WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie De Saint-Gobain v. WhoisGuard Protected, WhoisGuard, Inc. / david proctor

Case No. D2020-2017

1. The Parties

The Complainant is Compagnie De Saint-Gobain, France, represented by Tmark Conseils, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / david proctor, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <saiint-gobain.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020. On July 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 4, 2020 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 amendment to the Complaint on August 7, 2020.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2020.

The Center appointed Theda König Horowicz as the sole panelist in this matter on September 17, 2020. 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 a well-known French manufacturer of construction material which is active and has employees worldwide. It owns several trademark registrations for SAINT-GOBAIN in many countries such as:

- French trademark registration SAINT-GOBAIN No. 3005563, registered on February 4, 2000, in classes 17, 19-21 and 37;

- European Union trade mark registration SAINT-GOBAIN No. 001552843, registered on December 18, 2001, in classes 17, 19-21 and 37

- International registration SAINT-GOBAIN No. 740183, registered on July 26, 2000, in classes 17, 19-21 and 37.

“Saint-Gobain” is also registered as a company name of the Complainant. Furthermore, the Complainant owns the domain name <saint-gobain.com> which was registered on December 29, 1995. The said domain name is linked to the Complainant’s official website.

The disputed domain name was registered on July 2, 2020 and is inactive. The disputed domain name was used to create an email address impersonating one of the Complainant’s employees, which was used in order to attempt obtaining a money transfer of a third party active in the construction field.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant raises that its trademark is contained in its entirety in the disputed domain name which is sufficient to establish confusing similarity under the Policy.

Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:

- The Complainant has prior rights over the trademark, company name and domain names SAINT‑GOBAIN, a name which is enjoying a reputation worldwide in the construction material field.

- SAINT-GOBAIN is a distinctive trademark owned by the Complainant for many years and the Respondent is not known under the said trademark, does not operate a genuine activity under the name “SAINT-GOBAIN”.

- The Complainant has never licensed or otherwise authorized in any way the Respondent to use the name “SAINT-GOBAIN”.

Thirdly, the Complainant contends that the disputed domain name was registered in bad faith since the Complainant has been using SAINT-GOBAIN worldwide well before the registration of the disputed domain name and since SAINT-GOBAIN is well known. The Respondent must thus have known of the Complainant’s prior rights over SAINT-GOBAIN when registering the disputed domain name. The disputed domain name which differs with the Complainant’s trademark only with the addition of a letter “i" in “saint” is an obvious typo-squatting case. Furthermore, the Complainants estimates that the disputed domain name was used in bad faith in order to create at least one email address containing without authorization the name of an employee of the Complainant: “[employee]@saiint-gobain.com”. This email address was used in order to obtain a money transfer from one of the Complainant’s clients by pretending that the Complainant’s bank details changed and must be amended.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant showed it has trademark rights in SAINT-GOBAIN through several trademark registrations worldwide.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”), section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

The disputed domain name only differs from the Complainant’s trademark SAINT-GOBAIN through the addition of a letter “i” in “saint”. The Complainant’s mark is nevertheless clearly recognizable and entirely contained in the disputed domain name.

Under the circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s marks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes:

(i) the use of the domain name in connection with a bona fide offering of goods or services;

(ii) being commonly known by the domain name; or

(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See WIPO Overview 3.0, section 2.1.

The Complainant contends that the Respondent has no rights and legitimate interests in the disputed domain name, notably stating that:

- The Complainant has prior rights over the trademark, company name and domain names SAINT-GOBAIN, a name which is enjoying a reputation worldwide in the construction material field.

- The Complainant has never licensed or otherwise authorized in any way the Respondent to use the name “SAINT-GOBAIN”.

Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent.

The Respondent has chosen not to reply.

No evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, in particular that the Respondent has been commonly known by the disputed domain name or any evidence showing a bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain name.

In view of the above and in the lack of any response from the Respondent, the Panel is satisfied that it is more than likely that the Respondent does not use the disputed domain name for a bona fide offering of goods or services.

Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There is no doubt that the Complainant is a well-established company which operates since decades worldwide under the trademark SAINT-GOBAIN.

Consequently, the Respondent knew or should have known of the Complainant’s trademarks and deliberately registered the almost identical disputed domain name (see WIPO Overview 3.0, section 3.2.2).

Furthermore, the case file shows that the disputed domain name was used to create an email address impersonating one of the Complainant’s employees, which enabled the Respondent to enter into email exchanges with third parties in the construction business in order to attempt obtaining money transfers. This obviously falls in the scope of bad faith use as defined by the Policy.

The Panel further notes that the Respondent has chosen to remain silent within these proceedings, which is a further indication of bad faith.

In addition, the Respondent registered the disputed domain name through a privacy service, which may not be evidence of bad faith per se, but the use of a privacy service in the context of this case, is an indication that the Respondent intentionally hides its identity and uses the disputed domain name in bad faith (see WIPO Overview 3.0, section 3.6).

In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under 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 <saiint-gobain.com> be transferred to the Complainant.

Theda König Horowicz
Sole Panelist
Date: October 5, 2020