Decision for dispute CAC-UDRP-106791

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 owns various international trade mark registrations for its SAINT-GOBAIN mark including International trade mark registration 551682 for SAINT - GOBAIN word and device mark registered on July 21, 1989 and International registration 740183 for the word mark SAINT GOBAIN registered on July 26, 2000. The Complainant also owns various domain names including its SAINT-GOBAIN trade mark and in particular <saint-gobain> registered on December 29, 1995.

The Complainant is a French company specialized in the production, processing and distribution of materials for the construction and industrial markets. It is one of the leading industrial groups in the world with around 47.9 billion euros in turnover in 2023 and 160,000 employees.

The disputed domain name was registered on August 5, 2024 and at the date of filing resolved to a parking page that featured links to other commercial sites including to the Complainant’s own site.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.
No administratively compliant Response has been filed.

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.

The Complainant owns registered trade mark rights for its SAINT-GOBAIN mark as set out above and the word SAINT-GOBAIN is the key and dominant element of combined word and device International registration 551682 designated in numerous jurisdictions. The Panel finds, as submitted by the Complainant, that the SAINT-GOBAIN trade mark is wholly incorporated into the disputed domain name and is therefore confusingly similar to it. The addition of the English word “career” in the disputed domain name does not prevent a finding of confusing similarity.

The Complainant has asserted that the Respondent is not identified in the “Whois” information as the disputed domain name and the Panel notes that there is no other indication that it trades in or has rights under that name. In circumstances that the Complainant’s SAINT-GOBAIN mark was very well reputed at the date of registration of the disputed domain name the Respondent must have been aware of it at that time and that it was registered it in order to take advantage of the Complainant’s mark and reputation.

The Complainant has also contended that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent is not related in any way with the Complainant and carries out no activity or business with the Respondent. The Complainant has also submitted that it has granted neither a licence nor authorisation to the Respondent to make any use of the Complainant’s SAINT-GOBAIN trade mark, or to apply for registration of the disputed domain name. The Complainant has noted that the disputed domain name resolves to a parking page with commercial links which it has asserted does not amount to a bona fide offering of goods or services or to legitimate non-commercial or fair use.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name and therefore the Complaint succeeds under the second element of the Policy.

The disputed domain name was registered in August 2024 long after the Complainant’s registration of its trade mark rights.  As noted by the Complainant, its SAINT – GOBAIN mark was by this time very well reputed and its business was very well established in France and internationally. The Complainant’s mark also enjoys a high level of distinctiveness. It is therefore more likely than not that the Respondent was well aware of the Complainant’s mark and business by the time of registration of the disputed domain name.

Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.

In this case the Respondent has used the disputed domain names intentionally to attract internet users to its own website by creating a likelihood of confusion with the Complainant’s SAINT-GOBAIN mark. The Complainant has submitted evidence that at the time of filing this website diverted Internet users to a website which features commercial links both to third party commercial sites and to the Complainant’s own products. It is most likely that the Respondent made some commercial gain from these arrangements which therefore amounts to conduct in terms of paragraph 4(b)(iv) of the Policy and is evidence of registration and use of the disputed domain name in bad faith.

The Panel finds that the Complainant has established the third element of the Policy.