The Complainant is Bouygues S.A., France, represented by Nameshield, France.
The Respondent is Rafael Vivier, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2019. On June 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 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 the Complainant on June 20, 2019 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 20, 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 the Respondent of the Complaint, and the proceedings commenced on June 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2019.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on July 23, 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
The following summary sets out the uncontested factual submissions made by the Complainant:
The Complainant is a company based in France that is active in the construction industry through its wholly-owned subsidiary Bouygues Construction.
The Complainant owns a number of registered trademarks for BOUYGUES CONSTRUCTION, including French trademark No. 99820969, registered on November 3, 1999 (“Complainant’s Mark”).
In addition, the Complainant owns, through its subsidiary, a number of a domain names related to the Complainant’s Mark, including , registered since May 10, 1999, and , registered since January 31, 2013.
The disputed domain name was registered on November 26, 2018. As of the date of the decision, the disputed domain name appears to resolve to a website that is under construction. 5. Parties’ Contentions A. Complainant
The Complainant contends that it has rights in the Complainant’s Mark and has produced a print-out of the international registration for BOUYGUES CONSTRUCTION. The print-out indicates that the international registration is based on a French trademark registered on November 3, 1999.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s Mark as it is constituted entirely of the Complainant’s BOUYGUES CONSTRUCTION mark with a few minor differences. The Complainant is of the view that these minor differences do not prevent the likelihood of confusion between the disputed domain name and the Complainant’s Mark. The Complainant has referred this Panel to a number of previous UDRP panel decisions where the Complainant’s rights in other domain names which wholly incorporated the Complainant’s Mark were confirmed by those UDRP panels.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent is not known by the disputed domain name and has not acquired trademark rights in respect thereof. Furthermore, the Complainant submits that the Respondent is not affiliated with it nor authorized by it in any way to use the Complainant’s Mark, nor does the Complainant carry out any activity for, or have any business with the Respondent.
The Complainant also contends that the Respondent used the disputed domain name to pass itself off as a purchase manager of a purported affiliate of Bouygues Construction, the whole-owned subsidiary of the Complainant. The Complainant submits that this cannot constitute a bona fide offering of goods or services or legitimate noncommercial or fair use.
Additionally, the Complainant alleges that since the dispute domain name resolves to a website under construction, this means that Respondent did not make any use of the disputed domain name since its registration, and thus confirms that the Respondent had no demonstrable plan to use the disputed domain name, except for the aforementioned phishing activity. The Panel was referred to the decisions of Boeing Co. v. Bressi,WIPO Case No. D2000-1164.
The Complainant also contends that the Respondent has used and registered the disputed domain name in bad faith. The Complainant submits that the Complainant’s Mark is well known and the Respondent registered the disputed domain name with full knowledge of the Complainant’s Mark. The Complainant further alleges that the Respondent’s knowledge of the Complainant’s Mark is evinced by the Respondent’s use in its phishing activities. In addition to that, the Complainant also alleges that the phishing activity was solid evidence of bad faith use and referred this Panel to the cases of Accor v. SANGHO HEO / Contact Privacy Inc.,WIPO Case No. D2014-1471.
Lastly, the Complainant submits that since the website is still under construction, the Respondent has not demonstrated any activity in respect of the disputed domain name. As such, the Complainant contends that the incorporation of a famous mark into a domain name, coupled with an inactive website, is evidence of bad faith registration and use. The Panel was referred to the decisions of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and CBS Broadcasting, Inc. v. Dennis Toeppen,WIPO Case No. D2000-0400. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the Complainant’s Mark through its abovementioned registrations in France and the other designated countries. The Panel also takes note that the Complainant’s rights in the mark have been recognized in other UDRP decisions.
The disputed domain name comprises the Complainant’s Mark in its entirety and only differs by minor additions, those being (1) the letter “s”, (2) two hyphens, (3) the letters “tp” and (4) the generic Top-Level Domain (“gTLD”) “.com”.
