The Complainant is Compagnie de Saint-Gobain, Courbevoie, France, represented by Eckert Seamans Cherin & Mellott LLC, United States of America.
The Respondent is Bao Shui Chen, Shanghai, People's Republic of China.
The disputed domain name <saint-gobian.com> is registered with LuckyDomains.ca Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2009. On June 2, 2009, the Center transmitted by email to LuckyDomains.ca Inc. a request for registrar verification in connection with the disputed domain name. On June 2, 2009, LuckyDomains.ca Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center concerning the registrant information, the Complainant filed an amendment to the Complaint on June 9, 2009. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 3, 2009.
The Center appointed Francine Tan as the sole panelist in this matter on July 13, 2009. 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.
The Complainant is a multi-national company that conducts business all over the world under the SAINT-GOBAIN name and mark, including through its numerous wholly-owned and controlled subsidiaries. It has been in business since the 17th century. It currently owns more than 1,200 consolidated companies around the world that engage in a wide range of business activities including the distribution of building materials, the sale of high-performance materials (e.g. reinforcements, ceramics, plastics, and abrasives), the sale of construction products, flat glass and packaging products. The Complainant has a manufacturing and/or retail presence in more than 50 countries including the United States and China, and employs over 200,000 people worldwide. In 2007, its worldwide sales were approximately Euro 43 billion and net income, approximately Euro 2.1 billion.
Vis-à-vis China where the Respondent is located, the Complainant has, since 1990, sold and provided ceramics and plastics, abrasives, flat glass, packaging and a variety of other goods and services under the SAINT-GOBAIN name and trade mark. The Complainant operates 46 different wholly-owned and controlled subsidiary companies in China, many of which use the said trade mark. The Complainant has approximately 11,700 employees in China and its sales turnover in the year 2007 was Euro 732 million. The Complainant also promotes its business activities in China via its website at “www.saint-gobain.cn”.
The Complainant has, inter alia, an International Registration (in which China is a designated country) as well as several U.S. registrations for its SAINT-GOBAIN marks.
According to WhoIs records, the Respondent registered the disputed domain name on September 4, 2008. The Complainant submitted evidence showing that the disputed domain name resolved to a website with sponsored listings content, containing links and references to the Complainant and the type of products sold by them. On October 7, 2008, the Complainant sent a cease and desist letter to the Respondent and therein requested the transfer of the disputed domain name to the Complainant. The Complainant did not receive any response from the Respondent.
The Complaint is based on the following grounds:
(1) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
On this point, the Complainant asserted, inter alia, that: (i) it has established significant rights in the trade mark SAINT-GOBAIN which predate the Respondent's registration of the disputed domain name; and (ii) the disputed domain name is nearly identical and confusingly similar to the Complainant's SAINT-GOBAIN trade mark and constitutes a typosquatting variation on the Complainant's trade mark. Even with the minor variation, the disputed domain name is nearly identical in appearance, pronunciation, and commercial impression to the Complainant's SAINT-GOBAIN trade mark.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant's assertions were that it has strong, world-wide rights, both registered and unregistered, in the SAINT-GOBAIN trade mark. The SAINT-GOBAIN trade mark enjoys a high level of recognition and fame as a result of the business the Complainant has done under the mark. No relationship exists between the Complainant and the Respondent and neither has the Complainant licensed nor entered into any relationship which gives the Respondent any right to use the SAINT-GOBAIN mark or any like variation, including SAINT-GOBIAN, as a trade mark or as a component of a mark or domain name. There is no evidence that the Respondent's registration or use of the disputed domain name can be categorized under any of the justifications listed in paragraph 4(c)(i)-(iii) of the Policy, nor is there any other evidence to support a finding that the Respondent has rights or legitimate interests in the disputed domain name. In the present case, the Respondent uses the disputed domain name to resolve to a sponsored links site that contains references and links to goods of the type sold by the Complainant or websites that directly offer the Complainant's goods. The sponsored listings business model clearly suggests that the Respondent gains click-through revenue for any links that are clicked on through the “www.saint-gobian.com” site. Diverting consumers who are looking for the Complainant's products on the Internet to third-party websites offering products that directly compete with the Complainant's products for commercial gain is not legitimate, bona fide use and does not confer legitimate interests in the domain name. There is no evidence that the Respondent has made any use of the disputed domain name that could be classified as legitimate non-commercial or fair use.
(3) The domain name was registered and is being used in bad faith.
The Complainant asserts that there can be no doubt that the Respondent knew of and had the Complainant's SAINT-GOBAIN trade mark in mind when the disputed domain name was registered, and that it was the Respondent's intention to profit off the goodwill and reputation associated with the Complainant's name and trade mark.
The Respondent has no rights in the disputed domain name or mark corresponding to the domain name. Further, he is not making legitimate or fair use of the disputed domain name but has in fact registered and is using the disputed domain name with the intent to attract, for commercial gain, users to its site by creating a likelihood of confusion with the Complainant's SAINT-GOBAIN trade mark as to source, sponsorship, affiliation, or endorsement. The disputed domain name differs from the Complainant's trade mark only by the reversal of the letters “i” and “a” in the “gobain” portion of the Complainant's mark and is an instance of typosquatting which is evidence of the Respondent's bad faith registration and use of the domain name.
