Compagnie de Saint-Gobain v Adam McGuigan
WIPO Case No. D2022-2179
•22-08-2022
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Compagnie de Saint-Gobain v. Adam McGuigan
Case No. D2022-2179
1. The Parties
1.1 The Complainant is Compagnie de Saint-Gobain, France, represented by Nameshield, France (the
“Complainant”).
1.2 The Respondent is Adam McGuigan[1], Canada (the “Respondent”).
[1] At the time of filing the Complaint, the relevant WhoIs information showed a privacy or proxy service, “Registration Private, Domains
2. The Domain Name and Registrar
2.1 The disputed domain name <saint--gobains.com> (the “Disputed Domain Name”) is registered with Wild
West Domains, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 28, 2022, 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 amended Complaint on June 28, 2022.
2022. On June 15, 2022, the Center transmitted by email to the Registrar a request for registrar verification
in connection with the Disputed Domain Name. On June 16, 2022, the Registrar transmitted by email to the
3.2 The Center verified that the Complaint together with the amended 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on June 29, 2022. In accordance with the Rules, paragraph
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5, the due date for Response was July 19, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on July 26, 2022.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on August 8, 2022. 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
4.1 The Complainant Compagnie De Saint-Gobain, is a French company that specialises in the production, including the SAINT-GOBAIN trademark for instance <saint-gobain.com> registered on December 29, 1995.
processing and distribution of products for the construction and industrial markets. The Complainant is said
to have been in existence for 350 years and is now one of the top 100 industrial groups in the world. The
Complainant owns several SAINT-GOBAIN trademarks registered worldwide since 1989, such as
4.2 The Respondent Adam McGuigan is allegedly based in Canada and is recorded as having created the
Disputed Domain Name on June 2, 2022, and registered same with the Registrar.
4.3 The Disputed Domain Name revolves to a parking page with commercial links and has been used in a
phishing scheme.
5. Parties’ Contentions
A. Complainant
5.1 The Complainant contends that the Disputed Domain Name is confusingly similar to its well-known and distinctive SAINT-GOBAIN trademark. The Complainant in support, submits that the addition of a hyphen and the letter “s” to its trademark is not sufficient to prevent a finding of confusing similarity when conducting
a confusing similarity enquiry. In the same vein, the Complainant submits further that this is a clear case of addition of the generic Top-Level domain (“gTLD”) “.com” to the Disputed Domain Name does not also prevent the finding of confusing similarity following the WIPO Overview 3.0, 1.11.1. The Complainant finally draws attention to previous UDRP decisions where panels have upheld the Complainant’s rights over the SAINT-GOBAIN trademark for instance see Compagnie de Saint - Gobain v. Contact Privacy Inc. Customer 1249589662/ Latonya Peterson, WIPO Case No. D2021-3664.
typosquatting and that slight spelling variations does not also prevent a finding of confusing similarity when
conducting a confusing similarity test. See in this regard WIPO Overview of WIPO Panel Views on Selected
| that the Respondent bears the burden of demonstrating to the Panel whether it owns such rights or | 5.2 With respect to rights and legitimate interests in the Disputed Domain Name, the Complainant argues Disputed Domain Name nor is the Respondent affiliated with or authorised or licensed by the Complainant to make use of the Complainant’s trademark to register the Disputed Domain Name. The Complainant further refers to a screenshot of a website that demonstrates that the Disputed Domain Name revolves to a parking page with commercial PPC links and asserts that such conduct is not a bona fide offering of goods and services or legitimate noncommercial or fair use under the Policy. The Complainant also refers to the Respondent’s phishing attempts with the Disputed Domain Name by passing itself off as one of the Complainant’s employees, as conduct which cannot be described as being a bona fide offering of goods or services nor noncommercial or fair use pursuant to paragraph 4(c)(i) & (iii) of the Policy. See the |
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Complainant’s reference to the assertion in the WIPO Overview 3.0 to the effect that previous UDRP panels have repeatedly held that the use of a domain name for illegal activity, such as phishing, distribution of malware and other types of fraud can never confer rights or legitimate interests on the registrant of such a domain name.
Accor v. SANGHO HEO / Contact Privacy Inc. WIPO Case No. D2014-1471. Thirdly, the Complainant argues that the Respondent’s misspelling of the Complainant’s trademark of SAINT-GOBAIN was intentionally designed to be confusingly similar is further evidence of bad faith use. Fourthly, the Complainant also submits that since the Disputed Domain Name resolves to a parking page with commercial links, the Respondent has undoubtedly engaged in bad faith registration and use.
