Decision for dispute CAC-UDRP-107060

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 is the owner of the following trademarks:

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.

Complainant states that it is a worldwide reference in sustainable habitat and construction markets. It takes a long-term view in order to develop products and services for its customers that facilitate sustainable construction. Its integrated solutions for the renovation of public and private buildings, light construction and the decarbonization of construction and industry are developed through a continuous innovation process and provide sustainability and performance. In this way, it designs innovative, high-performance solutions that improve habitat and everyday life. It has consistently demonstrated its ability to invent products that improve quality of life. It is now one of the top industrial groups in the world with around 47.9 billion euros in turnover in 2023 and 160,000 employees.

The disputed domain name was registered on November 6, 2024 more than two decades after Complainant's registrations of its trademark.

COMPLAINANT

Complainant contends that this case demonstrates a clear case of typosquatting. It introduces into the domain name an “L” before the letter “B” so that instead of “Gobain” the domain name is <saint-golbain.com>. Respondent has also configured an MX server which signifiers an intention to use emails associated with the domain name. The disputed domain name was registered on November 6, 2024. Typosquatting does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and the domain name corresponding to it.

According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use its mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain name to resolve to a pay-per-click website. 

RESPONDENT

No administratively compliant Response has been filed.

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 Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

Complainant has, to the satisfaction of the Panel, shown 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).

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.

Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:

(i) the 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 of the domain name; and

(iii) the respondent has registered and is using the domain name in bad faith.

Paragraph 5(c)(i) of the Rules instruct the respondent to: "respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name ..." Notwithstanding Respondent's default, however, Complainant is not relieved from the burden of establishing its claim. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.0, § 4.3: "Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true." However, if a complainant's adduced evidence supports any element of the Policy, a respondent has an opportunity to contest the contention that its registration of the challenged domain name was unlawful.

In view of respondent's failure to submit a response, the panel shall decide this administrative proceeding on the basis of the complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The panel is entitled to accept all reasonable allegations and inferences set forth in the complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (FORUM July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000) ("In the absence of a response, it is appropriate to accept as true all [reasonable] allegations of the Complaint."). Here, Respondent has not availed itself of contesting the evidence, and for the reasons further explained the disputed domain name shall be transferred to Complainant's account.

I.  Identical or confusingly similar, §4(a)(i).

This first limb of the Policy requires Complainant to prove that it has a trademark right and that the disputed domain name is identical or confusingly similar to that mark. The Panel finds that Complainant has demonstrated that it has a registered trademark right to the term SAINT-GOBAIN. Having established that element of the Policy the next question is whether the disputed domain name is identical or confusingly similar to Complainant's mark.

A side-by-side comparison of the disputed domain name and the SAINT-GOBAIN trademark indicates that disputed domain name adds an “L” following the letter “O”. While not identical to Complainant’s mark <saint-golbain.com> is confusingly similar to Complainant’s trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, Claim No. FA 782013 (Forum June 4, 2018) (holding “relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”

At the threshold it is necessary only to consider "whether a domain name is similar enough in light of the purpose of the Policy to justify moving on to the other elements of a claim for cancellation or transfer of a domain name." The Panel in Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, D2000-1415 (WIPO January 23, 2001) notes that "numerous prior panels have held [the purposes of the Policy are satisfied] when a domain name wholly incorporates a complainant's registered mark." Similarly, Magnum Piering, Inc. v The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO January 21, 2001). Panelists generally disregard the top-level suffixes as functional necessities; thus, the top-level extension is irrelevant in determining the issue under the first requirement of the Policy.

Having demonstrated that the disputed domain name is confusingly similar to Complainant's SAINT-GOBAIN trademark the Panel finds Complainant has satisfied Para. 4(a)(i) of the Policy.

2. Rights and legitimate interests, Para. 4(a)(ii)

Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that a respondent lacks rights or legitimate interests in respect of the disputed domain name, but this burden is light. It is sufficient in the first instance for Complainant to allege a prima facie case. Once the complainant makes such prima facie showing, "the burden of production shifts to the respondent to rebut that presumptive proof, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence rebutting the prima facie case or showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP," Malayan Banking Berhad v. Beauty, Success & Truth International, Case No. D2008-1393. Finally, "in the absence of direct evidence, complainant and the panel must resort to reasonable inferences from whatever evidence is in the record," Euromarket Designs, Inc. v. Domain For Sale VMI, Case No. D2000-1195.

This concept of shifting burdens is clearly explained in Croatia Airlines d.d. v. Modern Empire Internet Ltd., Case Number D2003-0455 in which the Panel held that "[s]ince it is difficult to prove    a negative ... especially where the Respondent, rather than complainant, would be best placed to have specific knowledge of such rights or interests—and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant's burden of proof on this element is light."

