WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie de Saint-Gobain v. On behalf of saint-gobain-recherche.net owner, Whois Privacy Service / Grigore PODAC
Case No. D2020-3549
1. The Parties
The Complainant is Compagnie de Saint-Gobain, France, represented by Tmark Conseils, France.
The Respondent is On behalf of saint-gobain-recherche.net owner, Whois Privacy Service, United States of America / Grigore PODAC, France.
2. The Domain Name and Registrar
The disputed domain name <saint-gobain-recherche.net> is registered with Amazon Registrar, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2020. On December 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 January 4, 2021, 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 amended Complaint on January 4, 2021.
The Center verified that the Complaint together with the amended 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 January 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2021.
The Center appointed Alexandre Nappey as the sole panelist in this matter on February 4, 2021. 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 company incorporated in France. Founded 350 years ago, it has become a leading company specialized in the field of construction material, operating worldwide and employing more than 170 000 people.
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 Trademark registration SAINT-GOBAIN No. 001552843, registered on December 18, 2001, in classes 17, 19-21 and 37;
- International Trademark registration SAINT-GOBAIN No. 740183, registered on July 26, 2000, in classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40 and 42.
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 resolves to the Complainant’s official website.
The disputed domain name was registered on August 26, 2020 and does not resolve to an active webpage.
5. Parties’ Contentions
First, the Complainant claims that apart from the generic Top-Level-Domain (“gTLD”) “.net”, which is inherent to the operation of the domain name system, and the descriptive word “recherche” (which is the French word for “research”) the trademark SAINT-GOBAIN 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 sector;
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 and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as being a passing off, or an infringement of the Complainant’s rights under trademark law.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(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 and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following.
A. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s SAINT-GOBAIN trademark combined with the French dictionary word “recherche” which stands for “research”.
As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7: “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 Complainant’s trademark is fully included and clearly recognizable in the disputed domain name.
The dictionary word “recherche” and the gTLD “.net” shall be disregarded under the confusing similarity test as they do not add anything to the distinctiveness of the disputed domain name. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the first requirement of the Policy has been satisfied.
The Panel refers to a recent UDRP decision rendered in similar circumstances: Compagnie de Saint-Gobain contre Global Domain Privacy, France / Pascal Amiel, Pascal Amiel, France, WIPO Case No. D2020-1884.
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.
According to the Complainant, the Respondent has no rights and legitimate interests in the disputed domain name, notably stating that:
- The Complainant has prior rights over the SAINT-GOBAIN trademark, company name and domain names, 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”.
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 did not reply to the Complaint.
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
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered, or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”
The Panel is satisfied that the Complainant is a well-established company which operates since decades worldwide under the trademark SAINT-GOBAIN.
The disputed domain name does not resolve to an active webpage and the Panel cannot conceive any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s trademark rights.
In the circumstances of the present case, the Panel finds that the Respondent’s passive holding of the disputed domain name <saint-gobain-recherche.net> also amounts to use of the disputed domain name in bad faith for the purpose of the Policy (see WIPO Overview 3.0, section 3.3).
In all these circumstances the Panel holds that the disputed domain name <saint-gobain-recherche.net> was registered and is being used in bad faith.
The Panel finds that the above described circumstances constitute registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy.
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 <saint-gobain-recherche.net> be transferred to the Complainant.
Date: February 23, 2021