Decision for dispute CAC-UDRP-107243

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 several trademarks SAINT-GOBAIN, registered worldwide, including the international word mark SAINT-GOBAIN with registration number 740183, registered on July 26, 2000 for goods and services in classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, and 42, designating many jurisdictions including Japan, Türkiye and the Unites States of America.

The Complainant is a French company specialized in the production, processing and distribution of materials for the construction and industrial markets, with a global turnover of around 47.9 billion euros in 2023 and 160,000 employees.  The Complainant owns many domain names which include its trademark SAINT-GOBAIN, such as the domain name <saint-gobain.com> which was registered on December 29, 1995.

The Respondent registered the disputed domain name on January 8, 2025. The disputed domain name resolves to an error page and has MX servers configured.

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 Respondent did not reply to the Complainant’s contentions. However, the consensus view of UDRP panels is that the Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.

The Panel finds that the disputed domain name is confusingly similar to the SAINT-GOBAIN trademark identified above, as the disputed domain name contains the trademark in its entirety, with the addition of the letter “e” after the elements “saint” and “gobain”, which is insignificant to the overall impression.

The Complainant has contended that the Respondent has neither licensed or authorized the Respondent to register or use the disputed domain name nor is the Respondent identified in the Whois database as the disputed domain name. The Complainant also claims that the disputed domain name is a typosquatted version of the trademark. The Panel finds that the composition of the disputed domain name – which overall impression is after all very similar to the Complainant’s SAINT-GOBAIN trademark – leads to an inference of connection with the Complainant, and that the Complainant has made out a prima facie case, calling for an answer from the Respondent. The Respondent has, however, not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the purportedly intentionally confusingly similar disputed domain name. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Many previous panels have found the SAINT-GOBAIN trademark to be well-known (e.g., Compagnie De Saint-Gobain v. Zhao Zhong Xian, WIPO Case No. D2016-2120; Compagnie de Saint-Gobain v. On behalf of saint-gobain-recherche.net owner, Whois Privacy Service / Grigore PODAC, WIPO Case No. D2020-3549; Compagnie de Saint-Gobain v. Ayache Mohammed, WIPO Case No. D2021-3633; and Compagnie de Saint-Gobain v. Tony Schreffler, CAC-UDRP-105963), and the Panel in the current dispute has no reason to doubt such finding of the SAINT-GOBAIN trademark being well-known, despite the Complainant’s failure to submit any proof of its allegation of the trademark’s fame as this allegation has not been disputed by the Respondent.  Although the panel in Compagnie de Saint-Gobain v.John Persel, CAC-UDRP-107227 came to a different conclusion in a comparable dispute, the Panel in the current procedure is of the opinion that it must consider as true an allegation of the Complainant that does not appear to be incorrect at first glance and which is furthermore supported by the findings in a number of other decisions within the framework of the UDRP, in the absence of rebuttal by the Respondent. The fact that the Respondent has included the SAINT-GOBAIN trademark in its entirety, with an addition of an “e” after the elements “saint” and “gobain” is likely an intentional typographical error, from which the Panel infers that the Respondent must have been aware of the SAINT-GOBAIN trademark when registering the disputed domain name. Furthermore, shortly before the registration of the disputed domain name, the same Respondent registered the domain name <sainte-gobain.com>, which registration was found to be in bad faith (Compagnie de Saint-Gobain v. ujj bbv, CAC-UDRP-107059). The Panel is therefore satisfied that the disputed domain name was registered in bad faith.

The Complainant must also prove that the Respondent uses the disputed domain name in bad faith. Under the circumstances at hand, the Panel finds that the passive holding of the disputed domain name constitutes use in bad faith. Section 3.3 of the WIPO Overview 3.0 states the following on this issue: “From the inception of the UDRP, panels have found that the non-use of a domain name (..) would not prevent a finding of bad faith under the doctrine of passive holding. While panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” In this case, the Panel concludes that the following cumulative circumstances are indicative of the Respondent’s passive holding of the disputed domain name in bad faith:

1. the fact that the SAINT-GOBAIN mark is well-known, and that the Respondent is found to have likely had the SAINT-GOBAIN trademark in mind when it registered the disputed domain name;
2. the fact that the Respondent was found to have registered a domain name which incorporates the Complainant's SAINT-GOBAIN trademark in bad faith in Compagnie de Saint-Gobain v. ujj bbv, CAC-UDRP-107059, which was published less than three weeks before the Respondent registered the nearly identical disputed domain name; 
3. the Respondent’s concealing its identity and its use of false contact details.  According to the case file, the Center "was not able to send the written notice to the Respondent as the address provided by the Registrar in Registrar verification: «CALIFORNIA, CALIFORNIA,CALIFORNIA California, United States 00501» does not exist. The postal service provider was not able to deliver a written notice to such address. No other address for correspondence was found on the disputed domain name"; and
4. the lack of a Response in the current procedure.

Therefore, the disputed domain name is to be transferred to the Complainant.