Case number | CAC-UDRP-105961 |
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Time of filing | 2023-11-13 09:37:19 |
Domain names | 5aint-gobain.com |
Case administrator
Organization | Iveta Špiclová (Czech Arbitration Court) (Case admin) |
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Complainant
Organization | COMPAGNIE DE SAINT-GOBAIN |
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Complainant representative
Organization | NAMESHIELD S.A.S. |
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Respondent
Name | Mmm Sure |
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The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.
The Complainant, operating under the company name SAINT-GOBAIN, is the owner of several trademarks registered worldwide, including:
- International trademark SAINT-GOBAIN n°551682 registered since 21 July 1989 1, 6, 7, 9, 11, 12, 16, 17, 19, 20, 21, 22, 23, 24, 37, 39, 41;
- International trademark SAINT-GOBAIN n°596735 registered since 2 November 1992 in classes 1, 6, 9, 11, 12, 16, 17, 19, 20, 21, 22, 23, 24;
- International trademark SAINT-GOBAIN n°740183 registered since 26 July 2000 in classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, 42;
- International trademark SAINT-GOBAIN n°740184 registered since 26 July 2000 in classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, 42.
The Complainant also owns an extensive domain name portfolio, comprising the domain name <saint-gobain.com> registered since 29 December 1995 and used as the Complainant's main website.
The Complainant is SAINT-GOBAIN, a multinational company incorporated under the laws of France, specialized in the production, processing and distribution of materials for the construction and industrial markets. It is present in 75 countries and employs more than 168,000 people. Its turnover in 2022 was 51,2 billion euros.
The disputed domain name was registered on 1 March 2023 by an individual, residing in Namibia. It is currently not associated with any active website.
COMPLAINANT:
The Complainant contends that the disputed domain name is a typosquatted version of its well-known SAINT-GOBAIN trademark and, therefore, it is confusingly similar to that mark.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known by the disputed domain name. The Complainant does not have any relationship with the Respondent. The Respondent is neither affiliated with, nor authorized by the Complainant in any way to make any use of the Complainant’s SAINT-GOBAIN trademark or to register the disputed domain name. The typosquatting of the Complainant's trademark by the Respondent evidences that he lacks rights and legitimate interests in the disputed domain name. Besides, the Complainant contends that the Respondent did not use the disputed domain name, and it confirms that the Respondent has no demonstrable plan to use the disputed domain name.
Finally, the Complainant contends that given the distinctiveness of the Complainant's SAINT-GOBAIN trademark and reputation, it is reasonable to infer that the Respondent has registered the disputed domain name, which is a typosquatted version of the Complainant's trademark, with full knowledge of the Complainant's mark. Moreover, the passive holding of the domain name by the Respondent constitutes bad faith use.
The Complainant requests the transfer of the disputed domain name.
RESPONDENT:
No administratively compliant Response has been filed.
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to succeed in the administrative proceeding:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.
I. THE COMPLAINANT’S RIGHTS AND CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT'S MARK
The Complainant has established that it has rights in the SAINT-GOBAIN trademark since 1989. The trademark of the Complainant was registered prior to the registration of the disputed domain name (1 March 2023) and is valid and well-known worldwide.
In UDRP disputes the test for identity or confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see paragraph 1.7 WIPO Overview 3.0).
A domain name which contains sufficiently recognizable aspects of the relevant mark and uses a common, obvious, or intentional misspelling of such trademark is considered by UDRP Panels confusingly similar to the relevant mark for purposes of the first element (see 1.9 WIPO Overview 3.0). Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers. The practice of registering a domain name in an attempt to take advantage of Internet users’ typographical errors is commonly called typosquatting.
UDRP panels also agree that the top-level domain (TLD) is usually to be ignored for the purpose of determination of identity or confusing similarity between the disputed domain name and the Complainant’s trademark as it is a technical requirement of registration (see 1.11.1 WIPO Overview 3.0).
The disputed domain name consists of the number "5" and the letters "aint" and "gobain" divided by a hyphen, plus the TLD ".com".
