Decision for dispute CAC-UDRP-106396

According to Paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The Panel has examined the evidence available to it and has come to the following conclusion concerning the satisfaction of the three elements of paragraph 4(a) of the Policy in these proceedings:

RIGHTS

The Complainant has established rights in the name SAINT-GOBAIN. The disputed domain names <saint-gobein.com> and <saintgoban.com> are found to be confusingly similar to the Complainant’s Trademark(s), company name and domain. This finding is based on the settled practice in evaluating the existence of a likelihood of confusion of:

a) disregarding the top-level suffix in the domain name (i.e. “.com”);

b) finding that the mere typo of a modified letter i.e. “E” instead of “A” of GOBAIN or the suppressed “I” of GOBAIN would not be considered sufficient to distinguish a domain name from a trademark being read and pronounced if not strictly identically almost identically. This being a misspelling of the trademark SAINT-GOBAIN, intentionally designed to be confusingly similar with the trademark, i.e. a case of typosquatting;

The disputed domain names are therefore confusingly similar to the earlier right “SAINT-GOBAIN”, and the Panel concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

NO RIGHTS OR LEGITIMATE INTERESTS

The onus to make out a prima facie case that the Respondent lacks rights or legitimate interests is placed on the Complainant. However, once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see e.g. WIPO case no. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd.).

The Complainant has put forward th”t th’ Respondent is not commonly known by the disputed domain names. The Respondent is not identified in the Whois under the disputed domain names. Past panels have held that a Respondent was not commonly known by a disputed domain names if the Whois information was not similar to the disputed domain names. The Respondent is in no way related to the Complainant. Nor has the Respondent been granted an authorization or license to use the disputed domain names by the Complainant. This has not been contested by the Respondent. Instead, the Respondent failed to provide any information and evidence whatsoever that could have shown that it has relevant rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a) (ii) of the Policy). The disputed domain names redirect to the official website of the Complainant.

 In summary, the Panel concludes that the Respondent did not establish any right or legitimate interest to the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy). The Complainant has therefore also satisfied the requirement under paragraph 4(a)(ii) of the Policy.

BAD FAITH

The Panel finds that the Complainant has established that the disputed domain names were registered by the Respondent and are being used by the Respondent in bad faith. For this purpose, the Complainant has successfully put forward prima facie evidence that the Respondent has not made use, or demonstrable preparations to use, of either the disputed domain names in connection with a bona fide offering of goods or services, or of making a legitimate non-commercial or fair use of the disputed domain names. This prima facie evidence was not challenged by the Respondent.

The disputed domain names were created quite recently, on March 23, 2024. The Complainant was already using its trademark “SAINT-GOBAIN” extensively well before that date. The Complainant has established that its trademark has a well-known character and that it operates a long-standing globally accessible website under the <saintgobain.com> domain name.

In WIPO Case No. D2020-3549, Compagnie de Saint-Gobain v. On behalf of saint-gobain-recherche.net owner, Whois Privacy Service / Grigore PODAC, the Panel was “satisfied that the Complainant is a well-established company which operates since decades worldwide under the trademark SAINT-GOBAIN. The Panel in these proceedings has no reason to question this finding. It is also satisfied of the worldwide operation of a well-established company under the name SAINT-GOBAIN.

The disputed domain names redirect to the official website of the Complainant. Furthermore, the MX servers are configurated. Such making use of the disputed domain names, obviously in a potential fraudulent manner, neither qualifies as a bona fide nor as a legitimate noncommercial or fair use under the UDRP and may not of itself confer rights or legitimate interests in the disputed domain names. The potential collection of personal data or passwords via phishing process being one possible fraudulent act.

The Respondent has failed to demonstrate any activity in respect of the disputed domain names, and it is not possible to conceive of any plausible actual or contemplated active use of the domain names by the Respondent that would not be illegitimate, by passing off, infringement of consumer protection legislation, or infringement of the Complainant’s rights under trademark law.

In the absence of a Response and given the reputation of the Complainant and its trademark(s), company name and domain as supported by the Complainant’s evidence, the Panel must conclude that the Respondent was fully aware of the Complainant's trademark(s), domain and company name "SAINT-GOBAIN" at the time of registering the disputed domain names <saint-gobein.com> and <saintgoban.com>.

Therefore, it has been established to the satisfaction of the Panel that the disputed domain names were registered and are being used in bad faith, in order to prevent the Complainant from making proper use of the mark in the disputed domain names.

The Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). The Complainant has therefore also satisfied the requirement under paragraph 4(a)(iii) of the Policy.