The Complainant is Balfour Beatty plc of London, United Kingdom of Great Britain and North Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Karam Police of St. Brides-super-Ely, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2018. On May 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2018, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on May 29, 2018 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 June 1, 2018.
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 June 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2018.
The Center appointed David Taylor as the sole panelist in this matter on July 6, 2018. 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, Balfour Beatty plc, is the parent company of the Balfour Beatty group, an international infrastructure group providing leading worldwide engineering, construction, and support services. The Complainant has registered trade mark rights in the term BALFOUR BEATTY (European Union Trade Mark No. 016499832, registered on October 5, 2017 for services in classes 6, 7, 9, 11, 14, 16, 18, 19, 21, 25, 28, 35, 36, 37, 39, 41, 42 and 45).
The Respondent appears to be an individual based in the United Kingdom. No additional information about the Respondent is known.
The Domain Name was registered by the Respondent on January 27, 2018. It was being used by the Respondent for the purpose of sending fraudulent emails to various individuals in an attempt to persuade people to rent a property which he claims to own. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has developed a strong name and reputation in relation to engineering, construction, and support services. The Complainant contends that its BALFOUR BEATTY trade mark is a distinctive indicator of the source of its goods and services in the United Kingdom and abroad. As evidence, the Complainant has supplied a copy of its trade mark registration certificate.
Furthermore, the Complainant claims to be the owner of a number of domain names which contain BALFOUR BEATTY trade marks and were registered years prior to the date the Respondent registered the Domain Name. The Complainant submits that these domain names include , , , , , , , and .
In response to each of the requirements under the Policy, the Complainant asserts as follows:
(i) The Domain Name is confusingly similar to the Complainant’s trade mark
The Complainant submits that it relies on the general consensus principle held by prior panelists, that provided a complainant has a registered trade mark (in any jurisdiction) at the time of commencing proceedings, they will satisfy the threshold of holding “rights”, for the purpose of Policy, paragraph 4(a)(i).
The Complainant states that it has many registered trade marks for BALFOUR BEATTY, which can be traced back as early as 1991. Furthermore, the Complainant asserts that its brand has built up substantial recognition in the public domain, supported by the awards and accolades as well as the endorsement on social media.
The Complainant submits that it also relies on previous UDRP panel findings regarding the validity of their rights to the BALFOUR BEATTY trade mark (Balfour Beatty plc v. Steve Levett,WIPO Case No. D2017-1941 and Balfour Beatty plc v. Whoisguard Inc. / James Anderson,WIPO Case No. D2017-0727).
According to the Complainant, the Domain Name is identical, or at the very least, confusingly similar to the Complainant’s BALFOUR BEATTY trade mark as it incorporates the well-known term BALFOUR BEATTY in its entirety, with the exception of a hyphen in between the words “balfour” and “beatty”. The Complainant claims that the addition of the hyphen does nothing to alter the overall impression of the Domain Name in the eyes of an unsuspecting Internet user.
(ii) The Respondent has no rights or legitimate interests in the Domain Name
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that it has established a prima facie case, sufficient to shift the evidentiary burden to the Respondent.
Furthermore, the Complainant submits that the Respondent cannot overcome its evidentiary burden to show any legitimate rights in respect of the Domain Name as the Respondent’s use of the Domain Name is not in connection with bona fide offering of goods or services. The Complainant avers that the Domain Name currently resolves to a blank page, but is still being used by the Respondent in order to engage in illegal activity. Specifically, the Complainant states that the Respondent is using Domain Name for the purpose of sending fraudulent emails to various individuals, using the name Christopher Mark in an attempt to persuade people to rent a property which he claims to own. According to the Complainant, by obtaining personal and financial information from these unsuspecting parties, the Respondent is seeking to financially gain from the deception caused.
Moreover, the Complainant submits that to the best of their knowledge, the Respondent has never been known as “Balfour Beatty” at any point in time.
The Complainant contends that nothing from the content of the Domain Name suggests that the Respondent is making a legitimate noncommercial or fair use as the Domain Name is being used for phishing personal and/or financial information from unsuspecting parties, by using an email address purporting to be the Complainant.
(iii) The Domain Name was registered and is being used in bad faith
The Complainant argues that its trade marks for BALFOUR BEATTY have been in existence for over 20 years, which significantly pre-dates the registration of the Domain Name on January 27, 2018. Furthermore, the Complainant submits that its brand has received widespread recognition, supported by their endorsement on social media, awards, accolades and further ranks as a top hit on popular search engines like Google. As a consequence, according to the Complainant, it is highly likely that the Respondent was aware of the brand at the time of the domain name’s registration.
