WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie de Saint-Gobain v. Whois Privacy Protection Foundation / Audrey Hayes, Allied Aerospace Ltd
Case No. D2021-3673
1. The Parties
The Complainant is Compagnie de Saint-Gobain, France, represented by Tmark Conseils, France.
The Respondent is Whois Privacy Protection Foundation/ Audrey Hayes, Allied Aerospace Ltd, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <saint-gobaiin.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2021. On November 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 November 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 November 8, 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 November 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2021. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on December 6, 2021.
The Center appointed Steven A. Maier as the sole panelist in this matter on December 10, 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 joint stock company registered in France. It is a worldwide supplier of materials to the construction industry.
The Complainant is the owner of various registrations for the trademark SAINT-GOBAIN, including for example the following:
- European Union Trade Mark registration number 1552843 for the word mark SAINT-GOBAIN, registered on December 18, 2001
- United States trademark registration number 4669229 for the word mark SAINT-GOBAIN, registered on January 13, 2015
- International trademark registration number 1505901 for the word mark SAINT-GOBAIN, registered on September 23, 2019
The disputed domain name was registered on August 28, 2021.
According to evidence provided by the Complainant, the disputed domain name did not resolve to any active website as of November 3, 2021. As of the date of this Decision, the disputed domain name resolved to a “parking page” website containing various links, none of which had any apparent connection with the Complainant or with the disputed domain name.
5. Parties’ Contentions
The Complainant states that it has traded in France for over 350 years. It submits that it currently has over 170,000 employees worldwide and produces evidence of its business profile. The Complainant demonstrates activities in Europe, the Middle East, Asia and North America, including a research and development division in the United States. It refers to its website at “www.saint-gobain.com”, which it states it has used internationally since 1995. The Complainant claims worldwide revenue of EUR 41.8 billion in 2018.
The Complainant submits that its trademark SAINT-GOBAIN is a distinctive term which has no generic meaning.
The Complainant submits that the disputed domain name is confusingly similar to its SAINT-GOBAIN trademark, differing from it only by the inclusion of an additional letter “i”.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never licensed or authorized the Respondent to use its SAINT-GOBAIN trademark, that the Respondent has not commonly been known by that name and that the Respondent has made no use of the disputed domain name in accordance with any legitimate activity.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It contends that, owing to the distinctive nature, long history and extensive use of the SAINT-GOBAIN trademark, there can be no doubt that the Respondent registered the disputed domain name with that trademark in mind. The Complainant further contends that it is not possible to conceive of any circumstances in which the Respondent could legitimately use the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are 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.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has registered trademark rights in the mark SAINT-GOBAIN. The disputed domain name is identical to that trademark but for the inclusion of a second letter “i” in the disputed domain name. The Panel finds therefore that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has failed to file any Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise.
While the disputed domain name currently resolves to a “parking page” website, the Panel finds that the disputed domain name is inherently misleading, as inevitably suggesting to Internet users that it is operated or in some manner authorized by the Complainant. The Respondent’s use of the disputed domain name therefore unfairly targets the Complainant’s goodwill for the purpose of attracting Internet users to the Respondent’s website, which cannot constitute bona fide commercial use of the disputed domain name.
The Panel finds in the circumstances that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds the Complainant’s SAINT-GOBAIN trademark to be distinctive and widely known and that it appears to have no meaning in commerce other than to refer to the Complainant and its business. The Respondent having given no explanation for its registration of the disputed domain name, the Panel readily infers that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark and with the intention of taking unfair advantage of the goodwill attaching to that trademark.
The Panel finds the disputed domain name to be inherently misleading and to constitute a case of “typosquatting”, i.e. having been designed to capture Internet users who make an error in typing the Complainant’s name. Further, the Panel accepts the Complainant’s submission that it is impossible in these circumstances to conceive of any use that the Respondent could legitimately make of the disputed domain name.
The Panel also finds that the Respondent has used the disputed domain name with the intention of diverting Internet users who are looking for the Complainant’s website to the Respondent’s own website, offering links which are apparently unconnected with the Complainant or the disputed domain name itself, on what must be presumed to be a “pay-per-click” basis. The Panel finds therefore that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel therefore finds that the disputed domain name has been registered and is 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 name, <saint-gobaiin.com>, be transferred to the Complainant.
Steven A. Maier
Date: December 24, 2021