Compagnie De Saint-Gobain v Panus USA LLC Panus USA LLC, Mr

WIPO Case No. D2023-5134

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie De Saint-Gobain v. Panus USA LLC Panus USA LLC, MR

Case No. D2023-5134

1. The Parties

The Complainant is Compagnie De Saint-Gobain, France, represented by Nameshield, France.

The Respondent is Panus USA LLC Panus USA LLC, MR, United States of America.

2. The Domain Name and Registrar

The disputed domain name <saintt-gobain.com> is registered with Squarespace Domains II LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2023. On December 8, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2023, 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 (Contact Privacy Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 2023, 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 December 18, 2023.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on January 5, 2024. In accordance with the Rules, paragraph
5, the due date for Response was January 25, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on January 26, 2024.

The Center appointed Anna Carabelli as the sole panelist in this matter on February 19, 2024. 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.

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4. Factual Background

The Complainant is a French company specialized in the production, processing and distribution of materials
for the construction and industrial markets, with more than 51.2 billion euros in turnover in 2022 and around
168,000 employees.

The Complainant owns multiple registration for the trademark SAINT-GOBAIN in various jurisdictions, including the following:

- European Union trademark SAINT-GOBAIN n°001552843 registered on December 18, 2001;
- International trademark SAINT-GOBAIN n°740184 registered on July 26, 2000;
- International trademark SAINT-GOBAIN n°740183 registered on July 26, 2000;
- International trademark SAINT-GOBAIN n°596735 registered on November 2, 1992;
- International trademark SAINT-GOBAIN n°551682 registered on July 21, 1989.

The Complainant also owns domain names including its trademark SAINT-GOBAIN, such as the domain name <saint-gobain.com> registered on December 29, 1995. Saint-Gobain is also commonly used to designate the company name of the Complainant.

The disputed domain name was registered on November 28, 2023 and resolves to an inactive page as shown by the evidence submitted with the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

- The disputed domain name <saintt-gobain> is confusingly similar to the Complainant’s well-known and
distinctive trademark SAINT-GOBAIN and the slight misspelling variation (the addition of the letter “t”
in the trademark SAINT-GOBAIN) is a prototypical example of typo squatting and does not prevent a
finding of confusing similarity.

- The Respondent has no rights or legitimate interests in the disputed domain name since: (i) the
Complainant has not authorized or somehow given consent to the Respondent to register and use the
disputed domain name, (ii) the Respondent is not commonly known by the disputed domain name,
and (iii) the Respondent’s use of the disputed domain name is neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use. The disputed domain name resolves to an
inactive page, and this confirms that the Respondent has not demonstrable plan to use it.

- The disputed domain name was registered and is being used in bad faith. At the time the disputed
domain name was created, the Complainant was already extensively using its trademark SAINT
GOBAIN worldwide and already had a long-standing operating website under the <saint-gobain.com>
domain name. It is therefore reasonable to infer that the Respondent has registered the disputed
domain name with full knowledge of the Complainant’s trademark. The misspelling of the trademark
SAINT GOBAIN was intentionally designed to be confusingly similar with the Complainant’s
trademark.

- Passive holding, which is the case here, demonstrates bad faith.

- The disputed domain name has active mail exchange (“MX”) records, which suggests that it may be
used for email purposes and is further evidence of bad faith.

Based on the above the Complainant requests the disputed domain name be transferred to the Complainant.

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B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the panel to decide the complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the complainant must prove each of the following:

(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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph
4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the respondent, shall be evidence of the respondent’s rights to or legitimate interests in a disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy above.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable within the disputed domain name. The disputed domain name entirely reproduces the Complaint’ trademark SAINT GOBAIN with the addition of the letter “t” which is a minor misspelling variation and does not prevent a finding of confusing similarity for the purposes of the Policy.

A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered domain name may be qualified as a typo squatting.

by panels to be confusingly similar to the relevant mark for purposes of the first element.
The addition of the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration
requirement and as such is typically disregarded under the first element confusing similarity test.

WIPO Overview 3.0, section 1.11.1.

Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. There is no indication before the Panel of any activity in relation to the disputed domain name that would give rise to rights or legitimate interests to the Respondent.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Complainant’s SAINT GOBAIN trademark has been continuously and extensively used for many years and has as a result acquired considerable reputation and goodwill worldwide. In view of the well-known character of the SAINT GOBAIN trademark, it is difficult to believe that the Respondent did not have in mind the Complainant when registering the disputed domain name. Prior panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0, section 3.1.4).

The Panel further notes that the disputed domain name reproduces a misspelled variation of the Complainant’s trademark SAINT GOBAIN. This suggests that the disputed domain name was registered in bad faith with a deliberate intent to create an impression of an association with the Complainant, and to mislead Internet seeking for the Complainant.

As to bad faith use, the evidence submitted with the Complaint shows that the disputed domain name does not point to an active website and merely resolves to an inactive page.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not
prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record,
the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the
circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each
case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the
degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a
response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s
concealing its identity or use of false contact details (noted to be in breach of its registration agreement).
WIPO Overview 3.0, section 3.3.

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Having reviewed the available record, the Panel notes the distinctiveness and the reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

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 <saintt-gobain.com> be transferred to the Complainant.

/Anna Carabelli/
Anna Carabelli
Sole Panelist
Date: March 4, 2024