The Complainant is Bechtel Group, Inc. of San Francisco, California, United States of America ("United States"), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Name Redacted1 / bechtelgroup of South San Francisco, California, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 16, 2017. On November 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 20, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 12, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 14, 2017. 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
Based in the United States, the Complainant is the holding company for a large group of international construction, procurement and engineering companies. The Complainant has established itself as one of the most respected global engineering, construction, and project management companies in the world. Founded in 1898, the Complainant has completed more than 25,000 projects across 160 countries on all seven continents and in 2015 employed approximately 55,000 people. Several projects which the Complainant has managed include the Hoover Dam, the Tacoma Narrows Bridge, the Chunnel, and Bay Area Rapid Transit, among others.
The Complainant owns trademark registrations in the United States through the United States Patent and Trademark Office ("USPTO"). These are: BECHTEL, United States Registration Number 1,047,369, in International Classes 37 and 42, registered on August 31, 1976; BECHTEL, United States Registration Number 1,086,326, in International Class 16, registered on February 28, 1978; BECHTEL, United States Registration Number 1,196,429, in International Class 36, registered on May 25, 1982; and BECHTEL & DESIGN, United States Registration Number 1,047,370, in International Classes 37 and 42, registered on August 31, 1976 (collectively, the "BECHTEL Mark").
The Complainant promotes its subsidiaries' services through its official website at "".
The Disputed Domain Name was registered on October 23, 2017, long after the Complainant began to use the BECHTEL Mark in commerce in 1925, and decades after the BECHTEL Mark was first registered in the United States with the USPTO. The Disputed Domain Name resolves to a web page that allows the user to create a free website. 5. Parties' Contentions A. Complainant
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Respondent is using the Disputed Domain Name as part of a fraudulent phishing scheme to impersonate the Complainant and to fraudulently purchase supplies to be charged to the Complainant.
- The Respondent has falsely identified itself as the Complainant's Chief Executive Officer when it registered the Disputed Domain Name.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the BECHTEL Mark based on its longstanding use as well as its trademark registrations for the BECHTEL Mark in the United States. The Disputed Domain Name consists of the BECHTEL Mark in its entirety along with the descriptive term "group", followed by the generic Top-Level Domain ("gTLD") suffix ".org". It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923.
This is especially true where, as here, the descriptive word is associated with the Complainant. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained "the central element of the Complainant's GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business").
Finally, the addition of a gTLD suffix such as ".org" in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its BECHTEL Mark, nor does the Complainant have any type of business relationship with the Respondent. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for commercial gain as part of a phishing scheme to deceive the Complainant's vendors into believing that they are being contacted by the Complainant. In this phishing scheme, the Respondent sent emails to the Complainant's vendors under the name of the Complainant's Chief Executive Officer to fraudulently induce them to approve the purchase of certain goods. Such a phishing scheme cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. See CMA CGM v. Diana Smith,WIPO Case No. D2015-1774.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
First, the Respondent's phishing scheme to send the Complainant's vendors fraudulent orders via an email address that uses the BECHTEL Mark in the Disputed Domain Name to purchase office supplies evidences a clear intent to disrupt the Complainant's business, deceive its vendors, and trade off the Complainant's goodwill by creating an unauthorized association between the Respondent and the Complainant's BECHTEL Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent's bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright,WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant's trademark, the respondent is held to have registered and used the disputed domain name in bad faith). Several UDRP panels have found that email-based phishing schemes that use a complainant's trademark in the disputed domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy,WIPO Case No. D2015-2135; CMA CGM v. Diana Smith, supra.
Second, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant's BECHTEL Mark for commercial gain.
Third, the Respondent knew or should have known of the Complainant's rights in its widely-used BECHTEL Mark when registering the Disputed Domain Name. The Respondent registered the Disputed Domain Name long after the Complainant first used and obtained its trademark registrations for the BECHTEL Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its BECHTEL Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (a finding of bad faith may be made where the respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name).
Accordingly, the third element of paragraph 4(a) 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.
Lynda M. Braun
Sole Panelist
Date: December 17, 2017
1 The Panel notes the Disputed Domain Name has been registered in the name of the Chief Executive Officer of the Complainant's Organization but in actuality was not registered by him.
Full & Egal Universal Law Academy