Decision for dispute CAC-UDRP-106882

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 is the owner of the SAINT-GOBAIN trade mark which has been registered worldwide. These registrations include the following: International trademark registration Nos. 740184 (registered July 26, 2000), 740183 (registered July 26, 2000), 596735 (registered November 2, 1992) and 5561682 (registered July 21, 1989).

SAINT-GOBAIN is also commonly used to designate the company name of the Complainant.

The Complainant is a French company specialised in the production, processing and distribution of materials for the construction and industrial markets including for the sustainable habitat and construction markets.

The Complainant was founded about 350 years ago and is one of the top industrial groups in the world with around 47.9 billion Euros in turnover in 2023, and 150,000 employees across the world.

The Complainant owns and operates various domain names containing the trademark SAINT-GOBAIN, including <saint-gobain.com> which was registered on December 29, 1995.

The Respondent is Eric Chaffin of NY, New York, United States.  

The Respondent registered the disputed domain name on November 11, 2014. The disputed domain name resolves to a parking page with commercial links.

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.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has provided evidence that it owns registered trademark rights in the word “SAINT-GOBAIN”.

The disputed domain name contains the entirety of the Complainant’s SAINT-GOBAIN trademark with the addition of the term “c8lawsuit”. In this case, the Complainant’s SAINT-GOBAIN trademark is recognisable within the disputed domain name. The addition of the other term “c8lawsuit” does not prevent a finding of confusing similarity. See sections 1.7 and 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”).

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name. The Complainant provided evidence that it owns trademark rights in the SAINT-GOBAIN trademark long before the date that the disputed domain name was registered. The Respondent is not affiliated with the Complainant and there is no evidence that the Respondent was licensed or otherwise authorized by the Complainant to use the Complainant’s SAINT-GOBAIN trademark or to register it in a domain name.

The Panel draws guidance from the WIPO Overview 3.0, section 2.9:

“Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.”

In this case, while on the face of the evidence provided by the Complainant, the parking page to which the disputed domain name resolved did not lead to links which compete with the Complainant’s business associated with the SAINT-GOBAIN trademark nor did the Complainant contend as such, the Panel still finds that the Respondent failed to show he has rights or legitimate interests as the disputed domain name did not appear to “genuinely relate to the dictionary meaning of the words comprising the domain name”; rather it appeared to trade off the Complainant’s trademark.

The Respondent did not submit a Response in rebuttal and did not provide any explanation or evidence to show he has rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). 

The SAINT-GOBAIN mark is a very well-established mark, having been used and registered for many years across many countries. The disputed domain name was registered long after the Complainant had registered and used the SAINT-GOBAIN trademark. The Complainant points out in the Complaint that the additional terms “C8 Lawsuit” in the disputed domain name cannot be coincidental as “C8” is also known as “PFOA” (Perfluorooctanoic acid), a man-made chemical used to manufacture non-stick and other household and commercial products that are heat-resistant and repel grease and water, which has been used in the past by a company bought by the Complainant.

The Panel is persuaded that the Respondent must have known of the Complainant and its well-established trademark and sought to attract Internet users to his website or the parking page for commercial gain. The circumstances of this case fall within the ambit of paragraph 4(b)(iv) of the Policy.

The Panel therefore concludes that the disputed domain name was registered and used in bad faith.