Compagnie de Saint Gobain S.A., and Saint-Gobain Vitrage
S.A.
v.
Com-Union Corp
[Indexed as: Compagnie de Saint Gobain v. Com-Union Corp]
[Indexed as: Saint-gobain.net]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0020
Commenced: 4 February 2000
Judgement: 14 March 2000
Presiding Panelist: Geert Glas
Domain name Domain name dispute resolution policy France - Multiple trademark registrations- Symbolic name Identical Shareholders Freedom of Speech Bad faith registration Bad faith use Legitimate interest - City names - Descriptive names.
Complainants were owners of several registered trademarks for the name Saint-Gobain. Respondent registered the domain name saint-gobain.net. Complainant contends this domain name is identical to its own registered service marks. Further, Complainant argues Respondent registered and used this name in an attempt to criticize and discredit Complainant and as such, did so in bad faith. Respondent argues Saint-Gobain was the name of a saint and a town, and that the name belongs to the world. Respondent described, as an association of North American shareholders (including shareholders of Complainant), concedes having no right to sell merchandise under this domain name, but claims its right to freedom of expression in using the name symbolically.
Held, Name Transferred to Complainant
The domain name registered by Respondent is identical to the trademark Saint-Gobain of the Complainant. Respondent has never used the name as a trademark and is not known by this name and such has no legitimate interest in it. Although Respondent does have the right to voice its criticisms and concerns regarding Complainant, Respondent could have chosen a name, which reflected both the object and independent nature of the site. By failing to do so, Respondent has intentionally registered and used the name in bad faith.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Glas, Panelist: -
1. The Parties
Complainants are Compagnie de Saint Gobain S.A., and Saint-Gobain Vitrage
S.A., both at: Avenue dAlsace 18, 92400 Courbevoie, France, and represented
by Marion Barbier, Bird & Bird, 3 Centre dAffaires Edouard VII, Square
Edouard VII, 75009 Paris, France, hereinafter the "Complainant".
Respondent is Com-Union Corp., 210 Club Drive, Palm Beach Gardens,
FL 33418, U.S.A., represented by Jean Pierre Durand, 210 Club Drive, Palm
Beach Gardens, FL 33418, U.S.A., hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is "saint-gobain.net", hereinafter referred
to as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the
Complainants complaint on January 28, 2000 (electronic version) and February
1, 2000 (hard copy). The Center verified that the complaint satisfies the
formal requirements of the ICANN Uniform Domain Name Dispute Resolution
Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution
Policy (the Rules), and the Supplemental Rules for Uniform Domain Name
Dispute Resolution Policy (the Supplemental Rules). Complainant made the
required payment to the Center. The formal date of the commencement of
this administrative proceeding is February 4, 2000.
On February 1, 2000, the Center transmitted via email to Network Solutions
Inc. a request for registrar verification in connection with this case.
On February 3, 2000, Network Solutions Inc. transmitted via email to the
Center, Network Solutions Verification Response, confirming that the Respondent
is the registrant and that the contact for both administrative and billing
is Blanca Durant and that the technical contact is Freeservers.
Having verified that the complaint satisfied the formal requirements
of the Policy and the Rules, the Center transmitted on February 4, 2000,
to the Respondent, Blanca Durant ([email protected]) and FreeServers
([email protected]) Notification of Complaint and Commencement
of the Administrative Proceeding, via post/courier, facsimile and e-mail.
The postal address used for Respondent was as follows:
Riachuelo 20 CG Bellavista
Antipazan, Mexico 54050
Mexico
The Center advised that the Response was due by February 23, 2000.
On February 21, 2000, the Center received the Response in hardcopy.
While it does not comply with all the requirements posed by paragraph 5
of the Rules, its content will be taken into account in the analysis of
this matter.
On March 1, 2000, in view of the Complainants designation of a single
panelist (but without prejudice to any election to be made by the respondent)
the Center invited M. Geert Glas to serve as a panelist.
