Compagnie de Saint-Gobain v. ICS INC.
Claim Number: FA1401001541731
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 ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <saintgobainselfservice.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2014; the National Arbitration Forum received payment on January 31, 2014.
On February 1, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <saintgobainselfservice.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 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@saintgobainselfservice.com.
Also on February 4, 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 March 3, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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. Complainant produces and sells products in the construction and habitat markets. Complainant’s subsidiary, CertainTeed Corporation, uses the domain name <saint-gobainselfservice.com> to operate a website that provides benefits and other services to its employees.
2. Complainant has rights in the SAINT-GOBAIN mark, used in connection with construction goods and services. Complainant owns registrations for the SAINT-GOBAIN mark with the Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 001552843 registered Dec. 18, 2001) and with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,648,605 registered June 25, 1991).
3. Respondent’s <saintgobainselfservice.com> domain name is confusingly similar to Complainant’s SAINT-GOBAIN mark. The disputed domain name incorporates Complainant’s mark in its entirety, with the exception of the hyphen, and the disputed domain name adds the descriptive term “selfservice” as well as the generic top-level
domain (“gTLD”) “.com.”
4. Respondent does not have any rights or legitimate interests in the <saintgobainselfservice.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has never authorized Respondent to use its SAINT-GOBAIN mark in any way.
b. The <saintgobainselfservice.com> domain name resolves to a website displaying revenue-generating links. See Complainant’s Exhibit 11.
c. The resolving website also states that the <saintgobainselfservice.com> domain name “is for sale.” See Complainant’s Exhibit 11.
5. Respondent registered and is using the <saintgobainselfservice.com> domain name in bad faith.
a. Respondent’s offer to sell the disputed domain name represents bad faith. See Complainant’s Exhibit 11.
b. Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s SAINT-GOBAIN mark. The <saintgobainselfservice.com> domain name resolves to a website that features links including “Pay Stubs,” “Direct Deposit Payroll,” and “Employee Payroll.” See Complainant’s Exhibit 11. Complainant presumes Respondent is receiving revenue from these links.
6. Respondent registered the <saintgobainselfservice.com> domain name on December 5, 2011.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Compagnie de Saint-Gobain of Courbevoie, France. Complainant is the owner of various international registrations for the mark SAINT-GOBAIN. Complainant produces and sells products in the construction and habitat markets which it alleges to have been doing continuously through its predecessors, subsidiaries and related companies since 1665. In addition to its real space locations Complainant operates in cyberspace at several sites including, <saint-gobain.com> and <saint-gobainselfservice.com>.
Respondent is ICS INC., Grand Cayman, Cayman Islands. Respondent’s registrar’s address is listed as Mumbai, India. Respondent registered the <saintgobainselfservice.com> domain name on or about December 5, 2011.
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.”).
Complainant contends it has rights in the SAINT-GOBAIN mark, used in connection with construction goods and services. Complainant states it owns registrations for the SAINT-GOBAIN mark with OHIM (e.g., Reg. No. 001552843 registered Dec. 18, 2001) and with the USPTO (e.g., Reg. No. 1,648,605 registered June 25, 1991). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel here finds that Complainant has rights in the SAINT-GOBAIN mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns registrations for the mark in multiple jurisdictions. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the USPTO”).
Complainant alleges Respondent’s <saintgobainselfservice.com> domain name is confusingly similar to Complainant’s SAINT-GOBAIN mark. Complainant states that the disputed domain name incorporates Complainant’s mark in its entirety, with the exception of the hyphen, and the disputed domain name adds the descriptive term “selfservice” as well as the gTLD “.com.” The Panel notes that omitting a hyphen from a trademark in a disputed domain name does not negate a finding of confusing similarity. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark). The Panel further notes that the addition of a descriptive term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Am. Int’l Group, Inc. v. Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel here finds the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel here further finds that Respondent’s <saintgobainselfservice.com> domain name is confusingly similar to Complainant’s SAINT-GOBAIN mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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). The Complainant has met this burden.
Complainant contends Respondent does not have any rights or legitimate interests in the <saintgobainselfservice.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has never authorized Respondent to use its SAINT-GOBAIN mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “ICS INC.” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Because Respondent was not authorized by Complainant to use the SAINT-GOBAIN mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <saintgobainselfservice.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that the <saintgobainselfservice.com> domain name resolves to a website displaying revenue-generating links. The Panel notes that the links include “Pay Stubs,” “Direct Deposit Payroll,” and “Employee Payroll.” Past panels have found that using a confusingly similar domain name to host unrelated links does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). The Panel here finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using the website to host unrelated third-party links.
Complainant notes that the resolving website also states that the <saintgobainselfservice.com> domain name “is for sale.” Past Panels have found that a respondent’s willingness to sell a disputed domain name indicates that respondent does not have any rights or legitimate interests in the domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). The Panel here finds that Respondent does not have any rights or legitimate interests in the <saintgobainselfservice.com> domain name under Policy ¶ 4(a)(ii) because Respondent has indicated a willingness to sell the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends Respondent registered and is using the <saintgobainselfservice.com> domain name in bad faith. Complainant states that Respondent’s offer to sell the disputed domain name represents bad faith. In previous cases, panels have found that a general offer to sell a disputed domain name indicates bad faith registration and use under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel finds that Respondent registered and is using the <saintgobainselfservice.com> domain name in bad faith under Policy ¶ 4(b)(i) because Respondent made a general offer to sell the disputed domain name on the resolving website.
Complainant argues that Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s SAINT-GOBAIN mark. Complainant notes that the <saintgobainselfservice.com> domain name resolves to a website that features links including “Pay Stubs,” “Direct Deposit Payroll,” and “Employee Payroll.” Complainant presumes Respondent is receiving revenue from these links. Past panels have found that using a confusingly similar domain name to host third-party links unrelated to a complainant demonstrates bad faith via attraction for commercial gain under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). The Panel here finds that Respondent registered and is using the <saintgobainselfservice.com> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to host third-party links unrelated to Complainant from which Respondent is presumed to obtain commercial gain.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <saintgobainselfservice.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 18, 2014
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