The Complainant is Bechtel Group, Inc. of Reston, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Arban Mas of Kampal, Uganda. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2018. On September 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 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 October 2, 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 October 4, 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 October 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2018. The Respondent did not submit any response, but sent an email to the Center on October 12, 2018, stating “Dear Sir or Madam thanks for your response am just a smell domains Registrar as been given am not responsible of personnel web sets / domains name coming from as long as can be Registrarde am so sorry to hare that is ther any thing I can please help”. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on October 25, 2018.
The Center appointed Jane Lambert as the sole panelist in this matter on October 31, 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 is the holding company of a large group of construction, engineering and procurement companies employing more than 50,000 persons. Those companies are known collectively as “the Bechtel Group”. Since its formation in 1898, the Complainant and its subsidiaries have completed over 25,000 projects in 160 countries including the Hoover Dam, Tacoma Narrows Bridge and the Channel Tunnel.
The Complainant has registered the mark BECHTEL as a trademark for goods and services in classes 16, 36. 37 and 42 in the United States under registration numbers 1047639, 1086327 and 1106429, and in the European Union for services in classes 37 and 42 under registration number 3514809. The Complainant promotes the business of the Bechtel Group through a website that uses the domain name.
Nothing is known of the Respondent other than the particulars that have been supplied by a privacy service that appears to be in Panama which holds the Disputed Domain Name for a natural person or entity that seems to be located in Uganda.
The Respondent registered the Disputed Domain Name on May 23, 2018.
When typed into a browser together with the letters “www”, the Disputed Domain Name reverts to a web page headed with the words “403 FORBIDDEN” and a request to report the error page to the webmaster. However, the Complainant has exhibited screen dumps of some pages that it had previously found at that URL in Annex 3 to the Complaint and these appear to have been copied from the Complainant’s website. 5. Parties’ Contentions A. Complainant
The Complainant claims the transfer of the Disputed Domain Name on the following grounds:
- The Disputed Domain Name is confusingly similar to a trade mark or service mark in which the complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain name; and
- The Disputed Domain Name has been registered and is being used in bad faith.
As to the first ground, the Complainant says that the only differences between the Disputed Domain Name and its registered marks are the addition of the particle “-groups” and the suffix “.com”. In previous cases, such as Inter IKEA Systems B.V. v. Franklin Lavall?e/IkeaC,WIPO Case No. D2015-2042 (December 22, 2015), such additions have been disregarded. The Complainant also refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at Section 1.8 which states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
As to the second ground, the Complainant has found no evidence that the Respondent is commonly known by the Disputed Domain Name. It refers to World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642 (June 6, 2008) in support of its contention that a respondent, or his/her organization or business, must have been commonly known by the Disputed Domain Name at the time of its registration in order to have a legitimate interest in the same. It adds that it has never licensed, authorized or permitted the Respondent to register any domain names that incorporate the Complainant’s trade mark.
As to the third ground, the Complainant submits that the Respondent registered a domain that was confusingly similar to the Complainant’s trade mark in order to attract for commercial gain Internet users to its website. It points to the similarity of the Disputed Domain Name to the BECHTEL mark and the screen dumps in Annex 3 to the Complaint.
The Complainant refers to the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (February 18, 2000) and argues that this is also a case of passive holding.
It contends that the use of a privacy service and the registration of the corporate name and trade mark of a well-known company as a domain name also betoken bad faith. B. Respondent
The Respondent did not reply formally to the Complainant’s contentions. 6. Discussion and Findings
The agreement by which the Respondent registered the Disputed Domain Name incorporated by reference paragraph 4(a) of the Policy which provides as follows:
“Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar
The Panel finds that the first element is present.
The Disputed Domain Name combines the word BECHTEL (which is registered as a trade mark in the United States under registration numbers 1047639, 1086327 and 1106429) with the word “group.” It is well-known that the Complainant is a United States company with a group of subsidiaries throughout the world. Anyone seeing the Disputed Domain Name would assume that it had been registered and was being used by the Complainant. That assumption would be reinforced upon seeing the content in Annex 3 to the Complaint.
The Disputed Domain Name is confusingly similar to the above mentioned United States trade marks in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel finds that the second element is present.
Paragraph 4(c) of the Policy contains examples of circumstances in which a respondent can show rights or legitimate interests in a Disputed Domain Name. There is no evidence that any of these applies. If such evidence exists, the Respondent had an opportunity to adduce it and it has failed to do so.
By virtue of the Complainant’s trade mark registrations and business activities around the world since 1898, the public and businesses in every country in which the Complainant has done business are likely to associate the mark BECHTEL with the Complainant. The Complainant has stated that it has never granted any consent to use its marks in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel finds that the third element is present.
Paragraph 4(b) of the Policy provides:
“Evidence of Registration and Use in Bad Faith. For the purposes of paragraph 4(a)(iii), 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 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 trademark 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 trademark 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 web site 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 your web site or location or of a product or service on your web site or location.”
The Panel finds that the fourth of those circumstances was present. The Respondent used the Disputed Domain Name as the URL for a website that displayed the matter in Annex 3 to the Complaint. The Panel has already found the Disputed Domain to be confusingly similar to the Complainant’s mark. Internet users are likely to have supposed the Respondent’s site belonged to the Complainant and/or the products or services appearing on that site to have been supplied by the Complainant. While it may not be clear exactly how the Respondent used or intended to make use of such traffic, the Respondent could obtain all sorts of commercial benefits from attracting visitors to its site. An intention may be inferred from the steps taken by the Respondent.
In the absence of any evidence or explanation from the Respondent the Panel must conclude that the Disputed Domain Name was registered and is used in bad faith. 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.
Jane Lambert
Sole Panelist
Date: November 14, 2018
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