ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION COMPAGNIE DE SAINT-GOBAIN v. Jo Jo, saint-gobainplc.com Case No. D2025-3352 1. The Parties The Complainant is COMPAGNIE DE SAINT-GOBAIN, France, represented by Nameshield, France. The Respondent is Jo Jo, saint-gobainplc.com, United Kingdom. 2. The Domain Name and Registrar 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 August 20, 2025. On August 20, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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, saint-gobainplc.com) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 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 August 21, 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 August 22, 2025. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2025. The Response was filed with the Center on September 11, 2025.
page 2 The Center appointed Warwick Smith as the sole panelist in this matter on September 26, 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 long-established French company that specializes in the production, processing and distribution of materials for the construction and industrial markets, with a particular focus on sustainable habitat and construction markets. According to the Complainant, it is now one of the top industrial groups in the world, with 161,000 employees, a 2024 turnover of EUR 46.6 billion, and a presence in 80 countries around the world. One of those countries is the United Kingdom, where the Respondent appears to reside. 1 The Complainant is the registered proprietor of several SAINT-GOBAIN trademarks, which are registered worldwide. It is not necessary to refer to them all. For the purposes of this Decision, it is enough to record that the Complainant has been the registered proprietor of the word mark SAINT-GOBAIN in the European Union registered on December 18, 2001, under registration number 001552843. That registration covers a variety of goods and services in International Classes 1, 2, 3, 6, 7, 8, 9, 10, 11, 12, 17, 19, 20, 21, 22, 23, 24, 37, 38, 40 and 42. The Complainant says that the expression “Saint-Gobain” is commonly used to refer to the Complainant, and it owns many domain names including its SAINT-GOBAIN trademark (including the domain name , which it registered on December 29, 1995). The disputed domain name was registered on August 18, 2025, and it currently resolves to a website which is said to be “under construction”. A screenshot of this website taken on 20 August 2025 shows the title “Coming Soon”, and the disputed domain name written on a dark background with the words: “We’re under construction. Please check back for an update soon.” A DNS search produced by the Complainant shows that email exchange (“MX”) records have been configured at the disputed domain name, showing that it is enabled for the sending and receipt of emails. 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. Specifically, it contends the disputed domain name is confusingly similar to the SAINT-GOBAIN trademark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that there is no company registered under the name “Saint-Gobainplc.com”, and that it has not authorized or licensed the Respondent to make any use of the Complainant’s SAINT-GOBAIN mark, or to apply to register the disputed domain name. 1The Complainant’s 2024 Integrated Annual Report, which is reproduced on its website at “www.saint-gobain.com”, lists the United Kingdom among the countries in which it operates.
page 3 The Complainant says that the Respondent uses the name “saint-gobainplc.com” only to increase the risk of confusion with the Complainant, which is evidence of the Respondent’s lack of any legitimate interest in the disputed domain name. The Respondent has not used the disputed domain name and has not shown any demonstrable plans to use it. On the issue of bad faith registration of the disputed domain name, the Complainant relies on its extensive worldwide use of its SAINT-GOBAIN mark before the disputed domain name was registered, and the well-known character of that mark worldwide. The Respondent obviously knew of the Complainant’s prior rights and wide use of the Complainant’s mark when the disputed domain name was registered, and that was the only reason the Respondent registered the disputed domain name. On the issue of bad faith use of the disputed domain name, the Complainant contends that it is not possible to conceive of any plausible or contemplated use of the disputed domain name that would not be illegitimate, such as by constituting a passing off, by infringing consumer protection legislation, or by infringing the Complainant’s trademarks rights. 2 Alternatively, the MX records, which show that the disputed domain name has been configured to send and receive emails, evidence the Respondent’s bad faith intent – any email emanating from the disputed domain name could not be used for any good faith purpose. B. Respondent On September 11, 2025, the Respondent submitted a one-page document identifying the Respondent and these administrative proceedings and stating beside a heading “Response”: “Domain cancelled as per remedy request.” Beyond that, the Respondent did not make any other submissions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, a complainant is required to establish each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. In this case, 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. Specifically, the Complainant has shown that it is the proprietor of the European Union word mark SAINT-GOBAIN. 2Referring to Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D000-0003, and CBS Broadcasting, inc. v Dennis Toeppen, WIPO Case No. D2000-0400.