Having received on February 28, 2000, M. Geert Glas' Statement of Acceptance
and Declaration of Impartiality and Independence, the Center transmitted
to the parties a Notification of Appointment of Administrative Panel and
Projected Decision Date, in which M. Geert Glas was formally appointed
as the Sole Panelist. The Projected Decision Date was March 14, 2000. The
Sole Panelist finds that the Administrative Panel was properly constituted
and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint,
the Response, the e-mails exchanged, the evidence presented, the Policy,
the Rules and the Supplemental Rules.
4. Factual Background
The complaint is based upon several trademark registrations for Saint-Gobain,
copies of which appear in Exhibits 2, 3, 4 and 5 of the Complaint.
These trademarks include, among others:
Saint-Gobain (France) No. 1527823 March 29, 1989
Saint-Gobain (France) No. 1362805 July 08, 1986
Saint-Gobain (International) No. 551 682 May 23, 1990
It appears from an E-mail sent on February 3, 2000, by Network Solutions
Inc. to the Center, that Respondent is the registrant of the Domain Name,
having as address Riachuelo 20 CG Bellavista, Antipazan, Mexico 54050,
Mexico. Respondent registered the Domain Name on April 10, 1999. Respondent
registered also other domain names (airliquide.net, air-france.net) which
are not at issue here. There is no relation between Respondent and Complainant
and Respondent is not a licensee of Complainant, nor has he otherwise obtained
an authorization to use Complainants marks. The Domain Name is connected
to a web site initially containing limited information on Complainant and
later on, on the history of the "forêt de Saint-Gobain".
5. Parties Contentions
a. Complainant
Complainant contends that Respondent has registered the Domain Name
which is identical to Complainant's Saint-Gobain trademarks, that Respondent
has no rights or legitimate interests in respect of the Domain Name and
that the Domain Name has been registered and is used in bad faith.
Consequently, Complainant requires the transfer of the Domain Name
registration to the Complainant.
b. Respondent
Respondent, described as an association of North American shareholders
(among which shareholders of Complainant), contends that Saint-Gobain is
the name of a saint, a town and a forest. Respondent considers that he
has no right to sell any merchandise under this name, but that the name,
as a symbol of the fight against the oppression of the powerful, belongs
to "Christianity, to history, to geography and to the world patrimony".
According to Respondent, the Domain Name was originally only used to discuss
business strategies and other matters relevant to shareholders of Complainant.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as
to the principles the Administrative Panel is to use in determining the
dispute: "A Panel shall 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."
Applied to this case, Paragraph 4(a) of the Policy directs that the
Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical
to the trademark in which the Complainant has right; and,
(2) that the Respondent has no legitimate interests in respect of the
Domain Name; and,
(3) that the Domain Name has been registered and used in bad faith.
a. Identity
The Domain Name is "saint-gobain.net".
Saint-Gobain is a registered trademark of the Complainant.
In view of the above, the Administrative Panel finds that the Domain
Name is identical to the trademark Saint-Gobain of the Complainant.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use
any of its trademarks or to apply for any domain name incorporating any
of those marks. In addition to that, as pointed out by Complainant, it
appears that Respondent has not registered nor used the name "Saint-Gobain"
as a trademark, nor has it ever been known by this name.
Respondent alleges in substance that the name Saint-Gobain belongs
to the whole world, but does not, however, show its own right or legitimate
interest in the Domain Name.
The Administrative Panel therefore finds that Respondent has no right
or legitimate interest in the Domain Name.
c. Registration and Use in Bad Faith
1. When registering the Domain Name (as well as airliquide.net and
air-france.net), Respondent clearly intended to us it to voice opinions,
concerns and criticism with regard to the management and activities of
Complainant and affiliated companies within the Saint-Gobain group:
"Com-union registered on April 10 and April 16, 1999,in the ".Net"
TLD category the names of three French companies they had invested in:
airliquide.net, airfrance.net and sint-gobain.net. These three corporations
had in common their poor performance in term of MVA (Market Value Added)
and in our view in term of communication with their shareholders. Dissatisfied
with the content of the information provided by these foreign corporations,
com-union wanted to take advantage of the publishing facilities of the
Internet to share their concern with the management: we were asking for
more relevant figures and we had questions regarding their strategies which
were implemented in the context of the new e-economy." Response received
on February 21, 2000.
