Decision for dispute CAC-UDRP-108948

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name <saint-gobian-marketing.com>.

The Complainant is the owner of numerous trademark registrations for the mark SAINT-GOBAIN, including, inter alia:

• International Trademark Registration No. 740184 for SAINT-GOBAIN, registered on July 26, 2000;
• International Trademark Registration No. 740183 for SAINT-GOBAIN, registered on July 26, 2000;
• International Trademark Registration No. 596735 for SAINT-GOBAIN, registered on November 2, 1992; and
• International Trademark Registration No. 551682 for SAINT-GOBAIN, registered on July 21, 1989.

The Complainant also owns and operates numerous domain names incorporating the SAINT-GOBAIN trademark, including <saint-gobain.com>, which was registered on December 29, 1995. SAINT-GOBAIN is also used as the Complainant's company name.

The Complainant is a French company specializing in the production, processing and distribution of materials for the construction and industrial markets. Founded more than 360 years ago, it operates worldwide in the sustainable habitat and construction sector. According to the Complaint, the Complainant reported a turnover of approximately EUR 46.5 billion in 2025 and employs around 162,000 people worldwide.

The disputed domain name <saint-gobain-marketing.com> was registered on July 26, 2018. As of the date of the Complaint, it resolved to an inactive webpage, and MX records were configured.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

COMPLAINANT:

• The disputed domain name is confusingly similar to the protected mark

The Complainant contends that the disputed domain name incorporates its well-known and distinctive SAINT-GOBAIN trademark in its entirety.

According to the Complainant, the addition of the term "marketing" does not prevent a finding of confusing similarity, as the SAINT-GOBAIN trademark remains clearly recognizable within the disputed domain name. The Complainant submits that the additional term does not alter the overall impression that the disputed domain name is connected with the Complainant's trademark.

The Complainant further submits that the generic Top-Level Domain (".com") is a standard registration requirement and should be disregarded for the purpose of assessing confusing similarity.

Accordingly, the Complainant argues that the disputed domain name is confusingly similar to its SAINT-GOBAIN trademark and that the first element of paragraph 4(a) of the Policy is satisfied.

• The Respondent lacks rights or legitimate interests in the disputed domain name

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

Referring to Croatia Airlines d.d. v. Modern Empire Internet Ltd. (WIPO Case No. D2003-0455), the Complainant submits that it has established a prima facie case that the Respondent lacks rights or legitimate interests, thereby shifting the burden of production to the Respondent.

The Complainant asserts that the Respondent is not commonly known by the disputed domain name, has no connection or business relationship with the Complainant, and has never been authorized or licensed to use the SAINT-GOBAIN trademark or to register a domain name incorporating that mark.

The Complainant further submits that the disputed domain name resolves to an inactive webpage and that the Respondent has made no demonstrable preparations to use it in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose.

Accordingly, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the second element of paragraph 4(a)(ii) of the Policy is satisfied.

• The disputed domain name has been registered and is being used in bad faith

RESPONDENT:

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.

The UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN) (the “Policy”) provides that complainant must prove each of the following to obtain transfer or cancellation of the domain name:

1. that respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

2. that respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

1) The disputed domain name is confusingly similar to a trademark in which the Complainant has rights

Paragraph 4(a)(i) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.

The Panel finds that the Complainant has established rights in the SAINT-GOBAIN trademark through the trademark registrations identified above.

The disputed domain name incorporates the Complainant's SAINT-GOBAIN trademark in its entirety. The additional term "marketing" does not prevent a finding of confusing similarity. The Complainant's trademark remains readily recognizable within the disputed domain name. Consistent with section 1.8 of the WIPO Overview 3.1, where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive or other terms does not prevent a finding of confusing similarity under the first element of the Policy.

The Panel notes that the nature of the additional term "marketing" may bear on the assessment under the second and third elements of the Policy and returns to it below. 

Finally, the ".com" generic Top-Level Domain is a standard registration requirement and is disregarded for the purposes of the confusing similarity assessment. 

