Decision for dispute CAC-UDRP-108827

The Panel is not aware of any other legal proceedings that are pending or decided and that relate to the Disputed Domain Name.

Complainant states that it, “is the owner of several trademarks SAINT-GOBAIN, registered worldwide,” including the following for which it provided documentation:

• Int’l Reg. No. 740184 for SAINT-GOBAIN (registered July 26, 2000) for use in connection with, inter alia, “chemicals used in industry, science and photography”;
• Int’l Reg. No. 551682 for SAINT-GOBAIN (registered July 21, 1989) for use in connection with, inter alia, “produits chimiques destinés à l'industrie, aux sciences, à la photographie”;
• Brazil Reg. No. 003651800 for SAINT-GOBAIN (registered November 13, 1967) for use in connection with, inter alia, “artigos e utensílios de utilidade doméstica. vidros, cristais e espelhos em geral”.

These registrations are referred to herein as the “SAINT-GOBAIN Trademark.”

Complainant states that it “is a worldwide reference in sustainable habitat and construction markets”; “takes a long-term view in order to develop products and services for its customers that facilitate sustainable construction”; and “is now one of the top industrial groups in the world with around 46.5 billion euros in turnover in 2025 and 162,000 employees.”  Complainant also states that it is the registrant of the domain name <saint-gobain.com>, which was created on December 29, 1995.

The Disputed Domain Name was created on May 29, 2026, and, according to the Complaint and a screenshot provided as an annex thereto, is inactive.

Complainant contends, in relevant part, as follows:

Paragraph 4(a)(i): Complainant states that the Disputed Domain Name is confusingly similar to the SAINT-GOBAIN Trademark because, inter alia, the Disputed Domain Name wholly contains the trademark, and “the addition of the term ‘BRASILIT’ worsens the likelihood of confusion, as BRASILIT is one of the Complainant’s Brazilian subsidiaries.”

Paragraph 4(a)(ii): Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not identified in the Whois as the disputed domain name, but as ‘Rafael Luis Sindeaux de Sousa’”; “Respondent has no rights or legitimate interests in respect of the domain name and he is not related in any way with the Complainant” “Complainant does not carry out any activity for, nor has any business with the Respondent”; “[n]either licence nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark SAINT-GOBAIN or apply for registration of the disputed domain name by the Complainant”; and because the Disputed Domain Name is inactive, “it confirms that Respondent has no demonstrable plan to use the disputed domain names [sic].”

Paragraph 4(a)(iii): Complainant states that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, “the Complainant trademark has a well-known character worldwide and has a long-standing worldwide operating website under the <saint-gobain.com> domain name”; “the addition of the term ‘BRASILIT’ to the Complainant’s trademark cannot be coincidental as the term refers to the Complainant’s division BRASILIT”; “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 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”; and “the incorporation of a famous mark into a domain name, coupled with an inactive website.”

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 UDRP).

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 UDRP).

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 UDRP).

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.

Identical or Confusingly Similar: Paragraph 4(a)(i)

The documentation provided by Complainant are sufficient to establish that Complainant has rights in the SAINT-GOBAIN Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to these trademarks, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “brasilitsaintgobain”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”  WIPO Overview 3.1, section 1.11.1.

Here, the Disputed Domain Name contains the SAINT-GOBAIN Trademark in its entirety.  As set forth in section 1.7 of WIPO Overview 3.1: “[I]n cases where a domain name incorporates the entirety of a trademark…, the domain name will normally be considered confusingly similar to that mark.”

As to the addition of the word “brasilit”, section 1.8 of WIPO Overview 3.1 says: “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.”

Accordingly, the Panel finds that Complainant has proven the first element of the Policy. 

Rights or Legitimate Interests: Paragraph 4(a)(ii)

Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not identified in the Whois as the disputed domain name, but as ‘Rafael Luis Sindeaux de Sousa’”; “Respondent has no rights or legitimate interests in respect of the domain name and he is not related in any way with the Complainant” “Complainant does not carry out any activity for, nor has any business with the Respondent”; “[n]either licence nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark SAINT-GOBAIN or apply for registration of the disputed domain name by the Complainant”; and because the Disputed Domain Name is inactive, “it confirms that Respondent has no demonstrable plan to use the disputed domain names [sic].”

WIPO Overview 3.1, section 2.1, states: “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 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 Panel finds that Complainant has established its prima facie case and, without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the UDRP.

Registered and Used in Bad Faith: Paragraph 4(a)(iii)

Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location.

As set forth in section 3.1.4 of WIPO Overview 3.1: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”  Here, the Panel finds that the SAINT-GOBAIN Trademark is famous or widely known, given its length of use, multiple registrations worldwide and use by a company with a large number of employees and revenue.

Further, WIPO Overview 3.1, section 3.3, states:

From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not by itself prevent a finding of bad faith under the doctrine of passive holding. To the contrary, in looking at the totality of circumstances in each case, panelists have found that the registration and non-use of a domain name can still constitute bad faith for purposes of the Policy.

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 taking active steps to conceal its identity or (iv) the use of false or inaccurate contact details (noted to be in breach of the respondent’s registration agreement).

Taking the above factors into consideration, panels assess the overall plausibility of any (claimed) good faith use to which the domain name may be put in light of the composition of the domain name in relation to the relevant mark, such that, the more arbitrary or distinctive a mark the less plausible a claimed non-infringing good faith use is likely to be, and vice versa.

Here, the SAINT-GOBAIN Trademark appears to be distinctive and appears to have a high degree of reputation, for the reasons discussed above.  Further, Respondent did not submit a response or provide any evidence of actual or contemplated good-faith use.

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.