Compagnie de Saint-Gobain v Gary Kennedy, Saintgobain

WIPO Case No. D2025-1525

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie de Saint-Gobain v. Gary Kennedy, Saintgobain

Case No. D2025-1525

1. The Parties

The Complainant is Compagnie de Saint-Gobain, France, represented by Nameshield, France.

The Respondent is Gary Kennedy, Saintgobain, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bpsaintgobain.com> (the “Disputed Domain Name”) is registered with

Squarespace Domains II LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2025.
On April 15, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On April 15, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the Disputed Domain Name
which differed from the named Respondent (REDACTED FOR PRIVACY, Saintgobain) and contact
information in the Complaint. The Center sent an email communication to the Complainant on April 16,
2025, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

April 17, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2025.

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The Center appointed Nicholas Weston as the sole panelist in this matter on May 28, 2025. The Panel finds
that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a company incorporated in France that operates construction materials business that has been in business for more than 350 years and employs more than 160,000 people. The Complainant cites its registrations for the trademark SAINT-GOBAIN and variations of it in numerous countries, including,

for example, International Trademark Registration Number 740184 for the mark SAINT-GOBAIN registered
on July 26, 2000; and European Union Trademark Registration Number 001552843 for the mark SAINT-
GOBAIN registered on December 18, 2001.

The Complainant owns the domain name <saint-gobain.com>, which was registered on December 29, 2005, and hosts its main website.

The Disputed Domain Name was registered on April 14, 2025, and is inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name.

Notably, the Complainant cites trademark registrations for the mark SAINT-GOBAIN, and variations of it, in numerous jurisdictions as prima facie evidence of ownership.

The Complainant submits that its rights in the mark SAINT-GOBAIN predate the Respondent’s registration of the Disputed Domain Name and submits that the Disputed Domain Name is confusingly similar to its trademark, for the reason that the addition of the letter “bp” to the Disputed Domain Name does “not change the overall impression of the designation as being connected to the Complainant’s trademark”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “[n]either license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark” and contends that none of the circumstances set out in paragraph 4(c) of the Policy apply.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules having regard to the prior use and submits that “it is not possible to conceive of any plausible actual or contemplated active use of the [Disputed D]omain [N]ame 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 advances the argument that inactivity of the Disputed Domain Name combined with an active MX record is also indicative of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. 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. WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark SAINT- GOBAIN in numerous countries.

Turning to whether the Disputed Domain Name is identical or confusingly similar to the SAINT-GOBAIN trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) the letters “bp”; (b) followed by a reproduction of the Complainant’s trademark SAINT-GOBAIN with the hyphen omitted; (c) followed by the generic Top-Level Domain (“gTLD”) “.com”.

It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “bpsaintgobain”.

The Panel finds the mark is recognizable within the Disputed Domain Name. Accordingly, the Disputed
Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section

1.7.

Although the addition of the letters “bp” may bear on assessment of the second and third elements, the
Panel finds the addition of such letters does not prevent a finding of confusing similarity between the

Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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

B. 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 Disputed 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 Disputed 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.
WIPO Overview 3.0, section 2.1.

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The Panel finds that there is no indication that the Respondent was commonly known by the term
“bpsaintgobain” prior to registration of the Disputed Domain Name. The Complainant has not licensed,
permitted, or authorized the Respondent to use the trademark SAINT-GOBAIN. The Panel also considers
that the additional term “bp” most likely refers to “building products” and notes that the composition of the
Disputed Domain Name carries a risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1).
Furthermore, the Respondent’s use of “Saintgobain” as the organization name when registering the Disputed
Domain Name does not confer rights or legitimate interests under the circumstances of this case.

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.

The Panel notes the evidence that the Disputed Domain Name resolves to an inactive webpage, which supports the Complainant’s evidence, and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users.

The Panel finds the second element of the Policy has been established.

C. 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 a 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 finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, this Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name other than to trade off the reputation and goodwill of the Complainant’s well- known trademark. WIPO Overview 3.0, section 3.1.4.

Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) may indicate bad faith registration. In this case, the Respondent registered the Disputed Domain Name some 36 years after the Complainant established registered trademark rights in the SAINT-GOBAIN mark. The Respondent has not come forward to rebut the Complainant’s allegations or to offer an alternative explanation.

On the issue of use, the Disputed Domain Name does not currently resolve to an active website.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the Complainant’s well-known trademark, the composition of the Disputed Domain Name, and

the Respondent’s failure to file a Response, and finds that in the circumstances of this case the passive
holding of the Disputed Domain Name does not prevent a finding of bad faith under the Policy.

Finally, the set up of the Disputed Domain Name and with an active MX record is also indicative of bad faith for the reason that the Respondent is simply unable to make good faith use of the Disputed Domain Name as part of an email address.

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The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <bpsaintgobain.com> be transferred to the Complainant.

/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: June 10, 2025