Compagnie de Saint-Gobain v. VistaPrint Technologies Ltd
Claim Number: FA1401001538013
Complainant is Compagnie de Saint-Gobain (“Complainant”), represented by Jeffrey H. Kaufman of Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P., Virginia, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <siant-gobain.com>, registered with TUCOWS, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 8, 2014; the National Arbitration Forum received payment on January 8, 2014.
On January 8, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <siant-gobain.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@siant-gobain.com. Also on January 10, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <siant-gobain.com> domain name is confusingly similar to Complainant’s SAINT-GOBAIN mark.
2. Respondent does not have any rights or legitimate interests in the <siant-gobain.com> domain name.
3. Respondent registered and uses the <siant-gobain.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Compagnie de Saint-Gobain, sells construction products under the mark SAINT-GOBAIN, and owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SAINT-GOBAIN mark (e.g., Reg. No. 1,648,605, registered June 25, 1991).
Respondent registered the <siant-gobain.com> domain name on October 24, 2013, and uses it to display Respondent’s logo and promote Respondent’s website services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 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 (Nat. Arb. 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 Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant’s registration of the SAINT-GOBAIN mark with the USPTO sufficiently evidences its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel notes that, although Respondent appears to be located in Bermuda, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <siant-gobain.com> domain name is identical to Complainant’s mark except for the misspelling of “saint” as “siant.” This minor change does not distinguish the disputed domain name from Complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Likewise, the inclusion of a gTLD does not distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel finds that Respondent’s <siant-gobain.com> domain name is confusingly similar to Complainant’s SAINT-GOBAIN mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the name “Siant-Gobain” and that it has never licensed its SAINT-GOBAIN mark to Respondent, or otherwise authorized Respondent to use Complainant’s mark. The WHOIS record lists “VistaPrint Technologies Ltd” as the registrant of the <siant-gobain.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the <siant-gobain.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent’s website at the <siant-gobain.com> domain name displays Respondent’s logo and promotes Respondent’s website services. The Panel notes that the disputed domain name resolves to a page that displays the “Vistaprint” logo and states “Website are FREE at vistaprint.com/websites.” In Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007), the panel held that respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting respondent’s books, unrelated to complainant. The Panel finds that Respondent’s use of the <siant-gobain.com> domain name to promote its own unrelated services is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel notes that Respondent is the named in respondent in several prior UDRP decisions. See Swisher International, Inc. v. VistaPrint Tech. Ltd, FA 1463430, (Nat. Arb. Forum October 30, 2012) (transferring <swishasweetys.com>); Regents of the Univ. of Mich. v. VistaPrint Technologies Ltd, FA 1460764 (Nat. Arb. Forum October 5, 2012) (transferring <umichregents.com>); Century 21Real Estate LLC v. VistaPrint Technologies Ltd, FA1201001422157 (Nat. Arb. Forum February 2, 2012) (transferring <century21realestatelapl.com>); Designs Around You, Inc. v. VistaPrint Technologies Ltd, FA 1409501 (Nat. Arb. Forum Nov. 4, 2011) (transferring
<designedaroundyou.com>). The Panel finds that these prior decisions against Respondent evince a pattern of bad faith under Policy ¶ 4(b)(ii). See Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).
Respondent’s website resolving from the <siant-gobain.com> domain name displays Respondent’s logo and promotes Respondent’s website services. Respondent presumably commercially gains as it uses the disputed domain name to promote its own services. Previous panels have determined that a respondent’s use of a disputed domain name to divert Internet users away from a complainant’s website to host a website featuring its own services demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Thus, the Panel finds that Respondent has registered and is using the <siant-gobain.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent gobain.com> domain name uses Complainant’s SAINT-GOBAIN mark with a minor misspelling. Previous panels have traditionally found bad faith typosquatting where a disputed domain name represents a misspelled version of a complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Consequently, the Panel finds that Respondent has registered and is using the <siant-gobain.com> domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <siant-gobain.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 10, 2014
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