The Complainant is Balfour Beatty plc. of London, the United Kingdom, represented by Stobbs IP Limited, United States of America (“United States”).
The Respondent is Ligne Web Services SARL of Golbey, France / Claude Durand of Daloa, Côte d’Ivoire (“First Respondent”) / Graft Petersen of Abidjan, Côte d’Ivoire (“Second Respondent”). 2. The Domain Names and Registrar
The disputed domain names , and are registered with Ligne Web Services SARL (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2018. On December 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 19, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 19, 2018 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint and provide relevant arguments demonstrating that all named Respondents are the same entity and/or that all domain names are under common control; and/or file a separate complaint for any domain name for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and indicate (by short amendment or reply email) which domain name will no longer be included in the current Complaint. The Center has also indicated to the Complainant that the language of the Registration Agreement for the disputed domain names was French, and invited the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceeding.
The Complainant filed a request for English to be the language of proceeding on December 21, 2018 and filed an amended Complaint on December 24, 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 December 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2019.
The Center appointed Alexandre Nappey as the sole panelist in this matter on January 22, 2019. 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.
The Complainant has requested that the disputed domain names be joint in the same decision on the basis that although they seem to be held by different people situated in different countries, based on Registrar WhoIs records for two domain names of the three under dispute, they are in fact held by the same person or at the very least are under common control. The Panel deals with this issue in Section 6B below, but has decided to grant the Complainant’s request. 4. Factual Background
The Complainant is the United Kingdom company Balfour Beatty plc, the parent of the Balfour Beatty group, an international infrastructure group providing leading worldwide engineering, construction and support services.
The Complainant owns BALFOUR BEATTY trademark registrations around the world, among which European Union trademark BALFOUR BEATTY No. 016499832, filed on March 22, 2017, registered on October 5, 2017 and covering goods and services in classes 6, 7, 9, 11, 14, 16, 18, 19, 21, 25, 28, 35, 36, 37, 39, 41, 42 and 45.
The disputed domain names were registered by the Respondent on May 28, 2018.
At the time of the drafting of the decision:
- the website at the disputed domain name resolves to an error page,
- the website at the disputed domain name resolves to a suspension notice on behalf of the Registrar,
- the website at the disputed domain name resolves to a suspension notice on behalf of the Registrar. 5. Parties’ Contentions A. Complainant
The Complainant first alleges that the disputed domain names are similar to its earlier well-known trademark BALFOUR BEATTY, to the point of creating confusion.
The disputed domain names incorporate the Complainant’s trademark BALFOUR BEATTY in its entirety (with the mere addition of an hyphen for the domain name )
Second, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names:
- the Respondent has registered the domain names for e-mail purpose with the ultimate goal of obtaining personal and/or financial information from the Complainant’s customers: such activity cannot constitute a bona fide offering of goods of services;
- the Respondent has never been known as BALFOUR BEATTY at any point in time;
- the Respondent is not making a legitimate non-commercial or fair use of the domain names as the disputed domain names are being used for phishing personal and/or financial information.
Finally, the Complainant claims that the disputed domain names were all registered and are all being used in bad faith. Registered in bad faith:
The Complainant alleges that BALFOUR BEATTY trademark has an existence for over twenty years and is well-known, meaning that it is highly likely that the Respondent was aware of the brand at the time of the domain names’ registration. Used in bad faith:
The Complainant alleges that the three domain names are being used for sole purpose of phishing. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the lack of a formal response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) the disputed domain names are 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 respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the Parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above-mentioned elements are the following: A. Preliminary Issue 1. Consolidation
The Complaint has been filed against three domain names. The two first disputed domain names ( and ) are held in the name of the First Respondent with an address in Ivory Coast. The third disputed domain name () is held in the name of the Second Respondent with a different address in Côte d’Ivoire, but a closely similar phone number. Paragraph 3(c) of the Rules provides that “[t]he Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.
The Complainant contends that the registrant or registrants of the disputed domain names are either one and the same person or, failing that, that the disputed domain names are under common control and that it would be fair and equitable to all parties to deal with both disputed domain names in this administrative procedure. The Complainant has produced evidence to support its contention in this regard. The extracts from the Registrars’ databases for the disputed domain names show that the contact phone number is the same except to the only last figure, which means it may come from the same company. Respondents are based in the same country, the disputed domain names are very similar in their structure (strict reproduction of the Complainant’s mark, hyphen in part of the names), have been registered the same days with the same registrar.
The Respondents have had the opportunity to challenge the Complainant’s contention, but have not availed themselves of that opportunity.
Paragraph 10(e) of the Rules provides that “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” The Panel finds on the balance of probabilities that the Second Respondent is the registrant of all disputed domain names and/or is the controlling force behind those registrations and that it is appropriate that the Complainant’s complaints in respect of the disputed domain names should be consolidated and heard together. 2. Language of proceedings
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Registrar confirmed that the language of the Registration Agreement of the disputed domain names is French.
The Complainant in its Complaint formally requested that the language of the proceeding be English, to which the Respondent failed to reply on or to object.
In the light of the above circumstances, and having to ensure pursuant to paragraph 10(c) of the Rules that the administrative proceeding takes place with due expedition, the Panel, who is conversant in both English and French, determines pursuant to paragraph 11(a) of the Rules that the appropriate language of the proceeding is English. B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights in BALFOUR BEATTY which predate the registration of the three disputed domain names , and .
The Panel finds that the disputed domain names are all confusingly similar to the registered BALFOUR BEATTY trademark owned by the Complainant.
Indeed, the disputed domain names incorporate the entirety of the Complainant’s BALFOUR BEATTY trademark (with the mere addition of a hyphen in the disputed domain name ). The generic Top-Level Domains (“gTLDs”) “.site” and “.info” are disregarded under the first element confusing similarity test.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, the Respondent’s 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 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.
Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden shifts to the respondent to demonstrate its rights or legitimate interests. See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1465.
Here, it results from the circumstances that the Respondent does not own any right on the trademark BALFOUR BEATTY or is commonly known by the disputed domain names and that the Complainant has not authorized, licensed, or consented to the Respondent any use of its BALFOUR BEATTY trademark.
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled. D. 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:
“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 notes that the Complainant submitted printouts showing fraudulent emails have been sent from the address “[S......T.....]@”, built from the disputed domain name , in the alleged name of “Mr S… T…., Managing Director Mayor Projects of BALFOUR BEATTY plc Company”.
The other two disputed domain names resolve to a suspension error page, which does not prevent a finding of bad faith use.
The Panel finds it demonstrates that the disputed domain names are being used in bad faith, for phishing personal and financial information from the Complainant’s customers.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain names in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) 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 disputed domain names, , and be transferred to the Complainant.
Alexandre Nappey
Sole Panelist
Date: February 5, 2019
Full & Egal Universal Law Academy