Decision for dispute CAC-UDRP-108029

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 a number of trademark registrations for SAINT-GOBAIN (the “SAINT-GOBAIN trademark”), including the following representative registrations:

− the International trademark SAINT-GOBAIN (combined) with registration No. 551682, registered on 21 July 1989 for goods and services in International Classes 1, 6, 7, 9, 11, 12, 16, 17, 19, 20, 21, 22, 23, 24, 37 and 39; and

− the International trademark SAINT-GOBAIN (word) with registration No. 740183, registered on 26 July 2000 for goods and services in International Classes 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 a French multinational company specialized in the production, processing and distribution of materials for the construction and industrial markets. It is active in 80 countries and and has more than 161 000 employees. The Complainant’s turnover for 2024 was EUR 46.6 billion.

The Complainant operates its official website at the domain name <saint-gobain.com> registered on 29 December 1995.

The disputed domain name was registered on 23 September 2025. It is currently inactive. At the time of the filing of the Complaint, the disputed domain name resolved to a parking webpage with the text:

“Welcome

www.saint-gobain-cz.com

Do more with your domain!”

The disputed domain name has mail exchanger (“MX”) settings configured.

COMPLAINANT

The Complainant submits that the disputed domain name is confusingly similar to the SAINT-GOBAIN trademark, because it wholly incorporates this trademark with the addition of the element “cz”, which is the two-letter country code for the Czech Republic. The Complainant notes that the addition of the Top-Level Domain “.com” does not change the overall impression of the disputed domain name as being connected to the Complainant’s trademark. According to the Complainant, the addition of these elements is not sufficient to prevent the likelihood of confusion between the disputed domain name and the Complainant’s trademark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It maintains that the Respondent is not related to the Complainant and has not been authorized by the Complainant to use the SAINT-GOBAIN trademark or to register the disputed domain name, that the Parties do not carry out any business with each other, and that the Respondent has registered the disputed domain name with the intent to cause confusion.

The Complainant adds that the disputed domain name has not been actively used, as it resolves to a parking page, and submits that the Respondent has no demonstrable plan to use the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. It notes that the disputed domain name was created only recently, while the Complainant has extensively used its SAINT-GOBAIN trademark worldwide for many years. According to the Complainant, the Respondent was well aware of the SAINT-GOBAIN trademark when he registered the disputed domain name.

The Complainant states that the disputed domain name has been set up with MX records which suggests that it may be actively used for email purposes. According to the Complainant, it is not possible to conceive of any plausible actual or contemplated active use of the disputed 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.

RESPONDENT:

The Respondent did not submit a Response in this proceeding.

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.

Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:

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

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

(iii) the domain name was registered and is being used in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contentions of the Complainant and the evidence submitted by it.

Identical or confusingly similar

The Complainant has provided evidence and has thus established its rights in the SAINT-GOBAIN trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the sequence “saint-gobain-cz”, which includes the SAINT-GOBAIN trademark, which is easily recognizable in it, and the element “cz”, which, as noted by the Complainant, is the country code for the Czech Republic. As discussed in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), 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.

Taking the above into account, the Panel finds that the disputed domain name is confusingly similar to the SAINT-GOBAIN trademark in which the Complainant has rights.

Rights and legitimate interests

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.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because it is not affiliated with the Complainant or authorized by the same to use its trademark, and has no business with the Complainant. The Complainant adds that the disputed domain name is inactive, but has MX settings enabled and may be used for phishing purposes. The Complainant has thus established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has not submitted a Response and has not provided any plausible explanation of the reasons why it has registered the disputed domain name and how it intends to use it.

In the Panel’s view, the circumstances of this case do not support a finding that the Respondent has rights and legitimate interests in the disputed domain name. It is confusingly similar to the distinctive SAINT-GOBAIN trademark and has MX settings enabled. If Internet users receive communications from an email address at the disputed domain name, they may well believe that these communications originate from the Complainant or from its affiliate in the Czech Republic, while in fact there is no relationship between the Parties.

In the absence of any arguments or evidence to the contrary, the above leads the Panel to the conclusion that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s SAINT-GOBAIN trademark, has registered the disputed domain name targeting this trademark in an attempt to exploit its goodwill. The Panel does not regard such potential use of the disputed domain name as giving rise to rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

Bad faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

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

The registration of the distinctive SAINT-GOBAIN trademark predates by many years the registration of the disputed domain name. It is confusingly similar to this trademark and the Respondent has not provided any plausible explanation of its choice of a domain name and of its plans for how to use it.

As discussed in section 3.4 of the WIPO Overview 3.0, Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.

The disputed domain name does not resolve to an active website but has MX settings enabled, so it may be used for email communications. Given the circumstances of this case, the Panel is not aware of any good faith use, including for email communications, to which the disputed domain name may be put without the consent of the Complainant. Internet users who receive such communications may be misled to trust such communications in the belief that they are interacting with the Complainant or with its Czech affiliate.

Considering the above, the Panel is of the view that the Respondent is more likely to have registered the disputed domain name with knowledge of the Complainant’s SAINT-GOBAIN trademark and with the intention of taking advantage of its goodwill in an attempt to receive a commercial advantage in interactions with Internet users.

Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith.