Decision for dispute CAC-UDRP-107976

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 relies on its several registered trademarks, in territories around the world, including but not limited to the following:

Further, the Complainant operates its business using its domain name <saint-gobain.com> which was registered December 29, 1995.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

Key aspects of the Complainant’s contentions are summarized below.

Complainant’s Background

The Complainant is a French company specialized in the production, processing and distribution of materials for the construction and industrial markets. In 2024, the Complainant’s turnover was 46.6 billion euros, with a headcount of 161,000 employees.

Registration of the disputed domain name

On September 16, 2025, the Respondent using the name “Pilar Sanchez” from the organization “saint-gobaines” - located in New York, United States - registered the disputed domain name <saint-gobaines.com>.

First UDRP Element - disputed domain name is Confusingly Similar to the Complainant’s Trademark

The Complainant asserts that the disputed domain name is confusingly similar to its distinctive SAINT-GOBAIN trademarks, as it includes mark merely with the addition of the geographic term for Spain, “ES”.  Confusion is likely because the denomination SAINT-GOBAIN ES directly refers to SAINT-GOBAIN ESPANA, the Complainant’s Spanish subsidiary.

Furthermore, the Complainant contends that the addition of the gTLD “.COM” does not change the overall impression of the designation as being connected to the Complainant’s trademark.

Second UDRP Element – The Respondent has no Rights or Legitimate Interests in the disputed domain name

The Complainant asserts that the Respondent is not known as the disputed domain name. The Respondent is identified in the Whois database as “saint-gobaines”, located "new york new york Alabama 10025 United-States" which is either a false or an incomplete postal address. Further, the inclusion of the term “saint-gobaines" in the whois reinforces the risk of confusion, which is evidence of lack of legitimate interest.

Further, the Respondent is not a licensee, authorized agent, or related in any way to the Complainant, nor is authorized in any way to use the Complainant’s trademarks or to register or use the disputed domain name.

The Complainant claims there is no evidence of demonstrable preparations to use nor actual use of the disputed domain name in connection with a bona fide offering of goods or services. Rather, the disputed domain name resolves to a parking page.

Third UDRP Element – The disputed domain name was Registered and is Being Used in Bad Faith

The Complainant asserts that its SAINT-GOBAIN trademark is distinctive and widely known and extensively used long before the disputed domain name was registered in 2025.

Additionally, the addition of the country code “ES” to the trademark SAINT-GOBAIN cannot be coincidental, as it directly refers to SAINT-GOBAIN ESPANA. Further, all the results of a Google search for the term “SAINT-GOBAIN ES” refers to the Complainant

Lastly, the disputed domain name resolves to a parking page and the Complainant claims it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

The above summarized facts and arguments asserted by the Complainant are not contested by the Respondent because no Response was filed.

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.

LANGUAGE OF PROCEEDING

According to Rule 11 in the Rules for Uniform Domain Name Dispute Resolution Policy, (the “Rules”) “...the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

According to the information on the case file, the Registrar confirmed that the Respondent is the current registrant of the disputed domain name, and that the language of the registration agreement is English.

As neither party has asked to deviate from the English language as per the registration agreements, the Panel finds that this proceeding may be properly conducted in English.

PRINCIPAL REASONS FOR THE DECISION

THREE ELEMENTS THE COMPLAINANT MUST ESTABLISH UNDER THE POLICY

According to Paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to obtain an order that a disputed domain name should be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

The Panel has examined the evidence available to it and has come to the following conclusions concerning the satisfaction of the three elements of paragraph 4(a) of the Policy in these proceedings:

(A) THE COMPLAINANT’S RIGHTS AND CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT’S RIGHTS

Sufficient evidence has been submitted by the Complainant of its trademark rights in the term SAINT-GOBAIN in numerous classes and territories around the world. Such trademark rights were created and registered decades prior to September 16, 2025, the creation date of the disputed domain name. A nationally or regionally registered trademark confers on its owner sufficient rights to satisfy the requirement of having trademark rights for the purposes of standing to file a UDRP case. Accordingly, the Panel finds that the Complainant possesses rights in its SAINT-GOBAIN trademark such that it has standing under the Policy.

UDRP panels have held that where the disputed domain name is includes a trademark in full along with a geographic term it may be considered to be confusingly similar. In the present case, the disputed domain name consists of the SAINT-GOBAIN trademark reproduced in its entirety with the addition of the geographical term “ES”, meaning Spain. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark SAINT-GOBAIN under a side by-side analysis because it includes all the same letters and the hyphen along with the addition of a relevant geographic term and otherwise follows a similar orthographic and phonetic pattern. See paragraph 1.8 of WIPO Overview 3.0 stating “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

The TLD may usually be ignored for the purpose of determination of identity or confusing similarity between a domain name and the Complainant’s trademark as it is technical requirement of registration; see, for example, section 1.11.1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (”WIPO Overview 3.0”), (“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”).

Accordingly, the Panel concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy, and the disputed domain name is confusingly similar to the Complainant’s mark.

(B) THE RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN THE DISPUTED DOMAIN NAME

The second element of the Policy requires that the Complainant establishes that the Respondent has no rights or legitimate interests in the disputed domain name. The generally adopted approach, when considering the second element, is that if a complainant makes out a prima facie case, the burden of proof shifts to the respondent to rebut it; see, for example, section 2.1, WIPO Overview 3.0, (“While 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 often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”). However, the burden of proof still remains with the complainant to make out its prima facie case on a balance of probabilities. Moreover, the wording of paragraph 4(a)(ii) of the Policy requires a complainant to establish that the respondent has no rights or legitimate interests in the domain name in issue. Simply establishing that the complainant also has rights in the domain name in issue is insufficient.