In assessing identity or confusing similarity, the Panel finds that the disputed domain name is confusingly similar to the Complainant's SAINT-GOBAIN trademark because it differs from that mark by merely substituting the mark's initial letter "s" with the number "5" which visually resemble such letter. The substitution of the letter "s" with the number "5" in the Complainant's well-known trademark neither affects the attractive power of such trademark, nor is sufficient to distinguish the disputed domain name from the Complainant's mark.
Hence, the Panel finds that the Complainant has proven the first element of the paragraph 4(a) of the Policy and the disputed domain name is confusingly similar to the Complainant's marks.
II. THE RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS TO THE DISPUTED DOMAIN NAME
It is a consensus view of UDRP panels that the Complainant shall establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent (see 2.1 WIPO Overview 3.0: "[...] 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element").
The Complainant has no relationship with the Respondent whatsoever. The Respondent has never received any approval of the Complainant, expressed or implied, to use the Complainant's SAINT-GOBAIN trademark or to register the disputed domain name.
The Respondent has been identified by the Registrar with the name Mmm Sure, residing in Namibia. There is no evidence that the Respondent has been commonly known by the disputed domain name or has acquired any rights in a trademark or trade name corresponding to the disputed domain name.
The disputed domain name does not resolve to any active website. There is no evidence that, before any notice to Respondent of the dispute, the Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
The disputed domain name is a typosquatted version of the Complainant's well-known trademark. Such practice (i.e., typosquatting), aimed to take advantage of the Internet users' typographical errors, evidences the Respondent's intent to misleadingly divert consumers or to tarnish the Complainant's mark and, thus, the Respondent's lack of rights and legitimate interests in the disputed domain name.
While the Complainant has established its prima facie case, the Respondent has not submitted a Response to the Complaint and, thus, has failed to invoke any of the circumstances, which could demonstrate rights or legitimate interests in the disputed domain name.
Therefore, the Panel is satisfied that the Complainant has met the second requirement of the paragraph 4(a) of the Policy and finds that the Respondent lacks rights or legitimate interests to the disputed domain name.
III. BAD FAITH REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME
By substituting the letter "s" with the number "5", the Respondent has registered the disputed domain name which visually resembles the Complainant's SAINT-GOBAIN trademark, and creates in such way a likelihood of confusion with that mark. Considering the notoriety of the Complainant's activities and its SAINT-GOBAIN mark worldwide confirmed also by other UDRP decisions (WIPO Case No. D2020-3549, Compagnie de Saint-Gobain v. On behalf of saint-gobain-recherche.net owner, Whois Privacy Service / Grigore PODAC), it is unlikely that the registration of the disputed domain name may be attributed to a mere chance and not, as is, with a full awareness and intent to exploit the reputation of the Complainant and its mark acquired in these years.
Furthermore, the Respondent used a privacy service when registering the disputed domain name. Although the use of such service is not in and of itself an indication of bad faith, the circumstances and the manner in which such service is used may however impact a panel’s assessment of bad faith (see 3.6 WIPO Overview 3.0).
Finally, the disputed domain name is not associated with any active website since its registration date (1 March 2023). UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (see 3.3 WIPO Overview 3.0 and in particular Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003).
The following factors were considered by the Panel when applying the passive holding doctrine in the present case:
(i) the degree of distinctiveness and/or reputation of the Complainant’s trademark;
(ii) the failure of the Respondent(s) to submit a response or to provide any evidence of actual or contemplated good faith use;
(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement);
(iv) the implausibility of any good faith use to which the disputed domain name may be put.
Taken into account all circumstances of this case (i.e, the employment of an intentional misspelling during the registration by the Respondent corroborated by the non-use of the disputed domain name), the Panel finds that it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being an infringement of the Complainant’s trademark under trademark law, a passing off, or an infringement of consumer protection legislation.
The Complainant has, therefore, discharged the burden of proof to show that the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The disputed domain name is to be transferred to the Complainant.
- 5aint-gobain.com: Transferred
PANELLISTS
Name | Ivett Paulovics |
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