This Panel agrees that a gTLD indicator such as “.com” cannot be taken into consideration in this case when judging confusing similarity and is guided by the section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) where it states that:
“The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”
Regarding the pluralization of the word “construction”, this Panel does not consider the addition of the letter ‘s’ to distinguish the disputed domain name from and the Complainant’s Mark. This Panel is guided by the decision in Indivior UK Limited v. Cimpress Schweiz GmbH,WIPO Case No. D2018-0421 where that panel held that: ‘The addition of a plural “s” does not avoid the confusing similarity between the Domain Name and the Trade Marks’. See also: Oakley, Inc. v. Shi An Liu,WIPO Case No. D2011-1416; Halcyon Yarn, Inc. v. Henry Chan,WIPO Case No. D2004-0336.
As for the hyphens, the Panel agrees with the Complainant that these do not serve to distinguish the disputed domain name from the Complainant’s Mark. In Rolls-Royce plc v. John Holt,WIPO Case No. D2017-1842 (), that panel held that: “The addition of the hyphen does not in any manner eliminate confusion”.
With respect to the letters “tp”, in the absence of any evidence to the contrary, the Panel accepts the Complainant’s submission that this is a common abbreviation of the French term “travaux publics”, which is translated as ‘civil engineering’. This term is descriptive of the Complainant’s services and does not distinguish the disputed domain name from the Complainant’s Mark in any way. This Panel is guided by section 1.8 of the WIPO Overview 3.0, it states that:
“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.”
This Panel refers to the decision of M/s Daiwik Hotels Pvt. Ltd. V Senthil Kumaran S, Daiwik Resorts, WIPO Case No. D2015-1384 where that panel held that:
“it is a well accepted proposition that a domain name that contains a complainant’s trademark along with a generic word that describes its services, sufficiently satisfies the requirement that the disputed domain name is confusingly similar to the complainant’s mark”
As such, the Panel has no hesitation in finding that the Complainant has proved that the disputed domain name is confusingly similar to the Complainant’s Mark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is well settled that a complainant may put forward a prima facie case that the respondent lacks rights or legitimate interests in a domain name. The burden of production then shifts to the respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name in order to rebut that prima facie case. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0 and, Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416.
The Panel is satisfied with the unrebutted evidence adduced by the Complainant in support of its prima facie case. Based on the absence of a response and the absence of any nexus between the disputed domain name and the Respondent’s name, the Panel could not find any justification, rights, or legitimate interests on the part of the Respondent to the disputed domain name. The notoriety of the Complainant’s Mark, as submitted by the Complainant and confirmed by previous UDRP cases, would present a significant hurdle for the Respondent to justify rights or legitimate interests to the trademark without submitting compelling reasons to this Panel to conclude otherwise.
Further, there is also no evidence to indicate that the Respondent is known by the name “Bouygues”, “Constructions”, “tp” or any combination thereof that would afford the Respondent legitimate rights under paragraph 4(c)(ii) of the Policy. The Panel accepts the Complainant’s contention that the Respondent is not affiliated with it, authorized by it in any way to use the Complainant’s Mark nor does the Complainant carry out any activity for or have any business with the Respondent.
The Panel is further convinced that, due to the phishing activity and the inactivity of the website, there was no bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor a noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.
In the circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant. C. Registered and Used in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent had or should have had knowledge of the Complainant’s Mark when it registered the disputed domain name. One key factor that was taken into account to arrive at this conclusion included the fact that the date of registration of the disputed domain name which was many years later from the date the Complainant registered the Complainant’s Mark. Indeed, the Panel takes cognizance that the Complainant has registered their BOUYGUES CONSTRUCTION mark in France as early as 1999. As such, the Panel is satisfied that the Respondent had or should have had knowledge of the reputation and goodwill of the Complainant’s Mark when it registered the disputed domain name.
Furthermore, in the phishing email, the Panel takes note of the Respondent’s use of the Complainant’s logo and the inclusion of the URL of the Complainant’s domain name . There is also a statement in the email’s signature that claims that the Respondent is an affiliate of the Complainant’s wholly-owned subsidiary, Bouygues Construction. When taken together, it appears that the Respondent was aware of the Complainant and was seeking to unlawfully misrepresent a connection between the Respondent and Complainant when there was none. The Panel has no hesitation in making a finding of bad faith in this case despite the inactive website.
In light of the above, the Panel finds that the third element of paragraph 4(a) of the Policy has been met. 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.
Syed Naqiz Shahabuddin
Sole Panelist
Date: August 5, 2019
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