WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie de Saint-Gobain v. Ritto Rajan Koshy
Case No. D2020-3552
1. The Parties
The Complainant is Compagnie de Saint-Gobain, France, represented by Tmark Conseils, France.
The Respondent is Ritto Rajan Koshy, India, self-represented.
2. The Domain Names and Registrars
The disputed domain names <saint-gobainroofingshingles.com>, <saintgobainroofingshingles.com>, <saintgobainroofingshinglesinkerala.com> are registered with FastDomain, 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 30, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 February 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2021. The Response was filed with the Center on February 25, 2021.
The Center appointed Colin T. O’Brien as the sole panelist in this matter on March 24, 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 manufacturer of construction materials and has been in business for more than 350 years and has more than 170,000 employees.
The Complainant owns numerous trademark registrations globally including the following:
SAINT-GOBAIN (European Union Trademark Registration Number 001552843, registered on December 18, 2001), and covering, among others, construction materials and services in classes 17, 19, 20, 21, and 37;
SAINT-GOBAIN (International Registration Number 1505901, dated on September 23, 2019) designating several jurisdictions, including India (which granted protection on October 22, 2020), covering among others construction materials and services in classes 17, 19, 20, 21, and 37,
The Complainant registered the domain name <saint-gobain.com> on December 29, 1995.
The Respondent registered <saint-gobainroofingshingles.com>, <saintgobainroofingshingles.com>, and <saintgobainroofingshinglesinkerala.com> (“Disputed Domain Names”) on November 19, 2020.
5. Parties’ Contentions
Apart from the “.com” generic Top-Level Domain (“gTLD”), which is inherent to the operation of the domain name system, and the words “roofing” and “shingles”(which directly refers to the Complainant’s construction sector) and “in kerala” (Kerala being a state in India as the Respondent’s details show) the Disputed Domain Names are identical to Complainant’s name, trademarks and domain name.
The Disputed Domain Names which wholly incorporate Complainant’s trademark sufficiently establish confusing similarity to Complaint’s trademark.
The Complainant’s rights predate the registration date of the Disputed Domain Names.
SAINT-GOBAIN is not a generic term but a registered distinctive trademark owned by the Complainant.
At the recent time of the registration of the Disputed Domain Names, the Respondent was not known as “SAINT-GOBAIN” whereas the Complainant had long standing rights in SAINT-GOBAIN. There appears to be no legitimate reason why the Respondent would incorporate the Complainant’s well-known mark, company name and domain name in the Disputed Domain Names.
The Respondent has no genuine activity under this name under SAINT-GOBAIN. This is corroborated by the fact that the Disputed Domain Names are not redirecting toward any active website.
The Respondent has no rights, no offering of goods or services or legitimate use in the Disputed Domain Names.
The Complainant has never licensed or otherwise authorized in any way the Respondent to use SAINT-GOBAIN and there is no commercial or any relationship between the Respondent and the Complainant.
The Complainant was extensively using SAINT-GOBAIN globally before the registration of the Disputed Domain Names. The Complainant’s trademark is well-known worldwide, and the Complainant has a long-standing worldwide operating website under the <saint-gobain.com> domain name. It is obvious the Respondent has no legitimate reason to register the Disputed Domain Names except to act in bad faith by taking advantage of the voluntary confusion created by its fraudulent registration.
It is not possible to conceive a plausible situation in which the Respondent could have ignored the existence of the Complainant’s trademarks, as it is also not possible to conceive plausible circumstance in which the Respondent could legitimately use the Disputed Domain Names.
The Respondent claims that the Disputed Domain Names were registered in good faith, claiming to be a dealer of “Saint Gobain Roofing Shingles”. According to the Respondent the Disputed Domain Names shall not be confused with the trademark SAINT-GOBAIN as the Complainant does not directly deal with “roofing shingles”. The Respondent claims its purpose to be to facilitate the SEO of his website and to bring the customers searching for “Saint Gobain Roofing Shingles” to the website. Finally, the Respondent mentions its willingness to “transfer the domain to the complainant if we can get a reasonable compensation of business loss.”
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated it owns registered trademark rights in the SAINT-GOBAIN trademark worldwide and specifically in India. The addition of the terms “roofingshingles” and “inkerala” are insufficient to avoid a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).
Accordingly, the Disputed Domain Names are confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names and has not at any time been commonly known by the Disputed Domain Names.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel notes Respondent’s unsupported claims, and finds that these would not give rise to rights or legitimate interests to the Respondent in the Disputed Domain Names under the Policy. Here, the Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Names; rather, the evidence suggests that they were registered to make an undue profit based on the Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei, WIPO Case No. D2013-1556. In addition, the Panel notes the composition of the Disputed Domain Names, and that they do not resolve to an active website.
In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s lack of rights or legitimate interests in respect of the Disputed Domain Names, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Disputed Domain Names were registered many years after the Complainant used its famous SAINT-GOBAIN trademark. The evidence on the record provided by the Complainant with respect to the extent of use of its SAINT-GOBAIN trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Disputed Domain Names were registered, the Respondent undoubtedly knew of the Complainant’s SAINT-GOBAIN mark, and knew that it had no rights or legitimate interests in the Disputed Domain Names.
There is prima facie no non-benign reason for the Respondent to have registered the Disputed Domain Names containing SAINT-GOBAIN and the terms “roofingshingles” and “roofingshinglesinkerela” particularly given the fact the Respondent is not affiliated or licensed by the Complainant to use the SAINT-GOBAIN trademark. The fact that the Respondent registered a total of three separate domain names, all which incorporate the Complainant’s famous SAINT-GOBAIN trademark as well as terms that relate to construction materials, establish that the Respondent engaged in a bad-faith pattern of abusive domain name registration, pursuant to paragraph 4(b)(ii) of the Policy. See Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131(“It is most unlikely that the Respondents just happened to unintentionally select the Complainant’s distinctive service marks LADBROKE and LADBROKES and inadvertently put them in combination with the name of the card game ‘poker’ when selecting its domain names”. Ordering the transfer of <ladbrokespoker.com>, <ladbrokepoker.com>, <ladbrokepoker.org>, and <ladbrokepoker.net> to the Complainant).
The Respondent admitted its registration and use of the domains was “to facilitate the SEO of our website”. This action was undertaken despite the fact it had no rights to use the Complainant’s marks. “Fair competition is to use one’s own domain name or trademark, not to try to take advantage of an others well established trademark”, see, Nicolas Stark Computing AB v. Leo van Opsta WIPO Case No. D2004-0422. Respondent’s actions were not fair competition and are clearly in bad faith.
Accordingly, the Panel finds that the Disputed Domain Name have been registered and are being used in bad faith.
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 names <saint-gobainroofingshingles.com>, <saintgobainroofingshingles.com>, and <saintgobainroofingshinglesinkerala.com> be transferred to the Complainant.
Colin T. O’Brien
Date: April 7, 2021