It goes without saying that shareholders or other interested parties
have the right to voice opinions, concerns and criticism with respect to
a listed company and that the Internet constitutes an ideal vehicle for
such activities.
The issue at hand is however not as Respondent seems to contend, the
freedom of speech and expression but the mere choice of the domain name
used to exercise this inalienable freedom of speech and expression.
When registering the Domain Name, Respondent knowingly chose a name
which is identical and limited to the trademark of Complainant and which
is identical to the domain name registered by Complainant in the .com gTLD
("More to the point, in April 1999, the Compagnie de Saint-Gobain had already
registered all the domain names that were of any use for its business.
If the DNS Saint-Gobain.net was available then, it was because it was of
no value to their operation" Response received on February 21.2000).
Respondent could have chosen a domain name adequately reflecting both
the object and independent nature of its site, as evidenced today in thousands
of domain names.
By failing to do so, and by knowingly choosing a domain name which
solely consists of Complainants trademark, Respondent has intentionally
created a situation which is at odds with the legal rights and obligations
of the parties.
2. At first Respondent did use the Domain Name to voice opinions, concerns
and criticism with regard to the management and activities of Respondent.
However this is no longer the case:
"In North America, Shareholders are permitted to question the business
model of the corporations they have invested in. Unfortunately, the shareholders
rights are not equally recognized on the other side of the Atlantic (and
particularly in France). (
)
Consequently, com-union decided at the end of September 1999, to censor
the content of the sites air-france.net, ariliquide.net and saint-gobain.net
(
). It was also decided not to renew the registrations of the different
DNS and only to keep the site saint-gobain.net for its symbolic value".
Response received on February 21,2000).
Today (March 14,2000) the website identified by the Domain Name merely
contains some paragraphs devoted to the history of the "forêt de
Saint-Gobain" where allegedly the Picardian resistance found shelter against
tyranny in the eleventh century. It also contains a number of commercial
banners including an on-line gambling banner ad.
In its Response received on February 21, 2000, the Respondent described
this symbolic value as "Saint-Gobain, a symbol of light against the oppression
of the powerful, belongs to all" and "we wish to keep our right to the
domain name Saint-Gobain.net, not to engage in any commercial activity
or to be parasitic to anybody, but to keep it as a symbol of our freedom
and dignity."
Respondents current intention to commemorate the role of the "forêt
de Saint-Gobain" in the 11th century Picardian resistance movement can
of course not be criticized.
The Administrative Panel however fails to understand the link between
this as such laudatory goal to commemorate the "forêt de Saint-Gobain"
and Respondents determination "to keep (the Domain Name) as a symbol of
our freedom and dignity."
It therefore seems that Respondents real current goal is to prevent
Complainant which Respondent does not seem to hold in high esteem from
reflecting its trademark in the Domain Name. It is thereby illustrative
that while Respondent registered three domain names in similar circumstances
and with a similar goal, it has indicated not to renew the registrations
for the domain names air-france.net and airliquide.net, only keeping the
saint-gobain.net registration.
In conclusion and in view of the above, the Administrative Panel finds
that Respondent has registered and used the Domain Name in bad faith.
7. Decision
In light of the foregoing, the Administrative Panel decides that the
Domain Name "saint-gobain.net" registered by Respondent is identical to
the trademark of Complainant, that the Respondent has no right or legitimate
interest in respect of the Domain Name, and that the Respondents Domain
Name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4, i of the Policy, the Administrative
Panel requires that the registration of the Domain Name "saint-gobain.net"
be transferred to Complainant.
Geert Glas
Sole Panelist
Date: March 14, 2000
|