WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compagnie de Saint-Gobain v. WhoisGuard, Inc. / chap jeks

Case No. D2020-3555

1. The Parties

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

The Respondent is chap jeks, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <saint-gobain.club> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2020. On January 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 4, 2021, 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 11, 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 amendment to the Complaint on January 12, 2021.

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 January 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2021.

The Center appointed Marilena Comanescu as the sole panelist in this matter on February 23, 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 French company doing business for more than 350 years in the field of construction material. Currently, the Complainant has 170,000 employees, around 1,000 manufacturing facilities worldwide, about 4,000 sales outlets and a turnover of Eur 42,6 BN in 2019.

The Complainant holds trademark registrations for SAINT-GOBAIN mark, such as the following:

- the European Union Trademark Registration No. 001552843 filed on March 9, 2000 and registered on December 18, 2001 for SAINT-GOBAIN (word), covering goods and services in classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12,17,19, 20, 21, 22, 23, 24, 37, 38, 40 and 42; and

- the International Trademark Registration No. 740183 registered on July 26, 2000 for SAINT-GOBAIN (word), covering goods and services in classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12,17,19, 20, 21, 22, 23, 24, 37, 38, 40 and 42 and designating many jurisdictions worldwide.

The Complainant’s mark is distinctive and well-known globally. See also Compagnie de Saint-Gobain v. WhoisGuard, Inc. / Buhari Muhammadu, WIPO Case No. D2020-1895.

The Complainant’s main website is available at <saint-gobain.com>.

The disputed domain name <saint-gobain.club> was registered on October 14, 2020 and, at the time of filing the Complaint, it resolved to a Registrar’s parking page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to its well-known trademark, company and domain names, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it.

B. Respondent

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

6. Discussion and Findings

In view of the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

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

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

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

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Complainant holds rights in the SAINT-GOBAIN trademark.

The disputed domain name incorporates the Complainant’s trademark SAINT-GOBAIN in its entirety.

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,”.com”, “.info”, “.club”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Given the above, the Panel finds that the disputed domain name is identical to the Complainant’s trademark SAINT-GOBAIN, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark SAINT-GOBAIN, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.

Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.

The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.

There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name.

In fact, the Respondent registered the disputed domain name incorporating a third party’s well-known trademark, without any authorization and keeps it inactive.

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant holds trademark rights for SAINT-GOBAIN since at least 1990.

The disputed domain name was registered in 2020 and reproduces the Complainant’s distinctive and well-known mark exactly.

From the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.

At the time of filing of the Complaint the disputed domain name resolved to a parking page.

From the inception of the UDRP, UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use. See section 3.3 of the WIPO Overview 3.0.

The Complainant’s trademark is well-known and used worldwide for decades, the Respondent did not submit a response and there is no plausible reason for the Respondent to choose and register the disputed domain name other than to create confusion or association with the Complainant and its SAINT-GOBAIN mark.

Moreover, the Respondent registered the disputed domain name under a privacy service and refused to participate in the present proceedings in order to put forward any arguments in its favor, which further suggests the Respondent’s bad faith.

Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 <saint-gobain.club> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: March 10, 2021