The Complainant is Bureau Veritas of Neuilly Sur Seine, France, represented by Novagraaf France SA, France.
The Respondent is Tariq Zargar, Insights marketing & communication of Dubai, United Arab Emirates. 2. The Domain Name and Registrar
The disputed 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 June 29, 2018. On June 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 July 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2018. The Respondent sent an email communication on July 11, 2018 but did not submit any substantive response. Accordingly, the Center notified the Parties about the Commencement of Panel Appointment Process.
The Center appointed Marilena Comanescu as the sole panelist in this matter on August 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, a French based company established in 1828, is using the name Bureau Veritas since 1985 and it is specialized in testing, inspection and quality control services in numerous industries.
The Complainant holds worldwide trademark registrations for BUREAU VERITAS, such as the following:
- the International Registration No. 763643 for word mark BUREAU VERITAS registered on March 29, 2001 and valid until March 29, 2021, for services in International Class 38;
- the European Union Trademark Registration No. 004518544 for word mark BUREAU VERITAS registered on June 1, 2006 and valid until June 30, 2025, for services in International Classes 38 and 42;
- the European Union Trademark Registration No. 005927711 for BUREAU VERITAS 1828 with figurative element registered on February 6, 2008, and valid until May 11, 2027, for services in International Class 42;
- the European Union Trademark Registration No. 007282651 for BUREAU VERITAS 1828 BUREAU VERITAS with figurative element registered on April 16, 2009 and valid until October 2, 2028, for goods and services in International Classes 9, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.
The Complainant also owns domain names reflecting its trademark, such as registered on June 20, 1996, registered on April 29, 2006 or registered on October 20, 2006.
Previous UDRP panels have found the Complainant’s trademark BUREAU VERITAS to be highly distinctive and well-known. See Bureau Veritas v. Perfect Privacy, LLC / Nikolai Timchenko,WIPO Case No. D2018-0751; Bureau Veritas v. Registration Private / Jose Rodriguez,WIPO Case No. DMX2018-0008; and Bureau Veritas v. Whois Protection / Hulmiho Ukolen, Poste Restante,WIPO Case No. D2017-1557.
The disputed domain name was registered on February 6, 2016 and at the time of filing the Complaint it resolved to a website providing inspection services on food, industrial and medical field and displaying on the opening page a logo very similar to the Complainant’s BUREAU VERITAS figurative marks, also stating the following “Bureau Veritas International Inspection Services / We empower you to import the best”.
In the case file documents, the Panel found an email correspondence sent on July 11, 2018 by the Respondent to a third party, claiming that the disputed domain name was registered by the Respondent as a service provider on behalf of its client – the third party and asking the later to respond to the Complaint. Further to this communication on July 13, 2018, the Center forwarded a notification informing the Parties with regard to the option to suspend the proceeding in order to try an amicable settlement. However no reaction was received to any of the above two mentioned communications and therefore the proceeding continued. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark BUREAU VERITAS, the addition of the word “inspection” increases the confusing similarity between the disputed domain name and its mark since BUREAU VERITAS is well-known notably for its inspection services. Further, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith in relation to a website providing identical services with the Complainant and using the Complainant’s word and logo marks with minor alterations and without any authorization. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar
The Complainant holds trademark registrations for BUREAU VERITAS.
The disputed domain name incorporates the Complainant’s trademark in its entirety followed by the term “inspection”. However, such addition does not prevent a finding of confusing similarity.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established by previous UDRP panels that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.net”, “.org”) is typically disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark BUREAU VERITAS, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights in the words “bureau veritas”, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
The Respondent is using the disputed domain name in connection with a website promoting similar services to those offered by the Complainant and displaying without consent the Complainant’s word and figurative marks. This is definitely not a bona fide offering of services or a noncommercial use.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant’s BUREAU VERITAS trademark is registered since at least 2001 and is well-known in relation to testing, inspection and quality control services.
The disputed domain name was registered in 2016 and incorporates the BUREAU VERITAS mark, together with the dictionary word “inspection”, designating one of the Complainant’s main activities under BUREAU VERITAS mark. The word “inspection” designates one of the Complainant’s core activities and therefore such addition in fact increases the likelihood of confusion between the trademark and the disputed domain name.
For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant’s business and targeting its BUREAU VERITAS trademark.
According to the evidence in this file, at the time of filing the Complaint the disputed domain name was used to divert Internet users to a website promoting similar services to those offered by the Complainant and displaying without authorization the Complainant’s word and figurative marks. Registering and using a domain name that incorporates without authorization the Complainant’s mark, diverting Internet users searching for the Complainant to the Respondent’s website, using such domain name for a webpage which promotes identical services to those of the Complainant, all such facts tarnish and dilute the value of the mark BUREAU VERITAS, negatively impacts the Complainant’s business, potentially generate unfair revenues for the Respondent and ultimately constitute bad faith under paragraph 4(b)(iv) of the Policy.
Also, the Respondent did not provide any explanation for its use of the disputed domain name and the Panel cannot find anything in its favor. Given the other circumstances of the case, such behavior may be considered as further evidence of bad faith.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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.
Marilena Comănescu
Sole Panelist
Date: August 8, 2018
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