Paragraph 4(a)(ii) of the Policy contemplates an examination of the available facts to determine whether a respondent has rights or legitimate interest in the domain name. Paragraph 4(c) sets out a list of circumstances through which a respondent may demonstrate that it does have such rights or interests.

The first circumstance, under Paragraph 4(c)(i), is where “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”. Here, according to screenshot evidence submitted by the Complainant, the disputed domain name is merely being used for a parking page. Accordingly, the Panel finds no evidence of a bona fide offering or goods or services or demonstrable preparations to use per Policy 4(c)(i) and Respondent does not have rights or legitimate interests with respect of the domain name thereunder.

The second circumstance, under Paragraph 4(c)(ii), concerns cases where the respondent is commonly known by the domain name. Here, according to the registrar verification, the Respondent name is “Pilar Sanchez”, from the organization “saint-gobaines”. Although the organization name aligns with the disputed domain name, the Panel is not persuaded that this represents a genuine organization or identity. The dubious nature of the Respondent’s identity is emphasized because the disputed domain name is registered using a false address, referring to a 10025 postcode (which is in New York) yet claiming to be located in Alabama. Accordingly, the Panel finds no credible evidence that the Respondent is commonly known by the disputed domain name. As such, this second circumstance of legitimate rights or interests under the Policy is not applicable to the Respondent.

Regarding the third circumstance, under Paragraph 4(c)(iii) of the Policy, there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s SAINT-GOBAIN trademark. According to the screenshot as submitted showing the disputed domain name is merely used for a parking page, none of the accepted categories of fair use - such as news reporting, commentary, political speech, education etc – are found to apply and the Panel concludes there is no legitimate non-commercial or fair use on the part of the Respondent.

Lastly, the Complaint confirms that the Respondent is not licensed, nor has any relationship with or authority to represent the Complainant in any way.

Accordingly, the Complainant has sufficiently made out its prima-facie case on the second element of the Policy. Thus, the burden of proof is shifted to the Respondent to rebut the Complainant’s case. Here, because the Respondent has not participated in these proceedings, there is no such rebuttal to consider, and the Complainant prevails.

The Panel therefore concludes that neither the Respondent nor the evidence establishes that the Respondent has any right or legitimate interest to the disputed domain name. The Complainant has therefore also satisfied the requirement under paragraph 4(a)(ii) of the Policy.

(C) BAD FAITH REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME

The third element requires the Complainant to show that the disputed domain name has been registered and used in bad faith under paragraph 4(a)(iii) of the Policy. Further, Paragraph 4(b) of the Policy sets out a non-exhaustive list of four circumstances, any one of which may be evidence of the registration and use of a domain name in bad faith. The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.

The Panel finds that the Complainant has shown that the Respondent registered and used the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy for the reasons as set out below.

The Complainant’s SAINT-GOBAIN trademark is distinctive and enjoys considerable reputation within the building and construction materials industry. Such reputation is shown by the substantial size and reach of the Complainant’s business – in 2024 the Complainant’s turnover was 46.6 billion euros, with a headcount of some 161,000 employees around the world. A previous UDRP panel confirmed the notoriety of the Complainant, see WIPO Case No. D2020-3549, Compagnie de Saint-Gobain v. On behalf of saint-gobain-recherche.net owner, Whois Privacy Service / Grigore PODAC (“The Panel is satisfied that the Complainant is a well-established company which operates since decades worldwide under the trademark SAINT-GOBAIN. Consequently, the Respondent knew or should have known of the Complainant’s trademarks and deliberately registered the disputed domain name”). The same logic applies in the instant case, and this Panel finds that because of the well-established status of the Complainant, it is more probable than not that the Respondent either knew, or should have known, that the disputed domain name would be confusingly similar to the Complainant's trademarks and thus they registered the disputed domain name with the Complainant in mind. The disputed domain name comprises the Complainant’s distinctive SAINT-GOBAIN mark, with the use of the geographic term “ES”, meaning Spain. In this case the disputed domain name retains orthographic and phonetic similarities to the Complainant’s distinctive and well-known trademark.

According to the screenshots submitted in evidence, the disputed domain name is used for a parking page. In this case, because of use of the aforementioned inclusion of a relevant geographic term, the Panel finds it is impossible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.

Passive holding of a domain does not preclude a finding of bad faith under paragraph 3.3 of WIPO Overview 3.0, as confirmed in numerous prior decisions, including WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows (“In light of these particular circumstances, the Administrative Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name 'is being used in bad faith' by Respondent”). The totality of circumstances here further supports a finding of bad faith, as the Respondent meets all relevant conditions:

1. i) the Complainant’s mark is highly distinctive;
2. ii) the Respondent did not submit a response;

iii) the Respondent concealed their identity and provided false contact details;

1. iv) any good faith use of the domain appears implausible.

As a final point, the Panel may draw a negative inference from the Respondent’s silence though these proceedings.

In light of the above analysis, the Panel concludes that the Complainant has made out its case that the disputed domain name was registered and are being used in bad faith and thus has satisfied the requirements under paragraph 4(a)(iii) of the Policy.