5.3 On the question of bad faith use and registration, the Complainant’s first submission in support of the itself off as one of the Complainant’s employees it is reasonable to infer that the Respondent registered the Disputed Domain Name with full knowledge of the Complainant’s trademark. In this regard, reliance is placed on the previous decision in
requirement of bad faith use and registration, alludes to the recent registration of the Disputed Domain Name
on June 2, 2022, viewed against the backdrop of the Complainant’s extensive use of its well-known
trademark, and the Complainant’s operations from its long standing website at “saint-gobain.com”. It is on
the basis of the foregoing factors, that the Complainant then submits that the Respondent obviously knew of
the prior rights of the Complainant and extensive use of its SAINT-GOBAIN trademark before registering the
B. Respondent
5.4 The Respondent did not reply to the Complainant’s contentions, in the circumstances, the Panel shall
draw such adverse inferences from the failure of the Respondent to reply as it considers appropriate.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in the administrative proceeding the Complainant must
prove that:
i) the Disputed Domain Name is identical and confusingly similar to the trademark or service mark of the
Complainant;
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.
6.2 As expressly stated in the Policy the Complainant must establish the existence of each of these three
elements in any administrative proceeding.
A. Identical or Confusingly Similar
| considerable length of time, for more than 350 years, and has been operating under the SAINT-GOBAIN | 6.3 This Panel finds that the Complainant is a well-established company which has been in operation for a status of the Complainant. Thus, the Panel finds that on a visual examination of the Disputed Domain Name with the Complainant’s SAINT-GOBAIN trademark the Disputed Domain Name is undoubtedly confusingly similar to the Complainant’s trademark. The Panel accepts that the mere addition of a hyphen, the letter “s” and the gTLD “.com” does absolutely nothing to prevent a confusing similarity finding. In this regard, see in support, the discussion on the test for confusing similarity in sections 1.7 and 1.8 of the WIPO Overview 3.0. |
| 6.4 Therefore, the Panel is satisfied that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s trademark. |
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B. Rights or Legitimate Interests
Do The Hustle LLC v. Tropic Web, WIPO Case No. D2000-0624 and Croatia Airlines d.d. v. Modern Empire Internet Ltd., supra. The Panel finds that the Respondent is not commonly known by the Disputed Domain Name. In addition, there is no evidence to indicate that the Respondent has been permitted, licensed or authorised to use the Complainant’s trademark to register a Disputed Domain Name. The Complainant has adduced credible evidence at Annex 6 attached to the Complaint to indicate that the Disputed Domain Name revolves to a parking page that displays commercial links and at Annex 7 to demonstrate that the Disputed Domain Name has been used in a phishing scheme. The Panel finds that such conduct on any view cannot be described as a bona fide offering of goods and services nor a legitimate or noncommercial or fair use of the Disputed Domain Name.
6.5 The Panel is also satisfied that the Respondent has failed to establish that it has rights or legitimate
interests in the Disputed Domain Name within the ambit of paragraphs 4 (a)(ii) and 4(c) of the Policy. Once
the Complainant has made out a prima facie case to the effect that the Respondent lacks rights and
legitimate interests in the Disputed Domain Name, the Panel in this respect finds it is for the Respondent to
furnish the requisite evidence to demonstrate that it has such rights and legitimate interests in the Disputed
6.6 In the circumstances, the Panel is satisfied that the Complainant has established the Respondent’s lack
of rights and legitimate interests in the Disputed Domain Name as stipulated in paragraph 4(a)(ii) of the
Policy.
C. Registered and Used in Bad Faith
6.7 With reference to the question of bad faith registration and use the Panel has considered a number of the construction industry and goodwill in the SAINT-GOBAIN trademark.
undisputed factors which ultimately enables the Panel to conclude that the Respondent registered the
6.8 First of all, the Panel finds that the Respondent could not possibly be unaware of the Complainant’s Respondent has engaged in a phishing scheme whereby it has passed itself off as an employee of the Complainant. As held in Accor v. SANGHO HEO /Contact Privacy Inc., supra the unopposed allegation of engaging in phishing schemes combined with the likelihood of confusion is sufficient evidence of bad faith registration and use. Thirdly, further evidence advanced by the Complainant at Annex 6 demonstrates that the Disputed Domain Name resolves to a parking page that displays PPC commercial links; such conduct has normally been held to be evidence of bad faith use by previous UDRP Panels. Fourthly, as indicated in paragraph 5.4 above, the Panel has drawn adverse inferences from the failure of the Respondent to reply to the Complainant’s submissions in these proceedings and or previous correspondence from the Complainant.
trademark, and reputation in the construction industry when it elected to register the Disputed Domain Name
on June 2, 2022. As submitted by the Complainant, the Complainant was already extensively using its
trademark worldwide and its long standing operating website at “saint-gobain.com” before the registration of
the Disputed Domain Name by the Respondent was effected. Secondly, as the evidence adduced by the
7. Decision
7.1 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--gobains.com>, be transferred to the Complainant.
/Ike Ehiribe/
Ike Ehiribe
Sole Panelist
Date: August 22, 2022
By Proxy”; the Complainant filed an amended Complaint mentioning the Registrar confirmed underlying registrant, “Adam McGuigan”
as the Respondent. In the present circumstances, the Panel considers the Registrar-confirmed underlying registrant details of the
Disputed Domain Name to constitute the concerned Respondent at issue.
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