In this case, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name in that it has not granted Respondent permission to use the SAINT-GOBAIN trademark, and without authorization Respondent is using the disputed domain name to mislead consumers into believing that the website is sponsored by Complainant. Thus, Complainant has adduced a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.

Once the burden shifts, Respondent has the opportunity of demonstrating its right or legitimate interest by showing the existence of any of the following nonexclusive circumstances:

(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

If a respondent proves any of these circumstances or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the respondent must succeed. However, where respondent fails to respond, the panel must assess the record before it.

Here, the choice of the disputed domain name is confusingly similar to the trademark. Complainant alleges that it has not authorized Respondent to register the disputed domain name nor does it have any business relationship with Respondent that would support a defense under para. 4(c)(i) of the Policy. Further, the evidence in the record is conclusive that Respondent is a Ralph Willkens who is not commonly known under the disputed domain name. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group, Case Number FA1804001781783 ("Here, the WHOIS information of record identifies Respondent as "Chad Moston / Elite Media Group." The Panel therefore finds under Policy 114(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy para. 4(c)(ii)"); Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, Case Number FA 1741129 (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same).

Since there is no proof otherwise, the record supports the conclusion that Respondent lacks any right or legitimate interest as measured by the three circumstances of paragraph 4(c). See Deutsche Telekom AG v. Britt Cordon, Case No. D2004 -0487 (holding that "once a complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent. If the respondent cannot do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP"). Similarly in Malayan Banking Berhad, supra. (holding that "[i]f the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.").

Accordingly, as the Panel finds that  Respondent does not have rights or legitimate interests in the disputed domain name, Complainant has satisfied Paragraph §4(a)(ii) of the Policy.

3. Registered and Used in Bad Faith, §4(a)(iii)

Having determined that Respondent lacks rights or legitimate interests, Complainant must then prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. The consensus expressed in WIPO Overview 3.0, section 3.1.4. is that "the mere registration of a domain name that is identical or confusingly similar . .. to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith."

Paragraph 4(b) of the Policy sets out four nonexclusive circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.

The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or 

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.

The Panel finds that Complainant has shown that Respondent registered and is using the disputed domain name in bad faith both in general and in particular because Respondent's conduct puts the case squarely within paragraph 4(b)(iv) as well as within the larger notion of abusive conduct. The Panel finds that Complainant has adduced more than sufficient evidence to prove Respondent's bad faith based on the foregoing considerations.

The registration of a typosquatted domain name is clearly intended to attract Internet users seeking to reach Complainant's website and creating a "likelihood of confusion with the complainant's mark." Where the facts demonstrate an intent to capitalize on an owner's mark in the manner in which Complainant describes and which is supported by proof in the record, the registration is prima facie abusive. Royal Bank of Canada - Banque Royale Du Canada v. Registration Private, Domains By Proxy, LLC / Randy Cass, Case No. D2019-2803 (<investease.com>. "It is clear that where the facts of the case establish that the respondent's intent in registering or acquiring a domain name was to unfairly capitalize on the complainant's  .. . trademark, panels have been prepared to find the respondent acted in bad faith.). See WIPO Overview 3.0, section 3.8.2.

Here, too, the disputed domain name resolves to a pay per click website. While it does not pretend to be Complainant, this use is exploitative of a well-known and distinctive mark.  See SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Claim No. D2016-2497 for the “well established [proposition] that where a domain name is used to generate revenue in respect of ‘click through’ traffic, and that traffic has been attracted because of the name’s association with Complainant, such use amounts to use in bad faith.” Thus, Respondent demonstrates that it had Complainant and its trademark in mind when registering the disputed domain name. Absent a cogent explanation from Respondent justifying its choice of domain name which is not forthcoming in this proceeding, this supports the conclusion that it registered the disputed domain name with the purpose of taking advantage of its goodwill and reputation and committing fraud on consumers and Complainant's clients.

Further probative in this case is that Respondent has created an MX record associated with the disputed domain name. Panels have repeatedly found that the activation of MX records, in circumstances where there is a high likelihood of internet-user confusion, is indicative of an intention to engage in illegitimate conduct (see, for instance, TEVA Pharmaceutical Industries Limited v. Name Redacted, WIPO Case No. D2022-3791 (‘The Panel finds that Respondent’s registration of MX records in respect of the disputed domain are further circumstances demonstrating bad faith registration and use of the disputed domain name.’) and Morgan Stanley v. Stone Gabriel,  FA 1998634 (Forum June 29, 2022) ("The Panel has determined that there are MX records for the disputed domain name, therefore it might be intended for use in an email phishing scheme.").

Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith and that its conduct firmly supports the conclusion that the registration of <saint-golbain.com> was abusive. Having thus demonstrated that Respondent registered and is using the disputed domain name in bad faith, Complainant has also satisfied paragraph 4(a)(iii) of the Policy.