The Complainant underlines that the Domain Name is being used for the sole purpose of phishing.
The Complainant submits that the Respondent has used inaccurate information in order to register the Domain Name. According to the Complainant, this demonstrates that the Domain Name has been acquired in order to frustrate UDRP proceedings and more distressingly, that the Domain Name was set-up in order to enable the Respondent to continue phishing for the Complainant’s customer information without being identified. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the aforementioned provisions into consideration, the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence that it has registered trade mark rights in BALFOUR BEATTY in connection with engineering, construction, and support services. The Panel is satisfied that the Complainant has established relevant trade mark rights.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. In this regard, the Panel notes that the Domain Name incorporates the Complainant’s BALFOUR BEATTY trade mark in its entirety with the addition of a hyphen between the two terms of the trade mark. The Panel finds that this addition does not avoid the confusing similarity with the Complainant’s trade mark. See section 1.7 of the WIPO Overview 3.0: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
Furthermore, it is widely accepted that the “.com” generic Top-Level Domain is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark.
The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such appropriate allegations or evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See section 2.1 of the WIPO Overview 3.0.
The Respondent is not affiliated or connected in any way with the Complainant and nor has it been authorised by the Complainant to make any use of its BALFOUR BEATTY trade mark. There is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.
The Respondent’s use of the Domain Name to send emails to various individuals in an attempt to persuade people to rent a property which he claims to own, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy, as the Respondent is using the Domain Name, which consists of the Complainant’s trade mark in its entirety with the addition of a hyphen between the two terms composing the trade mark, to fraudulently misrepresent itself as the Complainant in order to unduly take advantage of the Complainant’s rights.
The Complainant has therefore made a prima facie case of the Respondent’s lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut such a showing.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:
“(i) circumstances indicating that you have registered or you have acquired the 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that the Domain Name was registered in bad faith. The Complainant’s BALFOUR BEATTY trade mark not only predates the registration date of the Domain Name, but also enjoys considerable renown in connection with engineering, construction, and support services, as shown by the evidence put forward by the Complainant. Furthermore, the Domain Name incorporates the Complainant’s trade mark in its entirety with the addition of a hyphen. Moreover, almost identically mirrors the Complainant’s domain name . As stated by previous panels, the insertion of a hyphen does not diminish confusing similarity (see Columbia Sportswear Company v. Mahlon Keeler,WIPO Case No. D2000-0206). Prior panels deciding under the Policy have held that “typosquatting is inherently parasitic and of itself evidence of bad faith.” See National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011. Indeed, given the Complainant’s renown and the nature of the Domain Name itself, it is clear that the Respondent had knowledge of the Complainant’s rights at the time of registration of the Domain Name and that the Respondent deliberately registered it to take advantage of such rights.
The Respondent is using the email address attached to the Domain Name, which consists of the Complainant’s trade mark in its entirety with the addition of a hyphen between the two terms composing the trade mark, to send phishing emails. Whilst none of the circumstances set out in paragraph 4(b) of the Policy, as outlined above, perfectly describe the Respondent’s conduct, this list is not exhaustive and so the Panel is free to consider other circumstances for the purposes of determining bad faith use. The Panel therefore finds that the Respondent’s use of the Domain Name for email purposes to fraudulently misrepresent itself as the Complainant is in bad faith.
The Panel also finds that an additional circumstance indicative of the Respondent’s bad faith is the fact that the Respondent registered the Domain Name using false details. Prior panels deciding under the Policy have held that actively providing (and failing to correct) inaccurate, incomplete or false WhoIs data constitutes additional evidence of bad faith.
The Panel draws an adverse inference from the Respondent’s use of a privacy protection service to further conceal its identity. Whilst privacy shields may be legitimate in certain cases, it is difficult to see why the Respondent in this case needs to protect its identity “except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trade marks against infringement, dilution and cybersquatting.” See Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598.
Finally, the Panel also finds that the Respondent’s failure to take part in the present proceedings constitutes an additional indication of its bad faith.
The Complainant has therefore satisfied paragraph 4(a)(iii) 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 Domain Name be transferred to the Complainant.
David Taylor
Sole Panelist
Date: July 20, 2018
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