATandT.net, WIPO Case No. D2005-1006, (Nov. 22, 2005) (Respondent provided false information to the registrar, the panel finding that this was indicative of bad faith).
Complainant also asserts that while Complainant was investigating the change in domain name configuration to its “www.saint-gobain.com/us” site, it learned that Respondent was fraudulently holding itself out as Gordon Schmitt, the Chief Information Officer of Saint-Gobain Corp. (a wholly owned and controlled subsidiary of Complainant), in an attempt to negotiate discounted telecommunication services from AccessOne.
Complainant further asserts that Respondent has only made two uses of the <stgobaininc.com> domain name -- to resolve to a holding/portal site and to auto-forward to Complainant’s “www.saint-gobain.com/us” site -- neither of which is use in connection with a bona fide offering of goods or services.
Complainant argues that Respondent can provide no legitimate justification for the registration and use of the domain name and that it is appropriate to infer that Respondent, having full knowledge of Complainant’s rights, registered and used the <stgobaininc.com> domain name with the intent to attract for commercial gain users to its future site by creating a likelihood of confusion with Complainant’s “Saint-Gobain” name and mark as to source, sponsorship, affiliation or endorsement.
Respondent did not lodge a reply. In this situation, as has been said on numerous occasions before, a panelist is only able to assess the evidence and submissions filed by the complainant. Likewise, in the absence of any contrary assertion or dispute those assertions and submissions are presumed to be, prima facie, correct.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the domain name Complainant must prove 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 has been registered and is being used in bad faith.
Having considered the Complaint, the Panel finds that all requirements of paragraph 4(a) of the Policy are met. The exact identity of the Respondent is unclear but in the Panelist’s view nothing turns on this.
A. Identical or Confusingly Similar
The evidence in this case is clear-cut. Complainant has sold a range of goods in, inter alia, the building and packaging products area and has done so through a variety of commercial vehicles and in a large number of countries around the world, including the USA, where the Respondent purports to operate from. The Panel finds that Complainant has traded in a significant way for many years and that it has the necessary rights in and to the trademark/name “Saint-Gobain”.
The disputed domain name is not identical to Complainant’s trademark/name. However, Complainant is correct to point to the commonly known abbreviation “st”. “Inc” of course is the abbreviation for an incorporated entity. Of relevance for present purposes, it is readily apparent that the distinctive portion of Complainant’s trademark has been adopted, with the addition of the non-distinctive and indeed descriptive element “Inc”. On this basis, it is found that the disputed domain name is confusingly similar to the trademark SAINT GOBAIN.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
As has been noted previously, once a complainant makes a prima facie case the burden shifts to the respondent to establish rights or legitimate interests in the disputed domain name; see . Do The Hustle, LLC v. Tropic Web, WIPO Case No D2000-0624 (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name). The Panel concludes that, on the basis of the Complaint, that a prima facie case is established under this ground.
This finding is made in part in light of the absence of any effort to contradict Complainant’s assertions and submissions. Indeed, Complainant’s assertions in relation to the alleged false contact details and efforts to mislead third parties calls for a response. The only inference that can be drawn from Respondent’s silence is that either there is some basis for these allegations or Respondent is unable to refute them in whole or in part.
Even so, the Panel is required to ask whether any reasonable explanation for the registration and use of the domain name might exist. The contention by the Complainant, that Respondent has used the domain name in connection with a holding or portal site and/or in an attempt to negotiate discounted telecommunication services, suggests that Respondent has not acted appropriately.
On the basis of the evidence and this un-contradicted assertion, it is reasonable to infer that no right or legitimate interest exists on the part of the Respondent and that the Respondent’s motives are not legitimate.
Thus the Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
It is now well-established as to what constitutes bad faith under the Policy. Given what appears to be the substantial reputation and goodwill in the Complainant’s trademark/name and specifically due to its use of its trademark/name in a wide range of industries and in a number of countries, it is reasonable to infer that the domain name was probably chosen for the reasons contended by Complainant. Put another way, it is difficult to see how (on the current record) the Respondent can claim to have registered and been using the disputed domain name in good faith.
The Panel is therefore satisfied that the third element of the Policy has been met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <stgobaininc.com> be transferred to the Complainant.
Clive L. Elliott
Dated: January 3, 2007