Decision for dispute CAC-UDRP-107740

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, including

International trademark SAINT-GOBAIN (figurative), registration n°551682 registered on July 21, 1989 for goods and services in Nice classification 1, 6, 7, 9, 11, 12, 16, 17, 19, 20, 21, 22, 23, 24, 37, 39, and 41;

International trademark SAINT-GOBAIN (figurative), registration n°596735 registered on November 2, 1992 for goods and services in Nice classification for goods in Nice classification 1, 2, 3, 6, 9, 11, 12, 16, 17, 19, 20, 21, 22, 23, 24;

International trademark SAINT-GOBAIN (figurative), registration n°740183 registered on July 26, 2000 for goods and services in Nice classification 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, and 42;

International trademark SAINT-GOBAIN (figurative), registration n°740184 registered on July 26, 2000, for goods and services in Nice classification 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, and 42.

The Complainant is the owner of the portfolio of trademark registrations described above and uses the SAINT-GOBAIN mark extensively in its business producing, processing and distributing materials for the construction and industrial markets.

The Complainant has an established Internet presence and maintains its business website at www.saint-gobain.com.

The disputed domain name was registered on July 7, 2025. It resolves to a website that has no connection with the Complainant and MX servers have been configured to allow the creation of email accounts.

There is no information available about the Respondent except for that provided in the Complaint and the response of the Registrar to the request by the Center for details of the registration of the disputed domain name for the purposes of this proceeding.

Complainant

The Complainant claims rights in the SAINT-GOBAIN mark based on its ownership of the trademark and service mark registrations set out above and extensive use of the mark in its business producing processing and distributing materials for the construction and industrial markets.

The Complainant submits that since it was founded 350 years ago, the Complainant has grown to become one of the top industrial groups in the world with around 46.6 billion euros in turnover in 2024, established in 80 countries, with 161,000 employees.

The Complainant has an established Internet presence and maintains a website at www.saint-gobain.com also owns many domain names including its trademark SAINT-GOBAIN, such as the domain name <saint-gobain.com> registered on December 29, 1995.

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

The Complainant firstly alleges that the disputed domain name <saiht-gobain.com> is identical or confusingly similar to the SAINT-GOBAIN mark in which the Complainant has rights.

It is submitted that the substitution of the letter “n” by the letter “h” in the trademark SAINT-GOBAIN is not sufficient to escape the finding that the domain name is confusingly similar to the Complainant’s mark.

It is argued that this is a clear case of typosquatting, i.e. the disputed domain name contains an obvious misspelling of the Complainant’s trademark, and Complainant submits that it is well-established that the slight spelling variations does not prevent a disputed domain name from being confusingly similar to the Complainant’s trademark.

In this regard Complainant refers to the WIPO Jurisprudential Overview 3.0, at 1.9 (“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”).

The Complainant adds that the addition of the generic Top-Level Domain (“gTLD”) extension <.com> does not change the overall impression of the designation as being connected to the Complainant’s trademark. The WIPO Jurisprudential Overview 3.0, at 1.1 (“The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).

The Complainant secondly alleges that the Respondent has no rights or legitimate interests in the disputed domain name, arguing that according to the decision in  Croatia Airlines d .d. v. Modern Empire Internet Ltd., WIPO Case D2003-0455, a 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 Policy.

The Complainant asserts that the Respondent is not identified in the published Whois as the disputed domain name, and panels established under the Policy 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 known as the disputed domain name.

In this regard the Complainant refers as an example to the decision in Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group Forum Claim FA 1781783, (“Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).

The Complainant further submits that the Respondent is not related in any way with the Complainant, nor does the Complainant carry out any activity for, or have any business with the Respondent.

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

The Complainant further alleges that the disputed domain name is a typosquatted version of the trademark SAINT-GOBAIN, adding that typosquatting is the practice of registering a domain name in an attempt to take advantage of Internet users’ typographical errors and can be evidence that a respondent lacks rights and legitimate interests in a domain name at issue.