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's SAINT-GOBAIN trademark. The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

2) The Respondent lacks rights or legitimate interests in the disputed domain name

Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Although the overall burden of proof rests with the Complainant, it is well established that once a complainant makes out a prima facie case, the burden of production shifts to the respondent to demonstrate rights or legitimate interests (section 2.1 of the WIPO Overview 3.1).

The Panel is satisfied that the Complainant has established such a prima facie case. The Complainant has stated that it has never authorized the Respondent to use the SAINT-GOBAIN trademark or to register a domain name incorporating that mark. There is no evidence that the Respondent has been commonly known by the disputed domain name or has acquired any trademark or other rights in the designation SAINT-GOBAIN.

The Respondent has not submitted a Response and has therefore failed to rebut the Complainant's prima facie case.

The evidence further shows that, as of the date of the Complaint, the disputed domain name resolved to an inactive webpage. The Panel finds no evidence that the Respondent has used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair purpose.

The composition of the disputed domain name further supports this conclusion. As foreshadowed under the first element, the addition of the term "marketing" to the Complainant's distinctive trademark is not a neutral choice. It refers to a business function commonly associated with a commercial enterprise and, in the circumstances of this case, carries a risk of implied affiliation by suggesting a connection with the Complainant's marketing activities. Such composition does not support a claim to fair use (section 2.5.1 of the WIPO Overview 3.1).

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

3) The disputed domain name has been registered and is being used in bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the disputed domain name was both registered and is being used in bad faith.

Although the Respondent has not replied to the Complaint, the Panel has reached the findings set out below on the basis of the evidence submitted by the Complainant, and not by reason of the Respondent's default.

Registration in bad faith

The Panel is satisfied, on the evidence submitted, that the SAINT-GOBAIN trademark had acquired a substantial reputation long before the registration of the disputed domain name. The Complainant owns numerous trademark registrations dating back to 1989 and has used the SAINT-GOBAIN trademark extensively worldwide for many years. The Complainant has also maintained a longstanding online presence through its official website at <saint-gobain.com>, registered in 1995. The Panel further notes that previous UDRP panels have recognized the reputation of the SAINT-GOBAIN trademark.

The composition of the disputed domain name likewise indicates that it was selected with the Complainant in mind. The addition of the descriptive term "marketing" to the Complainant's SAINT-GOBAIN trademark is not coincidental. In the circumstances of this case, it reinforces the association with the Complainant and its commercial activities.

The Panel notes in this connection that panels have found that the registration by an unaffiliated party of a domain name incorporating a famous or widely known trademark together with a descriptive term may, in appropriate circumstances, create a presumption of bad faith (section 3.1.4 of the WIPO Overview 3.1). The Panel does not need to rely on that presumption in the present case. The circumstances surrounding the registration of the disputed domain name sufficiently demonstrate that the Respondent registered it with knowledge of, and with the intention of targeting, the Complainant and its SAINT-GOBAIN trademark.

Use in bad faith

As of the filing of the Complaint, the disputed domain name resolved to an inactive webpage.

The absence of active use does not prevent a finding of bad faith. As reflected in section 3.3 of the WIPO Overview 3.1, the question is whether, in all the circumstances of the case, the respondent's passive holding of the disputed domain name supports an inference of bad-faith use.

The Panel finds that such circumstances are present here. In particular, the Panel notes the distinctive and longstanding reputation of the Complainant's SAINT-GOBAIN trademark, the Respondent's incorporation of that trademark in its entirety into the disputed domain name, the absence of any evidence of rights or legitimate interests, the Respondent's failure to submit a Response, and the absence of any plausible good-faith use to which the disputed domain name could reasonably be put.

The Panel further notes that MX records have been configured for the disputed domain name. While that fact alone does not establish bad faith, it demonstrates that the disputed domain name is technically capable of being used for email communications. In the circumstances of this case, the existence of configured MX records reinforces the Panel's conclusion that the disputed domain name is capable of being used for deceptive email communications and further supports the finding that no plausible good-faith use has been shown.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.