Compagnie de Saint-Gobain v Mathew Lang, RPANET LLC

WIPO Case No. D2024-5252

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie de Saint-Gobain v. Mathew Lang, RPANET LLC

Case No. D2024-5252

1. The Parties

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

The Respondent is Mathew Lang, RPANET LLC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <saintgo-bain.com> is registered with IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2024. On December 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2024, Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which partly differed from the named Respondent (REDACTED FOR PRIVACY / RPANET LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 24, 2024, 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 December 24, 2024.

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 December 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2025.

The Center appointed Meera Chature Sankhari as the sole panelist in this matter on January 24, 2025. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

page 2

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 French company specialized in the production, processing, and distribution of materials for the construction and industrial markets. The Complainant is a worldwide reference company in sustainable habitat and construction markets. The Complainant is a 350-year-old company. In the year 2023, the Complainant had more than EUR 47.9 billion in turnover and around 160,000 employees.

The Complainant has registrations for the trademark SAINT-GOBAIN in International Trademark (figurative)
bearing no. 740184 dated July 26, 2000; no. 740183 (figurative) dated July 26, 2000; and no. 551682
(figurative) dated July 21, 1989. The Complainant also owns many domain names including its trademark
SAINT-GOBAIN, such as <saint-gobain.com> registered on December 29, 1995. The trademark SAINT-
GOBAIN is also commonly used to refer to the company name of the Complainant.

The disputed domain name was registered by the Respondent on December 16, 2024. The disputed domain name resolves to a Registrar parking page and there is no other use of the disputed domain name.

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 contends that the disputed domain name is confusingly similar to the Complainant’s trademark SAINT-GOBAIN along with its domain name <saint-gobain.com>, as it includes the trademark in its entirety. The Complainant further alleges that the moving of the hyphen after the letter “o” in the trademark SAINT-GOBAIN is not sufficient to escape the finding of confusing similarity and is a clear case of typo squatting, i.e., the disputed domain name contains an obvious misspelling of the Complainant’s trademark. Moreover, the Complainant contends that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not change the overall impression of the designation as being connected to the trademark SAINT-GOBAIN.

The Complainant asserts that the Respondent is not identified in the WhoIs as the disputed domain name but as “RPANET LLC”. Thus, the Respondent is not known as the disputed domain name.

The Complainant alleges that the Respondent lacks rights or legitimate interests in respect of the disputed
domain name. The Complainant further contends that the Respondent is neither affiliated with nor
authorized by the Complainant in any way. The Complainant does not carry out any activity for, nor has any
business with the Respondent. The disputed domain name resolves to a parking page. The Complainant
asserts that the Respondent has neither used nor demonstrated any plans to use the disputed domain name.

The Complainant alleges that the disputed domain name was recently created, despite the extensive, well- known worldwide use of the SAINT-GOBAIN trademark. Given the Complainant’s longstanding Internet and global presence, the Respondent was aware of the prior rights and widespread use of the trademark.

B. Respondent

The Respondent did not reply to the Complainant.

page 3

6. Discussion and Findings

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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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 entirety of the mark is reproduced 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.

The gTLD “.com”, is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.

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.

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 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 (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.

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 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.

page 4

In the present case, the Panel notes that the Respondent must have obviously known the prior rights and
wide use of the Complainant’s well-known mark SAINT-GOBAIN which is also used as a trading name by the
Complainant.

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.

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 distinctiveness or reputation of the Complainant’s trademark, the composition of the disputed

domain name, and lack of 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.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

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 <saintgo-bain.com> be transferred to the Complainant.

/Meera Chature Sankhari/
Meera Chature Sankhari
Sole Panelist
Date: February 5, 2025