In this regard the Complainant refers to the decision in The Hackett Group, Inc. v. Brian Herns / The Hackett Group Forum Claim FA1597465, (“The Panel agrees that typosquatting is occurring and finds this is additional evidence that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii).”).

The Complainant refers to a screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint and submits that it illustrates that the disputed domain name points to the website of a named communication agency.

The Complainant argues that such use fails to confer rights and legitimate interests, as it is used to promote unrelated services. In this regard the Complainant refers to the decision of the panel in Baylor University v. Pan Pan Chen / Chen Pan Pan Forum Claim FA1808541, (“Complainant argues that Respondent uses the disputed domain name to offer services completely unrelated to those offered by Complainant. Using a confusingly similar domain to promote unrelated services can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use.”).

Thirdly the Complainant argues that the disputed domain name was registered and is being used in bad faith.

The Complainant submits that the disputed domain name which is confusingly similar to the Complainant's well-known trademark SAINT- GOBAIN was created recently on July 7, 2025; that the disputed domain name is confusingly similar to the Complainant's well-known trademark SAINT- GOBAIN; and the Complainant was already extensively using his trademark SAINT-GOBAIN worldwide well before that date.

It is further argued that the Complainant’s SAINT-GOBAIN trademark is well-known with a long-standing goodwill and reputation worldwide operating its website at <www.saint-gobain.com>, citing the decision of the panel in Compagnie de Saint-Gobain v. On behalf of saint- gobain-recherche.net owner, Whois Privacy Service / Grigore PODAC WIPO Case No. D2020-3549, (“The Panel is satisfied that the Complainant is a well-established company which operates since decades worldwide under the trademark SAINT-GOBAIN.”).

In view of the above evidence, the Complainant argues that the Respondent was obviously aware of the Complainant’s prior rights and wide use of SAINT- GOBAIN; and the similarity with the Complainant’s mark was the only reason for the Respondent to register the disputed domain name.

Furthermore, it is alleged that the misspelling of the SAINT-GOBAIN mark in the disputed domain name was intentionally designed to create a confusingly similar trademark. The Complainant refers to the decisions of previous panels established under the Policy which held that typosquatting constitutes bad faith under the Policy, including Microsoft Corporation v. Domain Registration Philippines Forum Claim FA 877979, ("In addition, Respondent’s misspelling of Complainant’s MICROSOFT mark in the <microssoft.com> domain name indicates that Respondent is typosquatting, which is a further indication of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).")

Moreover, because the disputed domain name redirects to the website of a named communication agency, the Complainant contends that the Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of Complainant. Respondent is obtaining commercial gain from its use of the disputed domain name and the resolving website.

Finally, the Complainant asserts that the disputed domain name has been set up with MX records which suggests that it may be actively used for email purposes. The Complainant argues that such use is also indicative of bad faith registration and use because any email emanating from the disputed domain name could not be used for any good faith purpose. Please see for instance JCDECAUX SA v. Handi Hariyono CAC Case No. 102827, (“There is no present use of the disputed domain name but there are several active MX records connected to the disputed domain name. It is concluded that it is inconceivable that the Respondent will be able to make any good faith use of the disputed domain name as part of an e-mail address.”).

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 Complainant has provided uncontested convincing evidence of its rights in the SAINT-GOBAIN trademark and service mark established by its the ownership of the abovementioned portfolio of international trademark registrations and extensive use of the mark in its business producing processing and distributing materials for the construction and industrial markets.

The disputed domain name <saiht-gobain.com> is composed of Complainant’s mark in its entirety albeit with the letter “h” inserted in place of the letter “n” in the element SAINT, together with the Top-Level Domain (“ gTLD”) extension <.com>.

It is well established that it is sufficient for a complainant to establish that the domain name at issue contains the mark relied upon in its entirety, to satisfy the first element of the test in Policy ¶ 4(a)(i).

