Anonymized decision for dispute CAC-UDRP-107387

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 has evidenced to be the owner of various trademarks relating to its company name and brand SAINT-GOBAIN, including, but not limited to the following:

• word/device trademark SAINT-GOBAIN, International registration (World Intellectual Property Organization (“WIPO”)), registration No.: 551682, registration date: July 21, 1989, status: active;
• word/device trademark SAINT-GOBAIN, International registration (WIPO), registration No.: 740184, registration date: July 26, 2000, status: active.

Also, the Complainant has substantiated to own since 1995 the domain name <saint-gobain.com>, which resolves to the Complainant’s main website at “www.saint-gobain.com”, used to promote the Complainant’s products and related services in the construction and industrial markets industry worldwide.

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

In turn, no administratively compliant response has been filed. However, informal email correspondence was sent by a third person to the Czech Arbitration Court on the day of the rendering of this decision according to which the named registrant of the disputed domain name apparently was a victim to an identity theft and had nothing to do with the registration and making use of the disputed domain name.   

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. In this context, the Panel has recognized that the Parties uploaded a signed Settlement Agreement on April 14, 2025, when this Decision had already been drawn up, as there had been no previous suspension of this proceeding in accordance with the UDRP Rules; that being, the Panel proceeded to issue this Decision. Also, taking into account that the disputed domain name was most likely registered by a third party without the involvement of the Respondent as the named registrant of the disputed domain name, the Panel has ordered that the Respondent’s name be anonymized before making this Decision available to the public.

First, the Panel finds that the disputed domain name <saint-gobain.lat> is identical to the Complainant’s SAINT-GOBAIN trademark, as it incorporates the latter entirely, with no additions or alterations whatsoever. Also, numerous UDRP panels have recognized that generic or country-code Top-Level domains (such as .lat referring to Latin America) are only required for the functionality of a domain name and, therefore, are usually disregarded under the first element identity/confusing similarity test.

Therefore, the Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).

Second, the Complainant contends, and the Respondent has not objected to these contentions, that the Respondent has neither made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent commonly known under the disputed domain name, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Respondent has not been licensed or otherwise authorized to use the Complainant’s SAINT-GOBAIN trademark, either as a domain name or in any other way.  Also, there is no reason to believe that the Respondent’s name somehow corresponds with the disputed domain name and the Respondent does not appear to have any trademark rights associated with the term “saint-gobain” on its own. Moreoever, the Complainant has demonstrated that, at some point before the filing of this Complaint, the disputed domain name redirected to a standard Pay-Per-Click (PPC) website with hyperlinks in the French language to a variety of third parties’ websites, which were presumably of commercial nature, and some of which directly referred to business in the sustainability sector where the Complainant is engaged, too. UDRP panels have found that the generation of PPC revenues by using a domain name that is identical or confusingly similar to a complainant’s trademark and by providing links that compete with or capitalize on the reputation and goodwill of such trademark neither qualifies as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use under the UDRP. Finally, the Complainant has also evidenced that, while the disputed domain name meanwhile resolves to an error page, MX servers have been activated, possibly for the purpose of sending unauthorized/illegal e-mails under the disputed domain name. Such making use of the disputed domain name, obviously in a fraudulent manner, again neither qualifies as a bona fide nor as a legitimate noncommercial or fair use under the UDRP and may not of itself confer rights or legitimate interests therein.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that, therefore, the Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

Third, the Panel holds that the disputed domain name was registered and is being used by the Respondent in bad faith. Given the circumstances of this case (e.g. from the identical inclusion of the Complainant’s undisputedly well-known SAINT-GOBAIN trademark in the disputed domain name), it is more likely than not that the Respondent was well aware of the Complainant’s business and trademark when registering the disputed domain name, and that the latter is directly targeting such trademark. Therefore, redirecting such identical disputed domain name to a typical PPC website which shows a variety of third parties’ websites, which were presumably of commercial nature, and some of which directly referred to business in the sustainability sector where the Complainant is engaged, too, for the obvious purpose of generating PPC revenues, is a clear indication that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with the Complainant’s well-known SAINT-GOBAIN trademark as to the source, sponsorship, affiliation or endorsement of this website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Moreover, activating MX servers under the disputed domain name at least allows the assumption that the Respondent intends to make use at some point of the disputed domain name in connection with unauthorized e-mail services which, in turn, are inconceivable of being of a good faith nature. Last, the fact that the named registrant of the disputed domain name apparently was a victim to an identity theft and had nothing to do with the registration and making use of the disputed domain name, again allows to conclude that the latter was registered and is being used in bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy.

Therefore, the Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).