Compagnie de Saint-Gobain v sales sales, salesltd

WIPO Case No. D2022-2421

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie de Saint-Gobain v. sales sales, salesltd

Case No. D2022-2421

1. The Parties

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

The Respondent is sales sales, salesltd, Belgium.

2. The Domain Name and Registrar

The disputed domain name <saint-gobairn.com> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2022.

On July 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2022, 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 July 6, 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 July 6, 2022.

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 the due date for Response was July 27, 2022. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on July 28, 2022.

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The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on August 2, 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

The Complainant a French company specialized in the production, processing, and distribution of materials for the construction and industrial markets worldwide. The Complainant is in the market for over 350 years and is one of the top 100 industrial groups in the world and one of the 100 most innovative companies, as

evidenced by Annex 3 of the Complaint.

As shown in Annex 4, the Complainant owns several registrations for the mark SAINT-GOBAIN worldwide, among which European Union trademark registration n°001552843 of December 18, 2001, International registration n°551682 registered on July 21, 1989, International registration n°596735 registered on November 2, 1992.

The Complainant has registered a comprehensive number of domain names incorporating the mark SAINT-
GOBAIN. Among these, it is important to mention the domain name <saint-gobain.com> registered on
December 29, 1995. Evidence of these registrations appear as Annex 5.

The disputed domain name was registered on May 13, 2022, and resolves to an inactive page. In addition, there is evidence that MX servers were configured.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s mark SAINT-GOBAIN. The addition of the letter “r” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the Complainant’s mark. It is a clear case of typosquatting i.e. an intentional

misspelling.

The Complainant owns several registrations worldwide for the trademark SAINT-GOBAIN, as well as several domain names bearing this mark, as evidenced by annexes 4 and 5 to the Complaint.

The Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant in any way.

The disputed domain name does not resolve to an active website, as seen in Annex 6. In addition, MX- records are set up for the disputed domain name, as shows Annex 7 of the Complaint.

B. Respondent

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

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a
Complainant to obtain relief. These elements are:

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(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in respect to 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 presented evidence of ownership of the trademark SAINT-GOBAIN in jurisdictions throughout the world, by presenting international registrations for it, as well as comprehensive evidence of the use of the trademark to identify the original services for over 350 years.

The disputed domain name is, indeed, confusingly similar to the SAINT-GOBAIN trademark. It clearly shows

the Complainant’s mark with the addition of the letter “r”, which can be seen as an example of typosquatting.

The use of the trademark with the additional letter in the disputed domain name does not differentiate it from

the trademark. The Complainant’s mark is recognizable within the disputed domain name. Further, the

additional letter can be also considered a common misspelling, a fact which typo squatters normally take
profit from by giving Internet users the impression that the disputed domain name belongs to the
Complainant.

Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

Given the clear evidence that the trademark SAINT-GOBAIN is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed its

trademark to the Respondent, the Panel finds that the Complainant has established prima facie that the
Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a

Response, the Respondent has not rebutted such prima facie case.

It has also been shown that the Respondent is not making any direct use of the disputed domain name

besides having registered them to create a likelihood of confusion with the Complainant’s mark. In addition,

the Complainant contends that the MX-records are set up for the disputed domain name and indicates a
potential risk of fraud, without this being rebutted by the Respondent. The use of a domain name for illegal

activity (e.g., fraud, impersonation) can never confer rights or legitimate interests upon a respondent.

The Panel, thus, finds for the Complainant under the second element of the Policy.

C. Registered and Used in Bad Faith

Given the circumstances of this case, the facts outlined in sections A and B above can also evidence the

Respondent’s bad faith in the registration and use of the disputed domain name.

The disputed domain name was registered to clearly mislead the consumers – hence the extra “r” in the

trademark. The Respondent intended to give an overall impression that the disputed domain name is

associated with the Complainant, and the Panel accepts that the disputed domain name may have been

intended to use the Complainant’s renowned trademark for unlawful purposes – the configuration of the MX-

records suggests that the disputed domain name may be used for unlawful use.

Accordingly, the Panel accepts that the disputed domain name is being used in bad faith. Under the circumstances, the fact that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith.

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All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the

Complainant and that the Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that the Complainant has also proved the third element of 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 <saint-gobairn.com> be transferred to the Complainant.

/Alvaro Loureiro Oliveira/

Alvaro Loureiro Oliveira

Sole Panelist
Date: August 15, 2022