Complainant is Compagnie de Saint-Gobain, France, represented by Tmark Conseils, France.
Respondent is WhoisGuard, Inc., Panama / Buhari Muhammadu, Nigeria.
The disputed domain names <saint-gobain.online> and <saint-gobain.xyz> are registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2020. On July 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 26, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 31, 2020.
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 Respondent of the Complaint, and the proceedings commenced on August 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 24, 2020.
The Center appointed David Perkins as the sole panelist in this matter on August 31, 2020. 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.A.1 Complainant, Compagnie de Saint-Gobain, is a French company headquartered in Paris. It was established in 1665. It is a world leader in the production and sale of construction materials. It ranks among the best in Europe and worldwide in the production of flat glass.
4.A.2 Complainant has over 170,000 employees and is active in 39 countries, including Respondent’s home country of Nigeria. Worldwide Complainant has 1,000 manufacturing facilities and 4,000 sales outlets. In 2019 it posted revenues of EUR 42.6 billion.
4.A.3 The Complaint states that Complainant has many trade mark registrations worldwide for the mark SAINT-GOBAIN and exhibits particulars of the following:
|
Jurisdiction |
Registration No. |
Mark |
Class of Goods and services |
Dates of application / registration |
|
European Union (“EUTM”) |
001552843 |
SAINT-GOBAIN |
1-3; 6-12; 17; 19-24; 37-38; 40; and 42 |
Filed: March 9, 2000 Registered: December 18, 2001 |
|
Canada |
423541 |
SAINT-GOBAIN |
1; 4; 6-7; 9-10; 12; 17; 19-24; 26; 28; 35; and 37. |
Filed: June 27, 1990 Registered: February 25, 1994 |
|
United States of America (“United States”) |
4669229 |
SAINT-GOBAIN |
1-3; 6-12; 17; 19-24; 37-38; 40; and 42 |
Filed: September 13, 2013 Registered: January 13, 2015 |
|
France |
3005563 |
SAINT-GOBAIN |
Inter alia, 17; 19-21; and 37 |
Registered: February 4, 2000 |
|
International Registration (“IR”) |
1505901 |
SAINT-GOBAIN |
1-3; 6-12; 17; 19-24; 37-38; 40; and 42 |
Registered: September 23, 2019 |
|
IR |
740183 |
SAINT-GOBAIN |
1-3; 6-12; 17; 19-24; 37-38; 40; and 42 |
Registered: July 26, 2020 |
4.B.1 In the absence of a Response, what is known of Respondent is contained in the Complaint and the related Annexes.
4.B.2 The disputed domain names, <saint-gobain.online> and <saint-gobain.xyz>, were registered respectively on April 27, 2020 and April 30, 2020.
4.B.3 The disputed domain names do not resolve to active websites.
5.A.1 Complainant asserts rights in the SAINT-GOBAIN trade mark, examples of which are summarized in paragraph 4.A.3 above.
5.A.2 Complainant further points to the fact that its corporate name is “Saint-Gobain”.
5.A.3 Complainant is also the registered owner of the domain name <saint-gobain.com>, which was registered on December 29, 1995, and to which its website resolves.
5.A.4 Complainant points to the fact that the disputed domain names incorporate the SAINT-GOBAIN trade mark in its entirety as well as both its corporate name and said domain name.
5.A.5 In the circumstances, Complainant asserts that both the disputed domain names are identical to its SAINT-GOBAIN trade mark.
5.A.6 Complainant puts its case as follows. First, it has rights in the SAINT-GOBAIN trade marks, corporate name, and domain name in numerous countries worldwide which predate the April 2020 registration dates of the disputed domain names.
5.A.7 Second, there is no evidence that Respondent has made use of, or demonstrable preparations to use, the disputed domain names, or either of them, before being put on notice of the Complaint. Indeed, it appears that neither of the domain names resolve to any active website: in that respect, Annex 7 to the Complaint evidences such non-use.
5.A.8 Third, there is no evidence of use of the disputed domain names envisaged in paragraphs 4(c) of the Policy.
5.A.9 Fourth, Complainant has neither licensed nor otherwise authorized use by Respondent of the SAINT-GOBAIN name and mark.
5.A.10 In the circumstances, Complainant asserts that Respondent is unable to demonstrate any rights to or legitimate interests in the disputed domain names.
5.A.11 Complainant says that, having regard to the well-known character of the SAINT-GOBAIN trade mark worldwide, it is clear that Respondent was well aware of Complainant’s rights in that mark when registering the disputed domain names. Further, that because Respondent had no legitimate reason to register those domain names, its aim in registering them was fraudulently to take advantage of the confusion with Complainant’s rights in the SAINT-GOBAIN name and mark which would result.
5.A.12 Notwithstanding that there is no evidence of use of the two disputed domain names (as noted in paragraph 5.A.7 above), citing the decision in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003, Complainant asserts it is not plausible to conceive of circumstances in which Respondent could legitimately use the disputed domain names. Hence, Respondent says that the requirement to establish bad faith use is made out.
5.A.13 Finally, the fact that Respondent has taken active steps to hide its identity by using the services of WhoIsGuard, Inc. is, Complainant says, another indicia of Respondent’s bad faith.
As noted above, no Response has been submitted by Respondent.
6.1 The Policy paragraph 4(a) provides that the complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the respondent’s rights or legitimate interests in the disputed domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again 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.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 From the particulars of the relevant trade marks set out in paragraph 4.A.3 above, clearly Complainant has rights in the SAINT-GOBAIN trade mark, which is a well-known mark.
6.6 Since both the disputed domain names incorporate the SAINT-GOBAIN trade mark in its entirety, they are identical to that mark.
6.7 Accordingly, Complainant meets the requirements of paragraph 4(a)(i) of the Policy.
6.8 From Complainant’s case summarized in paragraphs 5.A.6 and 5.A.8 above and Respondent’s default, it is clear that Respondent could not demonstrate any of the circumstance set out in paragraph 4(c) of the Policy as evidencing rights to or legitimate interests in the disputed domain names.
6.9 Accordingly, Complainant has established its case under paragraph 4(a)(ii) of the Policy.
6.10 Given the worldwide presence of Complainant, including in Nigeria – Respondent’s country of residence – it is inconceivable that the disputed domain names were registered other than in bad faith. Accordingly, Complainant’s case summarized in paragraph 5.A.11 is well made out.
6.11 Further, the facts presented in the Complaint fall fairly and squarely within the passive holding doctrine first established by Telstra Corporation Limited v Nuclear Marshmallows, supra, and further described in paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0).
6.12 Consequently, the Complaint satisfies the requirement of paragraph 4(a)(iii) of the Policy.
For the following reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <saint-gobain.online> and <saint-gobain.xyz> be transferred to Complainant.
David Perkins
Sole Panelist
Date: September 8, 2020