Compagnie de Saint-Gobain v yu sheng

WIPO Case No. D2024-5106

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Compagnie de Saint-Gobain v. yu sheng

Case No. D2024-5106

1. The Parties

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

The Respondent is yu sheng, China.

2. The Domain Name and Registrar

The disputed domain name <sain-gobain.com> is registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on registrar verification in connection with the disputed domain name. On December 12, 2024, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 13, 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 in English on December 13, 2024.

On December 13, 2024, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On December 13, 2024, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

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 in English and Chinese of the Complaint, and the proceedings commenced on December 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2025.

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The Center appointed Hong Yang as the sole panelist in this matter on January 16, 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 specialized in the production, processing, and distribution of materials for the construction and industrial markets. It has a history of more than 350 years and is present in 76 countries with around 160,000 employees, generating more than EUR 47.9 billion in turnover in 2023.

The Complainant owns a portfolio of trademarks containing the wording “Saint-Gobain” covering multiple jurisdictions, including the following: European Union Trademark Registration No. 001552843 for SAINT- GOBAIN, registered on December 18, 2001; International Trademark Registration No. 551682 for

, registered on July 21, 1989; and International Trademark Registration No. 740184 for

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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 proceeding shall be English.

6.2 Substantive issues

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.

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 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 disputed domain name incorporates the mark nearly in full, changing the mark only by omitting the letter
“t”, which is an obvious misspelling of the mark (i.e., typosquatting) and is still considered to be confusingly

similar to the relevant mark for purposes of the first element. WIPO Overview 3.0, section 1.9.

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 available record shows that the Respondent was not affiliated or otherwise authorized by the Complainant or held any registration of the SAINT-GOBAIN mark anywhere. There is no evidence indicating that the Respondent may be commonly known by the disputed domain name. The disputed domain name resolved to an inactive page, showing that the Respondent did not make any use of

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or make any demonstrable preparations to use the disputed domain name in connection with a bona fide
offering of goods or services, neither did the Respondent make any legitimate noncommercial or fair use of

the disputed domain name.

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.

Complainant’s trademark. The Complainant’s trademark SAINT-GOBAIN is globally well known and the Complainant’s registration and use of its mark predates the Respondent’s registration of the disputed domain name by years, including in the jurisdiction where the Respondent allegedly resides, therefore the	In the present case, the Panel notes that the disputed domain name incorporates a misspelled version of the domain name. 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. WIPO Overview 3.0, section 3.1.4.
There is a clear absence of the Respondent’s rights or legitimate interests in the disputed domain name as discussed under the section 6.2.B of the Decision, coupled with the Respondent’s failure to submit a response with any credible explanation for the Respondent’s choice of the disputed domain name. This leads the Panel to conclude that it is more likely than not that the Respondent’s registration targeted the Complainant, which constitutes 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.
At the time of filling of the Complaint, the disputed domain name resolved to an inactive page. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) 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 the Respondent’s failure to submit 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.
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 <sain-gobain.com> be transferred to the Complainant.
/Hong Yang/ Hong Yang Sole Panelist Date: January 30, 2025
, , registered on July 26, 2000, designating several jurisdictions including China.
The Complainant also owns various domain names incorporating its trademark SAINT-GOBAIN, including <saint-gobain.com>, registered on December 29, 1995.
The disputed domain name was registered on August 9, 2021. According to the evidence provided by the Complainant, at the time of filling of this Complaint, the disputed domain name resolved to an inactive page.
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.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. 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 proceeding shall be the language of the registration agreement.
The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that: (1) English is widely used internationally; (2) the disputed domain name is formed by words in Roman characters and not in Chinese script; (3) the use of Chinese would impose a burden of higher costs on the Complainant.
The Respondent was, moreover, notified by the Center, in both Chinese and English, of the language of the proceeding, and the deadline for filing a Response in Chinese or English. The Respondent did not make any submissions with respect to the language of the proceeding nor did the Respondent file any Response.