Decision for dispute CAC-UDRP-108304

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

The Complainant has adduced evidence showing that it is the owner of four international trademarks and one US trademark for the brand SAINT-GOBAIN, namely:

- International trademark No. 551682, registered on 21 July 1989;

- International trademark No. 596735, registered on 2 November 1992;

- International trademark No. 740184, registered on 26 July 2000;

- International trademark No. 740183, registered on 26 July 2000;

- US trademark No. 1648605, registered on 25 June 1991.

These marks are all figurative in kind but include the word SAINT-GOBAIN, thus including the short form of the corporate name by which the Complainant is commonly known. Each international trademark affords protection within a different set of countries and there are variations between them as to the Nice Classification classes to which they extend. Two of these trademarks extend to more than twenty classes, while the US trademark extends to seven. All include protection for construction materials.

The Complainant also adduced evidence to show that it is the registrant of the domain name <saint-gobain.com>, registered on 29 December 1995. It did not adduce evidence of the other similar names of which it claims to be holder.

The Respondent registered the disputed domain name <saint-gobainusa.com> on 4 January 2026 according to the Registrar Verification requested by the CAC Case Administrator.

The Complainant, Compagnie de Saint-Gobain, is a major French industrial group whose business centres on the habitat and construction markets. It traces its origins to the reign of Louis XIV, when the Royal Manufactory in 1665 began producing mirror glass in the village of Saint-Gobain. Today, the Complainant is present in 76 countries and has in 2024 a turnover of around €46.6 billion and 161,000 employees worldwide. Its innovative, high-performance and sustainable construction solutions set a point of reference within the construction materials industry.

The Complainant adduced screenshot evidence showing that the disputed domain name <saint-gobainusa.com> evokes a browser response saying that there is no webpage to which it resolves. The Complainant adduced further evidence showing that e-mail (MX) servers are configured for the disputed domain name and that a redirection of e-mails to a third-party address is in place.

During its routine scrutiny of the Case File, the Panel observed that an incomplete street address was given by the Respondent when specifying the Respondent's contact details for purposes of the registration of the disputed domain name. Given this, the Panel in exercise of its general powers performed a brief check of the other contact details that the Respondent gave. These disclosed an incorrect telephone area code for the given city, San Jose in California. The first and last names given were not correctly entered.

COMPLAINANT:

1. The disputed domain name <saint-gobainusa.com> is confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant contends that the disputed domain name <saint-gobainusa.com> is confusingly similar to its well-known and distinctive SAINT-GOBAIN trademarks. The Addition of the letters “usa” (for the geographical term "USA") does not suffice to escape a finding of confusing similarity to the trademarks and branded goods of SAINT-GOBAIN. Neither does the <.com> TLD technical extension prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademarks and its domain names associated with its protected brand. Thus, the disputed domain name is confusingly similar to the Complainant’s SAINT-GOBAIN trademarks.

2. The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Complainant contends that the Respondent is not identified as "saint-gobainusa" in the WHOIS identification data given by the Respondent upon registration of the disputed domain name. The Respondent, is not related in any way with the Complainant and the Complainant does not carry out any activity for, nor has any business with, the Respondent. Nor has the Complainant granted any authorization to the Respondent to make any use of any of the Complainant’s SAINT-GOBAIN trademarks, including to apply for registration of the disputed domain name. Furthermore, because the disputed domain name resolves to no active webpage on the internet, the Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain. Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

3. The disputed domain name was registered and is being used in bad faith

The Complainant’s protected brand is well known worldwide and the Complainant has a long-standing website under its <saint-gobain.com> domain name, while 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 disputed domain name has moreover been set up with MX records, which suggests that it may be being actively used for e-mail purposes; clearly in light of the above, no email emanating from the Respondent using the disputed domain name could be sent for a good faith purpose. In view of these factors, the Respondent must, firstly, have known of the Complainant’s prior rights in, and wide use, of its protected SAINT-GOBAIN name when registering the disputed domain name (such knowledge can indeed be the only reason why the Respondent would do so), while, secondly, the Respondent has also shown sufficient bad-faith use (activation of MX services). The Respondent has therefore registered and is using the disputed domain name <saint-gobainusa.com> in bad faith.

RESPONDENT:

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is identical or confusingly similar to trademarks 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 interest 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 that 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 the UDRP were met and that there is no other reason why it would be inappropriate to provide a decision.

The Panel notes that its résumé of the Parties' contentions includes for the Complainant only its main arguments pertinent to reaching a decision in this proceeding; it omits in particular several references to past ADR Panels' Decisions. The Panel declines to consider a contention regarding prima facie proof since this contention is irrelevant in the circumstances of this proceeding.

Findings according to the UDRP cumulative three-part test:

1. On confusing similarity of the disputed domain name with the Complainant’s trademarks

The Complainant has adequately demonstrated its trademark rights in its SAINT-GOBAIN brand, which the Respondent combined upon registration of the disputed domain name with a clearly discernible geographical indicator, “usa”, in the disputed domain name’s stem. The Panel observes that the Respondent decided to retain the distinctive hyphen from the Complainant’s protected brand when doing so, thereby in effect helping to assure that the disputed domain name would be confusingly similar to consumers and others by connoting some association with the Complainant, its products and services, and its rights and reputation. On these grounds, the Panel FINDS that the requirements of the first part of the UDRP cumulative three-part test are met.

2. On the Respondent’s lack of rights or a legitimate interest

The Panel accepts the Complainant’s contentions that there is no connection between itself and the Respondent and that nothing in the contact details provided by the Complainant upon the disputed domain name’s registration suggests that the Respondent may have some independent connection with the character string in the disputed domain name associated with the Complainant’s protected brand SAINT-GOBAIN. To the contrary, proceeding from a suspicion aroused from the Case File (see Factual Background), the Panel ascertained that incomplete and at least partially inaccurate contact details were furnished by the Respondent at registration. The Panel also takes note here of the activation of e-mail servers for the disputed domain name and the redirection of e-mails to a third-party e-mail address. This connotes potential domain-name abuse in the context of the disputed domain name being so unambiguously formulated to refer to the Complainant. On these grounds, the Panel FINDS that the requirements of the second part of the UDRP test are met. On the other hand, the Panel REJECTS the contention made by the Complainant that the lack of use of the disputed domain name’s website facilities evidences a lack of a legitimate interest. The Panel in this regard points out that the Complainant contradicts itself by later (correctly) arguing, in relation to the UDRP requirement of bad faith, that use of e-mail servers does constitute use of the disputed domain name. The Complainant, in other words, cannot have it both ways. In addition, far too little time has elapsed between registration and the present proceeding to consider whether setting up a website or not might be material at all.  

3. The Respondent’s registration of the disputed domain name and use of it in bad faith

The Panel is satisfied (see point 1 above) that formulation by the Respondent of the disputed domain name in the unambiguous form it has indicates intention and that such intention can only, in the circumstances, be directed at obtaining some gain at the expense of the Complainant’s rights and of consumers and others who may be misled into believing they may be dealing with the Complainant. Instead, they will, quite conceivably, as a result of phishing in view of the e-mail arrangements the Respondent has set in place, be dealing with someone whose very identity must be questioned in view of the precarious value of the contact details that the Respondent provided upon registration. The Panel thus FINDS that the Respondent both registered the disputed domain name and is using it in bad faith, so satisfying the requirements of the last part of the UDRP cumulative test.

Conclusion:

The Panel therefore ORDERS the transfer of the disputed domain name to the Complainant.