Decision for dispute CAC-UDRP-108427

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 the following trademarks:

- SAINT-GOBAIN (figurative), International registration No. 740184, registered on 26 July 2000, for goods and services in classes 01, 02, 03, 06, 07, 08, 09, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, 42;

- SAINT-GOBAIN (word), International registration No. 740183, registered on 26 July 2000, for goods and services in classes 01, 02, 03, 06, 07, 08, 09, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40, 42; 

- SAINT-GOBAIN (figurative), International registration No. 596735, registered on 2 November 1992, for goods and services in classes 01, 06, 09, 11, 12, 16, 17, 19, 20, 21, 22, 23, 24;

- SAINT-GOBAIN (figurative), US trademark registration No. 1648605, registered on 25 June 1991, for goods in classes 11, 17, 20, 21, 23, 24, 19;

- SAINT-GOBAIN (figurative), International registration No. 551682, registered on 21 July 1989, for goods and services in classes 01, 06, 07, 09, 11, 12, 16, 17, 19, 20, 21, 22, 23, 24, 37, 39, 41.

Moreover, the Complainant is the owner of the domain name <saint-gobain.com>, registered on December 29, 1995, and is part of the Complainant's company name.

The Complainant is a French company specialised in the production, processing and distribution of materials for the construction and industrial markets. The Complainant is now one of the leading industrial groups in the world with a turnover of approximately 46,6 billion Euros and 161,000 employees in 2024.

The disputed domain name was registered on 2 November 2026 allegedly by an individual located in Jordan. At the time of the filing of the Complaint, the disputed domain name resolved to a webpage reproducing the Complainant's mark and providing information on the Danish company "SAINT-GOBAIN Denmark A/S". The website promoted the sale of high-quality hardware, heating systems, and construction materials.

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

In particular, the Complainant contends that the disputed domain name is confusingly similar to its SAINT-GOBAIN mark as it fully incorporates this mark. The mere addition of the letters "co" cannot prevent a finding of confusing similarity. 

The Complainant further contends that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has it ever been authorized by the Complainant to make use of the Complainant's SAINT-GOBAIN mark in any manner whatsoever, including as part of the disputed domain name. According to the Complainant, the Respondent registered the disputed domain name in order to profit from the reputation of the SAINT-GOBAIN mark by offering services in direct competition with the Complainant. Accordingly, the Respondent cannot be considered to be using the disputed domain name in connection with a bona fide offering of goods or services.

Lastly, the Complainant maintains that the disputed domain name was registered and is being used in bad faith. The SAINT-GOBAIN mark has been used extensively worldwide well before the registration date of the disputed domain name. Given the reputation and distinctiveness of the Complainant's trademark, it is reasonable to infer that the Respondent registered and is using the disputed domain name with full knowledge of the Complainant's mark.

Furthermore, the disputed domain name resolves to a website offering construction materials that directly compete with those of the Complainant. Accordingly, the Complainant contends that the Respondent has used the disputed domain name to intentionally divert Internet users searching for the Complainant to the Respondent's competing website, thereby creating a likelihood of confusion with the Complainant's mark for the Respondent's commercial gain.

Finally, the Complainant notes that the disputed domain name has been configured with Mail Exchange (MX) records, indicating that it may be actively used for email purposes. This further supports a finding of bad faith. 

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.

I. Confusing similarity

The Complainant has demonstrated that it owns registered rights in the SAINT-GOBAIN trademark. The Panel notes that the disputed domain name incorporates the Complainant's mark in its entirety, followed by the letters "co".  

According to section 1.8 of the WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”), "[w]here 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".

In the present case, the SAINT-GOBAIN mark is clearly recognizable within the disputed domain name.  The addition of the letters "co" cannot prevent a finding of confusing similarity. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.

The Panel therefore concludes that the Complainant has satisfied the first requirement under the Policy.

II.  Respondent's lack of rights or legitimate interests

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.  If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.  WIPO Overview 3.1, section 2.1.

In this case, the Complainant contends that the Respondent is not one of its licensees and has never been authorized to reflect the SAINT-GOBAIN mark in the disputed domain name or otherwise. The Panel notes that there is no evidence in the case file indicating that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

The Panel further observes that the disputed domain name consists of the Complainant's SAINT-GOBAIN mark followed by the two letters "co", which may reasonably be understood as an abbreviation of "company". Such a composition is apt to impersonate the Complainant or to suggest sponsorship or endorsement by the Complainant.

At the time of the filing of the Complaint, the disputed domain name resolved to a website prominently featuring the Complainant's mark and making references to "SAINT-GOBAIN Denmark", or to "SAINT-GOBAIN Denmark A/S". The website displayed an email address incorporating the disputed domain name.  The content of the website contained the following statement:  "SAINT-GOBAIN Denmark A/S is a leading Danish wholesaler specializing in high-quality hardware, heating systems, and construction materials. With decades of expertise, we provide professional solutions across the building and industrial sectors, operating through trusted brands (...).

Through such content, the Respondent was falsely presenting itself as the Complainant's Danish subsidiary. The Panel finds that this behaviour amounts to clear impersonation of the Complainant. 

Accordingly, through the disputed domain name, the Respondent diverted Internet users seeking the Complainant to a highly misleading website, deliberately designed to take unfair advantage of the goodwill and reputation associated with the Complainant and its trademark for the Respondent's own commercial benefit. Such use of the disputed domain name cannot constitute a legitimate noncommercial or fair use of the disputed domain name, nor can it be considered a bona fide offering of goods or services.

Accordingly, the Panel finds that also the second condition under the Policy is met.

II.  Bad Faith

The Panel agrees with the Complainant that the Respondent was aware of the Complainant's mark when it registered the disputed domain name. The Complainant's mark is distinctive and renowned in the relevant field and appears to be exclusively associated with the Complainant. The disputed domain name incorporates the Complainant's mark together with the letters "co", which may be understood as an abbreviation of "company".  As a result, Internet users could be led to believe that the disputed domain name belongs to a company within the Complainant's group, which is not the case. The Respondent's awareness of the Complainant's mark at the time of the registration of the disputed domain name is confirmed by the use made of the disputed domain name. As noted above, the disputed domain name resolved to a misleading website featuring the Complainant's mark and purporting to act as the Complainant's Danish subsidiary. Through the website associated with the disputed domain name, the Respondent promoted activities, that are in direct competition with those of the Complainant.  It is therefore clear that the disputed domain name was registered to disrupt the business of a competitor and take unfair advantage of the Complainant's goodwill and reputation for the Respondent's own commercial profit. Accordingly, the Panel finds that the disputed domain name was registered in bad faith. 

As far as use in bad faith is concerned, the Panel notes that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. Moreover, the configuration of MX records supports a finding of bad faith, as it enables the misuse of the disputed domain name for deceptive purposes. Accordingly, the Panel finds that the disputed domain name has been used in bad faith.

In light of the foregoing, the Panel concludes that the Respondent has successfully established the third and final requirement under paragraph 4(a)(iii) of the Policy.