Decision for dispute CAC-UDRP-108350

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 number of registered trademarks for the SAINT-GOBAIN trademark, including the following:

• International trademark registration No. 740183 for SAINT-GOBAIN, registered on July 26, 2000; and 
• United States trademark registration No. 1648605 for SAINT-GOBAIN (word/device), registered on June 25, 1991.

The Complainant also owns domain names that include its trademark SAINT-GOBAIN, such as the domain name <saint-gobain.com>, registered on December 29, 1995. 

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 reported revenues of approximately EUR 46.6 billion and employed around 160,000 people.

The disputed domain name was registered on January 15, 2026 and it resolves to an inactive page. In addition, email exchange records (“MX records”) are configured on the disputed domain name.  

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

Notably, the Complainant contends that the disputed domain name is confusingly similar to its well-known and distinctive SAINT-GOBAIN trademark. The obvious misspelling of the Complainant’s trademark, through the substitution of the letter “G” with the letter “Q” and the addition of a hyphen, does not prevent a finding of confusing similarity. Furthermore, the addition of the generic Top-Level Domain (“gTLD”) “.com” does not prevent a finding of confusing similarity.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant contends that the Respondent is not a licensee of the Complainant, is not affiliated with the Complainant in any way, and has not been granted any authorization to make use of the SAINT-GOBAIN trademark. Furthermore, the Complainant claims that the disputed domain name constitutes a typosquatted version of the SAINT-GOBAIN trademark and that the practice of registering a domain name in an attempt to take advantage of Internet users’ typographical errors may evidence a lack of rights or legitimate interests. The disputed domain name resolves to an inactive webpage. The Complainant contends that the Respondent has not made any use of the disputed domain name since its registration and confirms that the Respondent has no demonstrable plan to use it. According to the Complainant, this demonstrates a lack of rights or legitimate interests in respect of the disputed domain name.

With reference to the circumstances evidencing bad faith, the Complainant states that its SAINT-GOBAIN trademark has been extensively used worldwide well before the registration date of the disputed domain name. Furthermore, previous panels have found that the Complainant’s trademark is well known (including in the United States, where the Respondent is allegedly located). The Complainant therefore submits that the Respondent must have been aware of the Complainant’s prior rights and the widespread use of the SAINT-GOBAIN trademark. In addition, the Complainant states that the misspelling of the SAINT-GOBAIN trademark was intentionally designed to create confusion with the Complainant’s mark. The disputed domain name resolves to an inactive webpage and, according to the Complainant, the Respondent has not demonstrated any activity in respect of the disputed domain name. The Complainant further argues that 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 passing off, infringement of consumer protection legislation, or infringement of the Complainant’s trademark rights. Finally, the disputed domain name has been configured with MX records, which, in the Complainant’s view, suggests that it may be used for email purposes. The Complainant submits that this is indicative of bad faith registration and use, as any email emanating from the disputed domain name could not be used for any good faith purpose.

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.

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy stipulates that the complainant must prove each of the following:

• that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
• that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
• that the disputed domain name has been registered and is being used in bad faith.

1. 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, as stipulated in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

The Complainant has shown rights in respect of the SAINT-GOBAIN trademark for the purposes of the Policy (WIPO Overview 3.0, section 1.2.1). 

The second-level domain (“SLD”) of the disputed domain name, “saint--qobain”, is very close to the SAINT-GOBAIN trademark. The difference consists of the replacement of the letter “g” with the visually similar letter “q” and the addition of an extra hyphen. The replacement of the letter “g” with the visually similar letter “q” is insufficient to avoid a finding of confusing similarity. Nor does the additional hyphen (albeit uncommon in domain name structure) make any significant difference in the assessment of confusing similarity between the disputed domain name and the Complainant’s trademark. 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 (WIPO Overview 3.0, section 1.9).

The entirety of the Complainant's trademark is reproduced within the disputed domain name without any additional terms. Accordingly, the disputed domain name is identical to the Complainant's trademark for the purposes of the Policy (WIPO Overview 3.0, section 1.7).

In addition, it is well established that “.com”, as a generic Top-Level Domain, can be disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s trademark (WIPO Overview 3.0, section 1.11.1).

The Panel, therefore, finds that the first element of the Policy has been established.

2. 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.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

In particular, the Panel notes that there appears to be no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained authorization to use the Complainant’s SAINT-GOBAIN trademark. There appears to be no element from which the Panel could infer the Respondent’s rights and legitimate interests in the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.

Having in mind the above, the Panel finds the second element of the Policy has been established.

3. 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 the disputed domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith (WIPO Overview 3.0, section 3.2.1).

In the present case, the Panel notes that the Respondent must have been aware of the Complainant and its SAINT-GOBAIN trademark, particularly in light of the long-standing use of SAINT-GOBAIN trademark throughout the world. It is, therefore, highly unlikely that the Respondent decided to register a domain name which constitutes an obvious misspelling of the Complainant’s SAINT-GOBAIN trademark (achieved through the substitution of the letter “g” with the visually similar letter “q” and the addition of a hyphen), without having the Complainant in mind when doing so. It should be also borne in mind that the registration and use of SAINT-GOBAIN trademark predate the registration of the disputed domain name by several decades, further supporting the conclusion that the Respondent was aware of the Complainant’s trademark at the time of registration of the disputed domain name.   

Due to the above, the Panel finds that the disputed domain name has been registered in bad faith.

The disputed domain name currently resolves to an inactive page, meaning that the disputed domain has not been actively used by the Respondent. Nevertheless, the Panel holds that the particular circumstances of this case would lead to the establishment of bad faith on the Respondent's side under the doctrine of passive holding. Previous panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy, and that in such cases the panel must give close attention to all the circumstances of Respondents’ behaviour (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The principles established in Telstra Corporation Limited v. Nuclear Marshmallows, have been widely adopted by UDRP panels and have found their place in WIPO Overview 3.0. In accordance with Section 3.3. of WIPO overview 3.0, 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, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. It should be emphasized that it is not required that all the above-listed factors be present in order to establish bad faith use of the disputed domain name (see, for example, Compagnie Générale des Etablissements Michelin v. K Nandalal, BlueHost, WIPO Case No. D2021-3990).

The Complainant’s SAINT-GOBAIN trademark is distinctive and enjoys a certain reputation within its field of business. Furthermore, the Respondent has failed to submit a response and thereby to provide any explanation for the choice of the disputed domain name and its planned use. In the Panel's opinion, the reputation of the Complainant’s SAINT-GOBAIN trademark and the structure of the disputed domain name (that clearly indicates targeting of the Complainant) are such that it is rather difficult to imagine any good faith use that the disputed domain name could be put into. For that reason, the Panel finds that the disputed domain name has been used in bad faith in accordance with the doctrine of passive holding.

The Panel also considers that the configuration of mail exchange records (MX records) on the disputed domain name can also contribute to the Respondent’s bad faith.  Previous panels have held that the configuration of such records may give rise to a significant risk of phishing or other fraudulent and abusive activities (see, for example, Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533 and Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Basikta James, WIPO Case No. D2020-2955).  

In circumstances where a disputed domain name constitutes an obvious misspelling of a third party’s trademark that enjoys a certain reputation in its field of business, it is difficult to conceive of any plausible good faith use of the mail server attached to such a domain name. In the present case, the disputed domain name constitutes an obvious misspelling of the Complainant’s SAINT-GOBAIN trademark, and the Panel finds that it is rather difficult to imagine any good faith use in which MX records attached to such a domain name could be put. 

The Panel finds that the disputed domain name has been both registered and is being used in bad faith, and consequently that the Complainant has established the third element of the Policy.