Decision for dispute CAC-UDRP-107263

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 bases its Complaint on the following SAINT-GOBAIN trademarks:

• International trademark registration “SAINT-GOBAIN”, no. 740184, registered since 26 July 2000, for goods and services in classes 01, 02, 03, 06, 07, 08, 09, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, 42, designating several jurisdictions for protection;
• International trademark registration “SAINT-GOBAIN”, no.740183, registered since 26 July 2000, for goods and services in classes 01, 02, 03, 06, 07, 08, 09, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, 42, designating several jurisdictions for protection;
• International trademark registration “SAINT-GOBAIN”, no. 596735, registered since 02 November 1992, for goods and services in classes 01, 06, 09, 11, 12, 16, 17, 19, 20, 21, 22, 23, 24, designating several jurisdictions for protection;
• International trademark registration “SAINT-GOBAIN”, no. 551682, registered since 21 November 1989, for goods and services in classes 01, 06, 07, 09, 11, 12, 16, 17, 19, 20, 21, 22, 23, 24, 37, 39, 41, designating several jurisdictions for protection.

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.

1. Confusing Similarity

The Panel agrees that the disputed domain name < saint-gobain-glass.sbs > is confusingly similar to the Complainant's earlier trademarks SAINT-GOBAIN. The disputed domain name incorporates entirely the Complainant’s earlier SAINT-GOBAIN trademark and the addition of the generic term “glass” which is referring to the Complainant’s activities under the trademarks SAINT-GOBAIN is not sufficient to escape the finding that the domain name is confusingly similar to the Complainant’s trademarks and it does not change the overall impression of the designations as being connected to the trademark SAINT-GOBAIN.

Moreover, the extension “.sbs” is not to be taken into consideration when examining the similarity between the Complainant’s trademarks and the disputed domain name (WIPO Case No. D2005-0016, Accor v. Noldc Inc.). The mere adjunction of a gTLD such as “.sbs” is irrelevant as it is well established that the generic Top Level Domain is insufficient to avoid a finding of confusing similarity (WIPO Case No. 2013-0820, L’Oréal v Tina Smith, WIPO Case No. D2008-0820 Titoni AG v Runxin Wang and WIPO Case No. D2009-0877, Alstom v. Itete Peru S.A.).

Therefore, the Panel is satisfied that the first condition under the Policy is met.

2. Lack of Respondent's rights or legitimate interests

The Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Based on the available evidence, the Respondent does not appear to be known by the disputed domain name as such is not identified in the WHOIS database as the disputed domain name.

Moreover, the Respondent is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent.

No license nor authorization has been granted by the Complainant to the Respondent to make any use of the Complainant’s trademark SAINT-GOBAIN, or to apply for registration of the disputed domain name.

The disputed domain name resolves to an error page, while MX servers are configured in relation to this disputed domain name.

The Respondent had an opportunity to comment on the Complaint’s allegations by filing a Response, which the Respondent failed to do.

Thus, the Panel is satisfied that the Complainant has at least established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel takes the view that also the second requirement under the Policy is met.

3. Bad Faith

The Complainant’s trademarks SAINT-GOBAIN predate the registration date of the disputed domain name and enjoy a distinctive character. The Respondent has chosen to register the disputed domain name which incorporates entirely the Complainant’s earlier SAINT-GOBAIN trademark with the addition of the generic term “glass” which is referring to the Complainant’s activities in order to create a confusion with such trademark. Therefore, the Panel concludes that at the time of registration of the disputed domain name, the Respondent was well aware of the Complainant’s trademarks and had intentionally registered one in order to benefit from the distinctive character of the Complainant’s trademarks.

In the present case, the following factors should be considered:

• the Complainant's trademarks predate the registration date of the disputed domain name and enjoy a distinctive character;

• the Respondent registered the disputed domain name which includes in its entirety the Complainant’s SAINT-GOBAIN earlier trademarks with the addition of the generic term “glass” which is referring to the Complainant’s activities under these trademarks;

• the Respondent has no business relationship with the Complainant, nor was ever authorised to use a domain name similar to the Complainant's trademarks;

• the disputed domain name resolves to an error page, while MX servers are configured in relation to this disputed domain name which suggests that it may be actively used for email purposes, most probably in order to attract Internet users for the Respondent’s commercial gain thanks to the Complainant’s SAINT-GOBAIN trademarks. Considering the above, in the Panel’s view, it is inconceivable that the Respondent will be able to make any good faith use of the disputed domain name as part of an e-mail address;

• the Respondent failed to submit any response and has not provided any evidence of actual or contemplated good faith use of the disputed domain name.

In light of the foregoing, the Panel concludes that the Respondent has registered and has been using the disputed domain name in bad faith. Thus, also the third and last condition under the Policy is satisfied.