Decision for dispute CAC-UDRP-108115

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

Complainant is the owner of the international trademark nr. 740183 SAINT-GOBAIN registered on 26 July 2000. 

According to the information provided by the registrar the disputed domain name <saintsgobains.com> was registered on 31 October 3025.  

The disputed domain name does not resolve to an active website. 

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

According to the evidence submitted by Complainant, Complainant is a French company specialized in the production, processing and distribution of materials for the construction and industrial markets. Existing for 350 years, Complainant is now one of the top industrial groups in the world with around 46.6 billion Euros in turnover in 2024 and 161,000 employees. Complainant also owns many domain names including its trademark SAINT-GOBAIN, such as the domain name <saint-gobain.com> registered on December 29, 1995

According to Complainant the disputed domain name <saintsgobains.com> is confusingly similar to its well-known and distinctive trademark SAINT-GOBAIN. The obvious misspelling of Complainant’s trademark SAINT-GOBAIN (i.e. the addition of the letter “s” two times) is characteristic of a typosquatting practice intended to create confusing similarity between Complainant’s trademark and the disputed domain name.

According to Complainant, Respondent has no rights or legitimate interest in the disputed domain name. Respondent is not related in any way with Complainant. Complainant does not carry out any activity for, nor has any business with Respondent. Neither license nor authorization has been granted to Respondent to make any use of Complainant’s trademark SAINT-GOBAIN, or apply for registration of the disputed domain name. Moreover, Complainant also claims that the disputed domain name is a typosquatted version of the trademark SAINT-GOBAIN. Typosquatting is the practice of registering a domain name in an attempt to take advantage of Internet users’ typographical errors and can evidence that a respondent lacks rights and legitimate interests in the domain name. Finally, the disputed domain name is inactive. Complainant contends that Respondent did not use the disputed domain name, nor has any demonstrable plan to use the disputed domain name.

According to Complainant the disputed domain name is registered and is being used in bad faith. Respondent obviously knew the prior rights and wide use of SAINT-GOBAIN by Complainant. That is the sole and only reason why he registered the disputed domain name. Moreover, Complainant states that the misspelling of the trademark SAINT-GOBAIN was intentionally designed to be confusingly similar with Complainant’s trademark. Previous UDRP Panels have seen such actions as evidence of bad faith.

Furthermore, the disputed domain name points to an inactive page. Complainant argues that Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant’s rights under trademark law. As prior UDRP panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. 

Respondent
No administratively compliant Response has been filed.

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 Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

Complainant has, to the satisfaction of the Panel, shown 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).

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 the opinion of the Panel the disputed domain name is confusingly similar to Complainant's trademark (Policy, Par. 4 (a)(i)). Many UDRP decisions have found that a disputed domain name is identical or confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark or the principal part thereof in its entirety or where a disputed domain name consists of a common, obvious or intentional misspelling of a trademark. Complainant has established that it is the owner of trademark registrations for SAINT-GOBAIN. The disputed domain name incorporates the entirety of the well-known SAINT-GOBAIN trademark as its distinctive element. The addition of two times the letter “s” in the disputed domain name and the deletion of the hyphen between the SAINT and GOBAIN part of the trademark are insufficient to avoid a finding of confusing similarity as the SAINT-GOBAIN trademark remains the dominant component of the disputed domain name. The top-level domain “com” in the disputed domain name may be disregarded.  

The Panel notes that Complainant’s registration of its trademark predates the creation date of the disputed domain name. 

In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interest in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use its trademark or to register the disputed domain name incorporating its mark. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights. Complainant has no relationship with Respondent. Respondent did not submit any response.

Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
 
The Panel finds that the disputed domain name has been registered and is being used in bad faith. Noting the well-known and long existing status of the SAINT-GOBAIN trademark and the overall circumstances of this case, the Panel finds it is more likely than not that Respondent knew or in any event should have known of Complainant’s SAINT-GOBAIN mark. This is also suggested by Respondent’s choice of the disputed domain name, namely one which is a typosquat version of Complainant’s SAINT-GOBAIN mark.
The Panel notes the undisputed submission of Complainant that the disputed domain name does not resolve to an active website. It is well established that non-use of a domain name does not prevent a finding of bad faith use under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Noting (i) the degree of distinctiveness and reputation of Complainant’s SAINT-GOBAIN marks, (ii) the failure of Respondent to submit a response or to provide any evidence of actual or contemplated bona fide use, and (iii) the implausibility of any bona fide use to which the inherently misleading disputed domain name may be put, the Panel finds that Respondent possibly registered the disputed domain name with the intention to unfairly attract Internet users to its disputed domain name.
The Panel finds that in the circumstances of this case Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith.