Decision for dispute CAC-UDRP-107134

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 trademark SAINT-GOBAIN, registered across the world including:

• International trademark SAINT-GOBAIN n°740184 registered on July 26, 2000;
• International trademark SAINT-GOBAIN n°740183 registered on July 26, 2000;
• International trademark SAINT-GOBAIN n°596735 registered on November 2, 1992; and
• International trademark SAINT-GOBAIN n°551682 registered on July 21, 1989.

The Complainant also owns domain names including its trademark SAINT-GOBAIN, such as the domain name <saint-gobain.com> registered on December 29, 1995.

The Complainant has a website at: www.saint-gobain.com and is a French company which has operated for 350 years in the production, processing and distribution of sustainable materials for the construction and industrial markets. It had around 47.9 billion euros in turnover in 2023 and 160,000 employees. 

The disputed domain name <gobains.com> was registered on December 3, 2024 and resolved to a log in screen using the Complainant’s mark and logo as a masthead.

Complainant

The Complainant contends as follows:

A. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The disputed domain name <gobains.com> is confusingly similar to the Complainant's well-known and distinctive trademark SAINT-GOBAIN. The deletion of the non-dominant term “SAINT” in the trademark and the addition of the letter “S” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark SAINT-GOBAIN.

The addition of the gTLD “.COM” does not change the overall impression of the designation as being connected to Complainant’s trademark. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and its associated domain names.

B. The Respondent has no rights or legitimate interests in respect of the disputed domain name.

According to WIPO Case No. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd., the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP.

The Complainant asserts that the Respondent is not identified in the Whois as the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name. Thus, the Respondent is not commonly known as the disputed domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain name and he is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent.

Neither licence nor authorization has been granted by the Complainant to the Respondent to make any use of the Complainant’s trademark SAINT-GOBAIN, or apply for registration of the disputed domain name.

The disputed domain name resolved to a log in screen using the Complainant’s mark and logo as a masthead. This page could have been used for the purpose of collecting personal information from the Complainant's customers. This use cannot be considered a bona fide offer of services or a legitimate use of domain names, since the website was designed to mislead consumers into believing that they are accessing the Complainant's website.

C. The disputed domain name was registered and is being used in bad faith.

The disputed domain name was created recently. The Complainant was already extensively using its trademark SAINT-GOBAIN across the world well before that date. The Complainant trademark has a well-known character worldwide and has a long-standing worldwide operating website under the <saint-gobain.com> domain name.

Besides, the disputed domain name resolved to a log in screen using the Complainant’s mark and logo as a masthead.

In view of the above evidence, the Respondent obviously knew of the prior rights and extensive use of SAINT-GOBAIN by the Complainant and this is the reason why he registered the litigious domain name.

Therefore, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial purposes, internet users to his website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of his website. In addition, the Respondent may collect personal information through this website, including passwords.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

Respondent

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 disputed domain name is confusingly similar to the Complainant's prior registered trade mark, having omitted only the 'saint' element of the Complainant's mark and a hyphen, and added a letter 's' and the gTLD .com. Deleting one element of the Complainant's mark 'saint' and a hyphen and adding a letter 's' and the gTLD .com does not prevent said confusing similarity and the Complainant's mark is still recognisable in the disputed domain name.

The Respondent is not commonly known by the disputed domain name and is not authorised by the Complainant. Using a disputed domain name for a log in screen with the Complainant's mark and logo as a masthead is deceptive and can be used to collect the personal data of Internet users including passwords. This is not a bona fide offering of goods or services or legitimate non commercial fair use. It is registration and use in bad faith, confusing Internet users for commercial gain and likely phishing purposes and disrupting the Complainant's business.