page 4 The entirety of that mark is reproduced within the disputed domain name, and the mark is clearly recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Complainant’s SAINT-GOBAIN mark for the purposes of the Policy - WIPO Overview 3.0, section 1.7. The addition of other terms in a disputed domain name (here, the expression “plc”) may bear on the assessment of the second and third elements of the Policy in an appropriate case, but the Panel finds that the addition of such term 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. For completeness, the Panel notes that generic Top-Level Domains (“gTLDs”) such as “.com” are not normally taken into account in the comparison that is required by paragraph 4(a)(i) of the Policy. The gTLD is a technical requirement of registration and is not normally considered to have legal significance in applying paragraph 4(a)(i). 3 The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests 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. Paragraph 4(c) of the Policy provides a list of circumstances in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, but in this case the Respondent has not asserted that it has any right or legitimate interest in the disputed domain name, and none of the circumstances listed in paragraph 4(c) appear to be applicable. The Panel has found that the disputed domain name is confusingly similar to the Complainant’s SAINT-GOBAIN mark, and there is no suggestion that the Respondent is or may have been licensed or otherwise authorized to use the Complainant’s SAINT-GOBAIN mark, whether in a domain name or otherwise. Nor is there sufficient information in the record to establish that the Respondent is or might be commonly known by the disputed domain name (a defense provided for in paragraph 4(c)(ii) of the Policy). The registration details provided by the Registrar do say that the Respondent’s organization is “saint-gobainplc.com”, but that is simply the disputed domain name, and there is no evidence of the Respondent having used that name in commerce or otherwise as the name of any corporate or other organized entity (such that it could be said that the Respondent or any such entity is “commonly” known by the disputed domain name). There is nothing to suggest that the Respondent might have a right or legitimate interest in the disputed domain name under either of the other two subparagraphs of paragraph 4(c) of the Policy. First, the Respondent has not produced evidence that the disputed domain name is being used in connection with any bona fide offering of goods or services, or that the Respondent has made “demonstrable preparations” for any such use (a defense provided for in paragraph 4(c)(i) of the Policy). Secondly, there is no evidence that the Respondent has been making any legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly direct consumers or to tarnish the trademark or service mark (a defense provided for in paragraph 4(c)(iii) of the Policy). 3WIPO Overview 3.0, section 1.11.
page 5 For those reasons, 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. The Panel therefore finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a list of circumstances that may indicate that a domain name was registered and used in bad faith, but the list is non-exhaustive, and 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 this case, none of the circumstances listed in paragraph 4(b) of the Policy apply, and the Complainant invites the Panel to infer bad faith registration and use from a number of factors, including the renown of its SAINT-GOBAIN mark, the confusing similarity of the disputed domain name to that mark, and the difficulty of conceiving of any use to which the Respondent might plausibly put the disputed domain name that would not constitute a passing off, or otherwise infringe the Complainant’s trademark or other legal rights. With respect to the claimed renown of the Complainant’s SAINT-GOBAIN mark, the Panel accepts that the Complainant enjoys substantial goodwill in the mark internationally. Having regard to that international reputation, and to the nature of the disputed domain name incorporating SAINT-GOBAIN and the term “plc” which is commonly understood as an abbreviation for “public limited company” in the United Kingdom where the Respondent is apparently domiciled, the Panel considers it improbable that the Respondent would have chosen as a domain name if he or she was not already aware of the Complainant and its SAINT-GOBAIN mark. Notably in the absence of any denial of such knowledge or a substantive response putting forward any legitimate non-infringing purpose, the Panel infers that the Respondent was aware of the Complainant and its mark when the disputed domain name was registered, and was also aware that a significant number of Internet users who came across the disputed domain name would likely assume, wrongly, that the disputed domain name was owned or authorized by the Complainant. On the available evidence, the Panel therefore concludes that the disputed domain name was registered in bad faith. 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. Where a complainant relies on the passive holding doctrine, panelists will look at the totality of the circumstances in each case. However, there are some factors that have often been considered relevant in applying the passive holding doctrine. These are: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put (WIPO Overview 3.0, section 3.3). The Panel notes that most of these factors are present in this case. The Complainant enjoys a substantial reputation in its SAINT-GOBAIN mark, which is now used in some 80 countries around the world. The Panel finds it probable that that mark has become highly distinctive of the Complainant in its industry and the products it markets under the mark, and the disputed domain name is confusingly similar to the SAINT-GOBAIN mark. The Respondent has failed to submit a response or provide any evidence of any contemplated good faith use of the disputed domain name. The Respondent also used what appears on its face to be an incomplete name in effecting the registration. The Panel also notes that the MX records show that the disputed domain name has been configured for the sending and receipt of emails from the disputed domain name. Any emails sent from the disputed domain name would be likely to cause a number of addressees who were familiar with the Complainant to wrongly assume that the emails came from the Complainant, and in the absence of any denial by the Respondent the Panel considers it more likely than not that the Respondent had the bad faith intention to take unfair
page 6 advantage of the likelihood of confusion of that sort, whether for the purpose of illegal phishing activities or for some other bad faith purpose. For those reasons, the Panel is satisfied that the “passive holding” doctrine applies, and that the disputed domain name was registered and has been used in bad faith. The Complainant has accordingly established its case on 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 be transferred to the Complainant. /Warwick Smith/ Warwick Smith Sole Panelist Date: October 2, 2025
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