The Complainant is Colas of Boulogne-Billancourt, France, represented by UGGC Avocats, France.
The Respondent is Benjamin Bouillot of Boulogne-Billancourt, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Ascio Technologies Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 1, 2015. On June 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 29, 2015.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on July 3, 2015. 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 which is the head of the Colas group. The Colas group is major civil engineering company in the construction and maintenance of transport infrastructure.
It employs 61,000 people worldwide and its consolidated revenue amounted to EUR 13 billion in 2013.
The Complainant is the owner of the following COLAS trademarks that are the subject matter of this UDRP proceeding:
- French word & device trademark COLAS, No. 1318758, registered on July 30, 1985, in classes 1 and 19;
- French trademark COLAS, No. 1536207, registered on June 13, 1989, in class 19;
- French word & device trademark COLAS, No. 98738081, registered on June 13, 1989, in class 19;
- French trademark COLAS, No. 3051318, registered on September 13, 2000, in classes 1, 19 and 37;
- International Trademark COLAS, No. 753190, registered on February 16, 2001, in classes 1, 19 and 37;
- Community Trade Mark COLAS, No. 10799559 registered on January 11, 2013, in classes 1, 19 and 37.
The Complainant is also the owner of the domain name .
The Complainant owns many subsidiaries, worldwide. Its French subsidiary, Colas Ile de France Normandie, has operated several units since 1984 using the acronym "COLAS IDFN".
Its subsidiary called "Speig" is in charge of domain name registration and administration, having registered the domain name , which is used by Colas Ile de France Normandie.
The disputed domain name was registered on January 14, 2015 and is registered in the name of Benjamin Bouillot.
The disputed domain name resolves to a webhosting parking page.
Prior to filing the current UDRP proceeding, the Complainant discovered the existence and fraudulent use of an email address associated with the disputed domain name. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain name is an identical reproduction of its COLAS trademarks, and that the addition of the aconym "IDF" is a reproduction of the same three letters used by its subsidiary, Colas Ile de France Normandie. Accordingly, it is at the least confusingly similar to the Complainant's COLAS trademarks.
When registering the disputed domain name, the Respondent mentioned the address of the Complainant's headquarters as "Registrant Organization". The Complainant does not know the Respondent and has not authorized the registration of the disputed domain name. The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent registered the disputed domain name using the Complainant's name and address. The disputed domain name does not resolve to any active website, and has been used to create an email address that purports to be that of one of the Complainant's employees. This email address was used by the Respondent between January 21, 2015 and January 26, 2015, to send emails to the Complainant's suppliers (in the employee's name), for false orders of IT products. This fraudulent use of the disputed domain name to place orders in the name of the Complainant is harmful to the Complainant. The Respondent is using the Complainant's reputation to place orders and obtain the delivery of products without payment. The Complainant relies on a prior case concerning a domain name used to create fake email addresses (See Graybar Services Inc v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017.)
The Respondent's registration of the disputed domain name was solely done to lure people, using a well‑known trademark for purposes of fraud. It is obvious that the Respondent acted not only in bad faith, but fraudulently. The Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is composed of the Complainant's well-known COLAS trademark.
Adding the acronym "IDF", whereas one of the Complainant's subsidiaries uses the acronym "IDFN", does not exclude any likelihood of confusion.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's well-known COLAS trademark.
The condition of paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name:
(i) the Complainant's COLAS trademark is well-known and well established;
(ii) the Respondent has not been authorized by the Complainant to use the COLAS trademark;
(iii) the Respondent chose this well-known trademark for its domain name and merely added the acronym "IDF" which is nearly identical to the acronym "IDFN" used by one of the Complainant's subsidiaries, aiming at misleading people and perpetrating fraud;
(iv) it is apparent from the evidence submitted by the Complainant that the Respondent has made a fraudulent use of the email address connected to the disputed domain name. The Respondent has used the disputed domain name to create a false email address, purporting to be a genuine email address of the Complainant. This false email was used to order goods from the Complainant's suppliers, having the Complainant pay for these goods.
In view of the circumstances and given that the Respondent has not filed a response, the Panel therefore concludes that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location."
The Panel finds that the Respondent was of course aware of the Complainant's prior rights in the COLAS trademarks when registering the disputed domain name.
The evidence shows that the Respondent has registered the disputed domain name to mislead people and that the Respondent has been using it to perpetrate a fraud. The essence of the fraud is that the Respondent has used the domain name to pretend that it is the Complainant and in particular to create a false email address, purporting to be a genuine email coming from the Complainant and one of its employees. This false email address was used to order goods from the Complainant's suppliers and to have the Complainant pay for the goods. Such conduct brings this case within the meaning of paragraph 4(b)(iii) of the Policy. Therefore, the Panel finds that the disputed domain name has been registered primarily for the purpose of disrupting the Complainant's business.
The Panel finds also that the Respondent, by using the disputed domain name as the origin of the emails perpetrating fraudulent activities, intentionally attempted to attract, for commercial gain, Internet users being the Complainant's suppliers to the Respondent's online location, by creating a likelihood of confusion between the Complainant's mark and the source or affiliation of the fraudulent emails, in accordance with paragraph 4(b)(iv) of the Policy.
Further, this type of misleading activities with domain names has been found to constitute bad faith by previous UDRP panels (See e.g. BHP Billiton Innovation Pty Ltd. v. AC International Group Corp / Robert Robins / Whois Privacy Protection Service, Inc.,WIPO Case No. D2012-2065).
The Complainant has demonstrated that the disputed domain name has been registered and used in bad faith. The Panel is of the opinion that there is ample evidence for a finding of bad faith in this case.
Therefore, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant. 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.
Marie-Emmanuelle Haas
Sole Panelist
Date: July 20, 2015
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