Decision for dispute CAC-UDRP-107412

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 holds a number of trademark registrations for or containing “SAINT-GOBAIN” around the globe, including:

• International Trademark Registration No. 551682 for the mark SAINT-GOBAIN in Classes 1, 6, 7, 9, 11, 12, 16, 17, 19, 20, 21, 22, 23, 24, 37, 39, 41 registered on July 21, 1989, 

• International Trademark Registration No. 740183 for the mark SAINT-GOBAIN in Classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, 42 registered on July 26, 2000.

The Complainant is a company incorporated in France.  Founded 350 years ago, it has become a leading company specialized in the field of construction and industrial markets, operating worldwide and employing nearly 161,000 people with its EUR 46.6 billion turnover in 2024.

Saint-Gobain is a worldwide reference in sustainable habitat and construction markets. It takes a long- term view in order to develop products and services for its customers that facilitate sustainable construction. In this way, it designs innovative, high-performance solutions that improve habitat and everyday life. 

The Complainant is the owner of many domain names, one of which is <saint-gobain.com> registered on December 29, 1995, which resolves to the Complainant’s main website.

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

The disputed domain name <santgobain.com> was registered on March 13, 2025 resolves to an inactive page.

The parties engaged in settlement negotiations in an attempt to resolve the dispute amicably; however, these efforts were ultimately unsuccessful. Subsequently, the Complainant confirmed via email that he does not wish to pursue further negotiations and formally requested that the Panel proceed to issue a Decision in the matter.

The Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.  

Notably, the Complainant contends that:

(a) The disputed domain name is confusingly similar to the Complainant’s trademark.  The Complainant’s trademark is reproduced in its entirety.  The deletion of the letter “I” in the trademark SAINT-GOBAIN is not sufficient to escape the finding that the domain name is confusingly similar to the Complainant’s trademark. The addition of the gTLD “.COM” does not change the overall impression of the designation as being connected to the Complainant’s trademark.

(b) The Respondent has no rights or legitimate interests in the disputed domain name.  The Respondent has not obtained any authorization from the Complainant to use the Complainant’s trademark as part of a disputed domain name or otherwise.  The Respondent is not known by the disputed domain name.  Moreover, the disputed domain name is not being used in relation to a bona fide offering of goods or services and the Respondent is not making legitimate or fair use of the disputed domain name.  The disputed domain name resolves to an inactive page.  The Respondent did not make any use of disputed domain name since its registration, and it confirms that the Respondent has no demonstrable plan to use it.  It demonstrates a lack of legitimate interests in respect of the disputed domain name.

(c) Both the Respondent’s registration and use of the disputed domain name establish the Respondent’s bad faith.  Given the history of the SAINT-GOBAIN brand and reputation that the Complainant has acquired in the Complainant’s trademark, the Respondent obviously knew the prior rights and wide use of SAINT-GOBAIN by the Complainant.  The disputed domain name resolves to a page with no activity and amounts to passive holding, which evidences bad faith registration and use.

The Complainant requests transfer of the disputed domain name.

The Respondent

The Respondent did not submit official response to the Complainant’s contentions.

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 burden for the Complainant under paragraph 4(a) of the Policy is to prove:

1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights;

2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3) that the disputed domain name has been registered and is being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

Moreover, the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the consensus views captured therein.

Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement.  The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.  WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of its SAINT-GOBAIN trademark for the purposes of the Policy.  WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the mark is reproduced within the disputed domain name.  Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.  WIPO Overview 3.0, section 1.7.  

The omission of the letter “i” and a hyphen is not sufficient to escape the finding that the disputed domain name is confusingly similar to the Complainant’s trademark SAINT-GOBAIN.

The addition of the gTLD “.com” is not taken into account, as it is a standard requirement.

Based on the available record, the Panel finds the first element of the Policy has been established. 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.  As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant).  If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.  WIPO Overview 3.0, section 2.1.

Upon review of the available record, the Panel concludes that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut this showing or provide any evidence demonstrating rights or legitimate interests as contemplated under the Policy or otherwise.

The Panel observes that the Respondent is not commonly known by the disputed domain name, whereas the Complainant holds prior trademark rights that predate the Respondent’s domain name registration by several years.

Additionally, the Respondent is not affiliated with the Complainant and has not been authorized to register or use the disputed domain name. There is no evidence that the Complainant has licensed or otherwise permitted the Respondent to use its trademarks or any domain name incorporating them.

The Panel finds that this is a typical case of typosquatting, which further supports the conclusion that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.

Moreover, there is no indication that the Respondent is engaged in any bona fide business or legitimate noncommercial activity associated with the disputed domain name. The domain currently resolves to an inactive website, and there is no evidence of any demonstrable preparations to use it in connection with a bona fide offering of goods or services.

Accordingly, the Panel finds that the second element of the Policy has been satisfied.

Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. 

In the present case, the Complainant notes that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks, and the Panel agrees.  The term “santgobain” has no apparent existence or meaning except as a reference to the Complainant’s SAINT-GOBAIN trademark and its services.  Therefore, the Panel believes that the disputed domain name to be connected with such a well-known trademark but used by someone with no connection with the Complainant suggests opportunistic bad faith.

Prior 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.  Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding.  Although 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, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement).  WIPO Overview 3.0, section 3.3.  Having reviewed the available record, the Panel notes the reputation of the Complainant’s trademark and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

The Respondent has not participated in these proceedings and has failed to rebut the Complainant’s contentions and to provide any evidence of actual or contemplated good-faith use and indeed none would seem plausible. 

Based on the available record, the Panel finds that the Complainant has established the third element of the Policy.