Compagnie de Saint-Gobain v Vladimir Volf

WIPO Case No. D2025-0690

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie de Saint-Gobain v. Vladimir Volf

Case No. D2025-0690

1. The Parties

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

The Respondent is Vladimir Volf, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <saintgobain.site> is registered with Registrar of Domain Names REG.RU LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2025. On February 20, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 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 (Unknown / Personal data, cannot be publicly disclosed according to applicable laws) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 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 February 21, 2025.

On February 21, 2025, the Center informed the parties in Russian and English, that the language of the registration agreement for the disputed domain name is Russian. On February 21, 2025, the Complainant filed a request for English to be the language of the proceedings. The Respondent did not submit any comment on the Complainant’s submission.

The Center verified that the Complaint together with 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in Russian and English of the Complaint, and the proceedings commenced on February 27, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2025. The Respondent did not submit

any response. Accordingly, the Center notified the Respondent’s default on March 20, 2025.

The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on March 25, 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 French company that supplies building and construction materials. The Complainant had a turnover of more than EUR 47.9 billion in 2023 and has around 160,000 employees.

The Complainant owns many registered trademarks worldwide, including European Union trademark SAINT-
GOBAIN No. 001552843 registered on December 18, 2001; International Trademark SAINT-GOBAIN
(figurative) No. 740184 registered on July 26, 2000; International Trademark SAINT-GOBAIN No. 740183
registered on July 26, 2000; International Trademark SAINT-GOBAIN (figurative) No. 596735 registered on
November 2, 1992; and International Trademark SAINT-GOBAIN 551682 No. 551682 registered on July 21,
1989.

The Complainant also owns many domain names that include its trademark SAINT-GOBAIN, such as <saint-gobain.com> registered on December 29, 1995.

The disputed domain name was registered on February 18, 2025. It redirects to a Registrar’s parked webpage where it is offered for sale for RUB 5,000.

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 says that the disputed domain name is identical to its trademark SAINT-GOBAIN.

Further, the Complainant asserts that the Respondent is not identified in the WhoIs database as the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the WhoIs information was not similar to the disputed domain name, the Complainant maintains.

The Complainant also says that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant does not carry out any activity for, nor has any business with, the Respondent. The Complainant asserts that neither license 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.

Additionally, the disputed domain name is offered for sale for RUB 5,000, and the Complainant contends that this general offer to sell the disputed domain name is evidence of the Respondent’s lack of rights or legitimate interests.

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The Complainant further asserts that it was using its trademark SAINT-GOBAIN extensively worldwide well before the registration date of the disputed domain name. The Complainant also contends that its trademark has a well-known character worldwide and it has a long-standing worldwide operating website under the <saint-gobain.com> domain name. In light of these facts, the Complainant says, the Respondent obviously knew of the Complainant’s rights in the distinctive SAINT-GOBAIN registered trademark. The Complainant contends that this is the sole and only reason why the Respondent registered the disputed domain name.

Failure to make any active use of the disputed domain name indicates bad faith, the Complainant contends, in line with previous UDRP panel decisions. The Complainant also points out that the Respondent has registered the disputed domain name only in order to sell it back for out-of-pockets costs, which evinces bad faith registration and use.

The Respondent has thus registered and used the disputed domain name in bad faith, according to the

Complainant.

B. Respondent

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

6. Discussion and Findings

Language of the Proceedings

The language of the Registration Agreement for the disputed domain name is Russian. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement.

The Complaint was filed in English. However, the Complainant requested that the language of the proceedings be English for several reasons, including the fact that the English language is the language most widely used in international relations; the disputed domain name is formed by words in Roman characters and not in Cyrillic script; and in order to proceed in Russian, the Complainant would have had to retain specialized translation services. The Complainant submits that the use of Russian in this case would therefore impose a burden on the Complainant which must be deemed significant. The Complainant also points out that although the Complaint is written in English, the Center informed the Respondent in Russian and English and afforded the Respondent the opportunity to respond in Russian. Finally, the Complainant requests that the Complaint be dealt with in English by the Panel for better understanding of the Parties.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceedings shall be English.

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.

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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 (without a hyphen). 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 notes that the disputed domain name is nearly identical to the Complainant’s trademark and its official domain name <saint-gobain.com> operated by the Complainant since 1995. The disputed domain name redirects to a page where it is offered for sale for an amount likely far exceeding out-of-pocket

expenses directly related to the disputed domain name. While aggregating and holding for resale domain
names consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se
illegitimate under the Policy, given the reputation of the Complainant’s trademark and its online presence, the
Panel finds, on the balance of probabilities, that the Respondent is attempting to take advantage of the

Complainant's trademark in order to generate profit, which cannot give rise to rights or legitimate interests.

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 registration and use of a domain name in bad faith.

The disputed domain name is confusingly similar to the widely known and long used registered trademark of the Complainant. The Panel is mindful of the fact that “Saint-Gobain” is a geographic location in France. However, the Panel notes that the Respondent, who is reportedly located in the Russian Federation, has not claimed let alone provided evidence that would establish that the Respondent registered the disputed domain name based solely on its geographical or other non-trademark related meaning and not on the Complainant’s trademark. The fact that the disputed domain name was offered for sale by the Respondent for an amount likely well in excess of his out-of-pocket expenses, together with the reputation of the Complainant’s trademark and its online presence, in the absence of any credible explanation by the

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Respondent, leads the Panel to conclude, on the balance of probabilities, that the Respondent registered and is using the disputed domain name to take advantage of its significance as a trademark owned by the Complainant.

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 <saintgobain.site> be transferred to the Complainant.

/WiIliam A. Van Caenegem/
WiIliam A. Van Caenegem
Sole Panelist
Date: April 8, 2025.