WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie de Saint-Gobain v. WhoisGuard Protected, WhoisGuard, Inc. / Plutos Brain
Case No. D2020-3557
1. The Parties
The Complainant is Compagnie de Saint-Gobain, France, represented by Tmark Conseils, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Plutos Brain, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <sainnt-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 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 5, 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 6, 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 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 Nayiri Boghossian 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 well-established company that operates in the field of construction material.
In addition to international registrations, the Complainant owns the following trademark registrations for SAINT-GOBAIN: the European Union Trade Mark registration No. 001552843 registered on December 18, 2001; the French trademark registration No. 3005563 registered on February 4, 2000; the Canadian trademark registration No. TMA423541, registered on February 25, 1994; and the US trademark registration No. 4669229 registered on January 13, 2015.
The disputed domain name was registered on November 26, 2020 and does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark SAINT-GOBAIN. This is a case of typosquatting where an additional letter “n” was inserted into the trademark SAINT-GOBAIN.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has rights in the trademark SAINT-GOBAIN which predates the registration of the disputed domain name. The Respondent does not seem to be commonly known by the disputed domain name and has no activity under the name SAINT-GOBAIN. The Respondent is not affiliated with nor authorized by the Complainant to use its trademark.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark was used before the disputed domain name was created. The Respondent must have registered the disputed domain name to take advantage of the confusion that would be created. The Respondent knew of the Complainant’s prior rights. Passive holding amounts to bad faith and this case is furthermore a typosquatting case, which constitutes bad faith registration and use. Additionally, an email server has been configured on the disputed domain name, which creates a risk of phishing. Furthermore, the trademark of the Complainant is well-known and is not a descriptive or a dictionary word. Lastly, the Respondent has used a privacy service.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns trademark registrations for the trademark SAINT-GOBAIN. The Panel is satisfied that the Complainant has established its ownership of the trademark SAINT-GOBAIN.
The disputed domain name comprises the Complainant’s trademark SAINT-GOBAIN with the addition of a letter “n”. This is a case of typosquatting. The generic Top-Level-Domain “gTLD” “.com” should typically be ignored when assessing confusing similarity, as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has been operating since the 17th century. The Complainant’s trademark is a well-known trademark in its field and had been registered for couple of decades by the time the disputed domain name was registered. The Complainant is the registrant and uses the domain name <saint-gobain.com> (registered in 1995), which is almost identical to the disputed domain name. The disputed domain name contains a typo of the Complainant’s trademark. Accordingly, the Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain name.
The website to which the disputed domain name resolves is not accessible. This may be a case of passive holding. Based on the submissions in the present proceeding and in the absence of any claims or evidence from the Respondent, the Panel is unable to determine any plausible good faith use of the disputed domain name that could be made by the Respondent. Furthermore, the Respondent’s use of a privacy service in the above circumstances supports an inference of bad faith.
Such conduct falls squarely within the concept of registration and use in bad faith of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 names <sainnt-gobain.com> be transferred to the Complainant.
Date: February 8, 2021