Decision for dispute CAC-UDRP-107130

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant owns of several SAINT-GOBAIN trademarks, such as:

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

The Complainant is a French company that designs, manufactures and distributes materials for the construction and industrial markets. It has a presence in 76 countries, a turnover of around 47.9 billion euros in 2023 and 160,000 employees.

The Complainant owns several International trademarks for SAINT-GOBAIN that predate the registration of the disputed domain names. Its portfolio of domain names that incorporate its trademark SAINT-GOBAIN, includes the domain name <saint-gobain.com>, created on 29 December 1995.

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

The disputed domain names were registered by the Respondent on 2 December 2024, using a privacy service. They resolve to parking pages with commercial links.

The Respondent did not file a Response to the Complaint.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it. The Complainant states that the disputed domain names are confusingly similar to its trademark, SAINT-GOBAIN. It contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names and asserts that Respondent has registered and is using the disputed domain names in bad faith.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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 names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are 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.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the disputed domain names; and

(iii) the disputed domain names have been registered and used in bad faith.

 A. Identical or confusingly similar

The disputed domain names incorporate the Complainant’s registered trademark in full. The addition of the geographical term “north america” to the Complainant’s trademark is not sufficient to escape the finding that the disputed domain names are confusingly similar to the Complainant’s trademark.

The generic top level suffix, ".com", and ".pro" may be disregarded when considering whether a disputed domain name is confusingly similar to the Complainant’s trademark. See WIPO Case No. D2006-0451, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.

The Panel concludes that the disputed domain names are confusingly similar to the Complainant's trademark and that the requirements of Paragraph 4(a)(i) of the Policy have been met.

 B. No rights or legitimate interest

The Complainant asserts that the Respondent is not identified in the Whois database as the disputed domain names. The Complainant states the Respondent is not related in any way with the Complainant and does not carry out any activity for, nor has any business with the Complainant. Nor is the Respondent licenced or authorised to use the Complainant’s trademark SAINT-GOBAIN, or apply for registration of the disputed domain names. Evidence submitted with the Complaint shows that the disputed domain names resolve to parking pages with commercial links.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of proof now shifts to the Respondent (see WIPO Case No. D2003-0455 Croatia Airlines d. d. v. Modern Empire Internet Ltd).

The Respondent has not filed a Response nor disputed any of the Complainant's submissions. There is nothing to indicate that the is Respondent is commonly known by the disputed domain names. The Respondent is not authorised to use the Complainant's trademark and there is nothing to indicate that that the Respondent has any relevant prior rights. Using the disputed domain names in connection with parking pages with commercial links is not a bona fide offering of goods or services, nor legitimate non-commercial or fair use.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirements of paragraph 4(a)(ii) of the Policy have been met.

C. Registered and used in bad faith

The Respondent has used a privacy service to register the disputed domain names that are confusingly similar to the Complainant’s longstanding trademark, SAINT-GOBAIN.

The Panel accepts that given the distinctiveness of the Complainant's trademark and reputation it is reasonable to infer that the Respondent registered the disputed domain names with full knowledge of the Complainant's trademark. The disputed domain names resolve to parking pages with commercial links. The most obvious reason for the Respondent to do so, is to create a likelihood of confusion with the Complainant's trademark as to the source, affiliation, or endorsement of the Respondent's website to which the disputed domain names resolve.

The Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy have been met.