The Respondent has furthermore been named as a respondent in numerous domain name administrative proceedings before WIPO, for instance: Futurebazaar India Ltd. v. Arashid, Chen Xianshang, Bao Shui Chen, WIPO Case No. D2008-0175; Cis Bio International v. N.A. Bao Shui Chen, WIPO Case No. D2007-1191; Deveraux Deloitte v. Bao Shui Chen, WIPO Case No. D2007-1160; Weyerhaeuser Company v. Chen Bao Shui, WIPO Case No. D2007-0969; The Ford Foundation v. Chen Bao Shui, WIPO Case No. D2007-0862; Dillard's Inc., Dillard's International, Inc. v. Chen Bao Shui, WIPO Case No. D2007-0520. In all of these cases, the Respondent was held to have registered and used the domain names in bad faith, and the domain names in question were ordered to be transferred to the complainant.
The Respondent did not reply to the Complainant's contentions.
In accordance with paragraph 4(a) of the Policy, the Complainant has to prove that each of the three following elements is satisfied:
(1) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant in this case has, without doubt, trade mark rights in the mark SAINT-GOBAIN.
The next question to be considered is whether the disputed domain name which contains a mis-spelling of the said trade mark in which the letters “a” and “i” have been reversed is confusingly similar to “saint-gobain”. On this point, the Panel agrees with the Complainant that the disputed domain name with the said mis-spelling is confusingly similar. A mis-spelling of this kind in which a letter is switched with another is one that Internet users are highly likely to make. In this case, the mis-spelling appears to be purposeful on the part of the Respondent, designed to take advantage of spelling mistakes that Internet users are likely to make when intending to type the Complainant's website address. In other words, it appears to be a classic case of typosquatting. The addition of the generic top level domain extension “.com” does not eliminate the confusion, which principle has been well established in numerous UDRP decisions.
The Panel therefore finds that the first element in paragraph 4(a) of the Policy has been satisfied.
Whilst a complainant is required under the second limb in paragraph 4(a) of the Policy to prove that the respondent has no rights or legitimate interests in the disputed domain name, what many earlier panel decisions have established is the general principle that the complainant is only required to make out a prima facie case in regard to this issue in order to move the burden of proof to the respondent. Once this has been satisfied by the complainant, the burden shifts to the respondent to demonstrate his rights or legitimate interests in the domain name. The rationale of course is that the respondent would be in the best position to proffer evidence and information pertaining to his rights and legitimate interests in the domain name that is the subject of the dispute.
Paragraph 4(c) of the Policy provides that the Respondent can seek to establish its rights or legitimate interests in a domain name by showing any of the following elements:
(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name. Firstly, there is no evidence which shows that the Respondent has been commonly known by the disputed domain name or that he has acquired rights to the use of the trade mark SAINT-GOBAIN (or a variation thereof) as a trade mark or as a domain name. Secondly, there is no evidence that the Complainant has authorized the Respondent to use the Complainant's trade mark or to register the domain name. Neither has the Respondent shown legitimate non-commercial or fair use of the domain name; instead, the sponsored listings on the Respondent's website indicate that the Respondent is, for commercial gain, misleadingly diverting consumers to its website and those of other service providers.
As the Respondent did not file a Response following the lodgment of the Complaint, the Panel has no premise upon which to make a finding other than that the Respondent has no legitimate interests or rights in the disputed domain name. In this regard, the Panel has also taken cognizance of the fact that the Respondent has been named as a respondent in a number of other UDRP cases in which the domain names were transferred to the respective complainants following findings by the panelists in those cases that the Respondent had no legitimate interests or rights in the domain names. An adverse inference has accordingly been drawn against the Respondent in this case.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been established.
Paragraph 4(b) of the Policy identifies four circumstances which would constitute evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the site or location.
The Panel finds that paragraphs (ii) and (iv) above are particularly relevant in this case. The Complainant is undoubtedly a well-recognized corporation and the circumstances of this case are indicative that the Respondent knew of the Complainant's name and reputation. It is more probable than not that the registration and use of the disputed domain name were made in an attempt to ride off the Complainant's goodwill and reputation. Internet users who mis-spell the domain name would be led to the Respondent's website or other online location whereas they would have expected the site to be the Complainant's. Whilst it would be obvious soon enough to most Internet users that the website is not the Complainant's, the damage would already have been done. Confusion as to the source, affiliation or endorsement of the Respondent's website or of a product or service on the site is likely to occur. Typosquatting has repeatedly been condemned as indicative or presumptive of bad faith in UDRP decisions (see Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816; Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039; Longs Drug Stores Caifornia, Inc. v. Shep Dog, WIPO Case No. D2004-1069). The Panel concludes that the disputed domain name was registered for the specific aim of diverting Internet users who are not careful in typing the domain name, to the Respondent's own website or other location. The Respondent's pattern of behaviour, i.e. in cybersquatting, as well as the sponsored links business model of his website also lend strong support to the Panel's conclusion in this case that registration and use of the disputed domain name were made in bad faith.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy has been established.
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 <saint-gobian.com> be transferred to the Complainant.
Dated: July 27, 2009