In the circumstances of this Complaint substitution of the letter “h” for the letter “n” in the first element of the Complainant’s mark would not be noticed by many Internet users because of the similarity of the two letters. The similarity of the disputed domain name and the Complainant’s mark even extends to the inclusion of the hyphen between the two words that constitute the mark and the disputed domain name.

The gTLD extension <.com> within the disputed domain name may be ignored for the purposes of comparing the mark and the disputed domain name, because it would be considered by Internet users to be a necessary technical element for a domain name.

This Panel finds therefore that the disputed domain name is confusingly similar to, and almost identical to. the SAINT-GOBAIN mark in which the Complainant has rights and the Complainant has therefore succeeded in the first element of the test in Policy paragraph 4(a)(i).

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names as set out in Complainant’s detailed submissions above.

There is no evidence of any bona fide use of the disputed domain name by the Respondent, and the Respondent is using the disputed domain name to divert Internet users away from the Complainant’s own website. There is also a concern that the Respondent has used the disputed domain name to create an MX server to facilitate the creation of an email account.

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

The Respondent has failed to discharge that burden and therefore this Panel must find that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has therefore succeeded in the second element of the test in Policy paragraph 4(a)(ii).

The Complainant’s registered service mark rights in the SAINT-GOBAIN mark long predate the registration of the disputed domain name on July 7, 2025. The earliest trademark registration relied upon by the Complainant was registered on July 21, 1989

SAINT-GOBAIN is a distinctive mark and it is improbable that the registrant of the disputed domain name was unaware of the Complainant, when the disputed domain name was chosen and registered particularly because the Complainant had registered the domain name <saint-gobain.com> on December 29, 1995 and uses it as its business website at www.saint-gobain.com.

There appears to be therefore no plausible reason for registering the disputed domain name other than to create an association with the Complainant and its SAINT-GOBAIN mark.

Also, the Complainant’s registered trademark SAINT-GOBAIN mark is clearly recognizable within the disputed domain name, as they are almost identical, even to having a hyphen in the same place, notwithstanding that the registrant of the disputed domain name replaced the letter “n” with the letter “h”. In the circumstances of this case the Panel finds that the registrant of the disputed domain name intentionally chose to register the disputed domain name as a misspelling of the Complainant’s mark, and that in using the disputed domain name the Respondent is engaged in an act of typosquatting which constitutes bad faith for the purposes of the Policy.

On the balance of probabilities, therefore, this Panel finds that the disputed domain name was in fact chosen and registered in bad faith with Complainant’s mark in mind with the intention of taking predatory advantage of Complainant’s rights and goodwill in the SAINT-GOBAIN mark.

Furthermore the uncontested evidence in the form of the screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint shows that Respondent has caused, permitted or allowed the disputed domain name to resolve to a website that purports to be maintained by a brand consultancy agency.

The Respondent’s website is very basic. It contains no details of the brand consultancy but contains a form for Internet users to contact the Respondent giving their name, email address and a message.

The Panel is not satisfied that the website to which the disputed domain name resolves is bona fide. It is most improbable that a genuine firm brand consultants would have such a basic website. In these circumstances, the Panel has decided not to name the firm, because on the balance of probabilities if it exists, it has no connection with the Complainant, the Respondent or the disputed domain name.

It would have been helpful if the Complainant had taken the extra step to carry out some investigation of the bona fides of the resolving website.

Nonetheless, based on the submissions of the Complainant and the evidence adduced it is not necessary for this Panel to determine the status of the website to which the disputed domain name resolves, because the Respondent is using the disputed domain name to confuse Internet users, who may be seeking Complainant’s website, and diverting their Internet traffic away from Complainant’s genuine website.

Such confusion of Internet users, and interception and misdirection of Internet traffic constitutes use in bad faith for the purposes of the Policy.

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii).