Complainant is Bouygues S.A., France, represented by Nameshield, France.
Respondent is Domain Administrator, Registrant of (apiname com), Turkey / Lepot Charlotte, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2019. On June 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2019, 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 Complainant on June 12, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 12, 2019.
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 Respondent of the Complaint, and the proceedings commenced on June 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 5, 2019.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 12, 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. 4. Factual Background
Complainant is Bouygues S.A., a diversified group of industrial companies operating in 93 countries. Its businesses focus on both construction, with Bouygues Construction, Bouygues Immobilier, Colas and telecoms and media with French TV channel TFI and Bouygues Telecom. Its subsidiary Bouygues Construction is a global player in construction and services, designs and builds buildings and structures, public and private buildings, transport infrastructures, energy and communications networks.
Complainant has duly shown trademarks rights in the BOUYGUES CONSTRUCTION mark, including International Trademark Registration No. 732339, registered on April 13, 2000.
Complainant currently operates its activities, through its subsidiary, with several domain names, including registered on May 10, 1999.
Respondent owns the disputed domain name , which was registered on May 20, 2019.
The disputed domain name is used to send fraudulent emails, impersonating Complainant’s chief purchasing officer. Moreover, the disputed domain name resolved to a Registrar parking page and is currently inactive. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to its BOUYGUES CONSTRUCTION trademark. Indeed, Complainant states that the reversal of the two terms “bouygues” and “construction”, and the addition of the letter “s” at the end of the word “construction” are not sufficient to avoid a risk of confusion between Complainant’s trademark and the disputed domain name.
Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant asserts that the disputed domain name points to a Registrar parking page and is not used since its registration. In addition, the disputed domain name was used in connection with fraudulent emails, impersonating Complainant’s chief purchasing officer and is therefore used in a phishing scheme. Complainant further asserts that Complainant has granted no license nor authorization to Respondent to use or register the disputed domain name.
Complainant claims that the disputed domain name was registered and is used in bad faith. First, Complainant argues that the disputed domain name was registered in bad faith. Complainant’s trademark BOUYGUES CONSTRUCTION is well known and that it is difficult to imagine that Respondent could have ignored said trademark at the time it registered the disputed domain name. Moreover, the disputed domain name is used to send fraudulent emails in order to misuse the identity of one of Complainant’s employees.
Second, Complainant also argues that the disputed domain name was used in bad faith. Complainant further asserts that the disputed domain name is being used for fraudulent purposes, therefore showing a phishing scheme. B. Respondent
Respondent did not reply to Complainant’s contentions and is therefore in default. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of 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 foregoing 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 in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview 3.0.
The Panel finds that Complainant has duly shown trademark rights in the BOUYGUES CONSTRUCTION mark.
First, the generic Top-Level Domain (“gTLD”) is generally disregarded under the confusing similarity test, as it is a functional element. See section 1.11 of the WIPO Overview 3.0. Thus, the Panel notes that “.com” should not be taken into account when comparing the disputed domain name with the claimed trademarks as it is only a technical and necessary part of the disputed domain name with no distinguishing feature nor legal significance (See Figaro Classifieds v. Bernard Elkeslassy,WIPO Case No. D2016-2234).
Second, Complainant states that the disputed domain name includes in its entirety the trademark BOUYGUES CONSTRUCTION except in respect to the reversal of the two terms “bouygues” and “construction”, and the addition of the letter “s” at the end of the word “construction”, which do not prevent a finding of confusing similarity between Complainant’s trademark and the disputed domain name.
Previous UDRP panels have found that the reversal of two words does not remove confusion (see Six Continents Hotels, Inc. v. Wang Qing Feng,WIPO Case No. D2016-0194: “the disputed domain name […] is confusingly similar to Complainant’s trademark HOTEL INDIGO […]. The reversal of the words does not remove any confusion”).
Previous UDRP panels have also held that “pluralizing Complainant’s trademark does not avoid confusingly similarity between the disputed domain name and the mark” (see Dr. Ing. H.c. F. Porsche Aktiengesellschaft v. John Smith,WIPO Case No. D2014-1859).
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks.
Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.
Complainant is required to establish a prima facie case that 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 Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
Firstly, Complainant claims that it has granted no license or authorization to Respondent to make any use of Complainant’s trademark. Thus, Complainant contends that Respondent is not related in any way to Complainant’s business.
Secondly, the Panel finds that Respondent’s lack of rights or legitimate interests in the disputed domain name can be inferred in the circumstances of this case from Respondent’s failure to respond to Complainant’s contentions (seePomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493: “non‑response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
Finally, the disputed domain name is pointing to a Registrar parking page. In addition, Respondent sent fraudulent emails from the email address “service.achat@”, pretending to be Complainant’s chief purchasing officer to conduct a phishing scheme.
The Panel thus considers that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and cannot claim a bona fide offering of goods or services.
The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
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 Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.
First, Complaint argues that its trademark BOUYGUES CONSTRUCTION is well known. The reputation of the trademark BOUYGUES CONSTRUCTION has been recognized in various decisions (see Bouygues v. Laurent Bertrand,WIPO Case No. D2016-1683; Bouygues v. Angelique Benetti,WIPO Case No. D2019-1101.
Moreover, Complainant claims that given the reputation and distinctiveness of Complainant’s trademark, it can be inferred that Respondent was aware of Complainant when it registered the disputed domain name (see Ferrari S.p.A v. American Entertainment Group. Inc.,WIPO Case No. D2004-0673).
The Panel therefore finds that Respondent could not have ignored the trademark BOUYGUES CONSTRUCTION at the time it registered the disputed domain name .
The Panel thus finds that the disputed domain name has been registered in bad faith.
Second, Complainant claims that the disputed domain name currently resolves to a parking page and has been used in connection with a phishing scheme. Previous UDRP panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. See WIPO Overview 3.0, section 3.4. Complainant had provided evidence that the disputed domain name is used to send fraudulent emails impersonating Complainant’s chief purchasing officer. The Panel thus finds that the disputed domain name has been used in bad faith.
Previous UDRP panels have held that respondent acted with opportunistic bad faith in cases in which the disputed domain name appears confusingly similar to complainants’ well-known trademarks (See Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio v. Min Zhi,WIPO Case No. D2013-0020; Sanofi v. Whois Agent, Whois Privacy Protection Service, Inc. / Jim Moretta,WIPO Case No. D2016-0096). Furthermore, the Panel notes that the reversal of the order of the words shows bad faith. The Panel is prepared in these circumstances to conclude that Respondent attempted to use Complainant’s trademarks to divert Internet users who have the misfortune of reversing the two terms in Complainant’s domain name or trademark away from Complainant’s website to Respondent’s website.
The Panel therefore finds that the circumstances of this case strongly suggest that Respondent has both registered and used the disputed domain name in bad faith.
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 disputed domain name be transferred to Complainant.
Nathalie Dreyfus
Sole Panelist
Date: July 22, 2019
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