The Complainant is Colas, France, represented by UGGC Avocats, France.
The Respondent is Zhi Hui Chen, China. 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 August 28, 2019. On August 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2019, 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 September 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2019.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on October 2, 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 Complainant is COLAS, a French joint stock liability company, head of an international group one of the leaders in the construction and maintenance of road, air, rail and maritime infrastructure, urban development projects and recreational facilities. The Complainant undertakes about 85,000 projects every year in around 50 countries worldwide having many subsidiaries, including the French company COLAS Rhône-Alpes Auvergne.
The Complainant owns several trademark registrations for COLAS, including the International trademark registration No. 753190, for COLAS (word), registered on February 16, 2001 in classes 1, 19 and 37, as well as the French trademark registrations No. 3051318, for COLAS (word), registered on September 13, 2000 in classes 1, 19 and 37 and No. 1318758, for COLAS (word plus device), registered on July 30, 1985 in classes 1 and 19.
Also, the Complainant owns and operates the domain name .
The disputed domain name was registered on April 25, 2019, and the website is currently inactive. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name incorporates the Complainant’s registered trademark COLAS, with the addition of the words “rhonealpes-auvergne”, which corresponds to the Complainant’s subsidiary “Colas Rhône-Alpes Auvergne” and the word “carrieres” (in English: “quarries”) that refers to one of the Complainant’s activities.
According to the Complainant, the addition of the geographical terms “rhonealpes-auvergne”, as well as the term “carrieres” in the disputed domain name would be insufficient to avoid a finding of confusing similarity with the Complainant’s trademark. Instead, it would reinforce the confusion, the words “rhonealpes-auvergne” is a reproduction of the corporate and trade names of COLAS subsidiary “COLAS Rhône-Alpes Auvergne”, and the word “carrieres” (“quarries”) refers to one of the activities of this company.
The Complainant alleges that the Respondent registered the disputed domain name without authorization, is not known or in any way related to the Complainant and that it lacks any rights or legitimate interests in respect to the disputed domain name.
In addition, the Complainant says that the Respondent’s use of the disputed domain name or preparation to use the disputed domain name demonstrates no intent to use it with a bona fide offering of goods or services.
The Complainant demonstrates that the disputed domain name was linked to a Japanese website used by a Chinese registrant to sell different products with no relation to the Complainant’s activities or with the Rhône-Alpes or Auvergne region, without any reasoned explanation. According to the Complainant, it is evident that the Respondent knew the Complainant’s trademark when registered the disputed domain name.
Finally, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the owner of the trademark registration COLAS in different countries worldwide.
The Complainant’s trademarks predate the disputed domain name.
The disputed domain name incorporates the Complainant’s trademark COLAS in its entirety. The addition of the geographical terms “rhonealpes-auvergne” and the word “carrieres” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademark. Furthermore, the Panel notes that the geographical terms “rhonealpes-auvergne” represent the name of the Complainant’s subsidiary “COLAS Rhône-Alpes Auvergne” and the word “carrieres” refers to one of the Complainant’s activities.
In this regard, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd,WIPO Case No. D2001-0110).
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark COLAS.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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. Instead, the Complaint shows that the disputed domain name was registered and used with the intention of attracting Internet users, for any kind of commercial gain, creating a likelihood of confusion with the Complainant’s trademark and activities.
The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy. In addition noting the similarity of the disputed domain name with the Complainant’s subsidiary the Panel finds that these is a risk of implied affiliation.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The trademark COLAS is registered by the Complainant in several jurisdictions as per the documents presented in the complaint.
The disputed domain name incorporates the Complainant’s trademark COLAS in its entirety with the addition of geographical and descriptive terms with no relation to the Respondent but making direct reference to the Complainant’s trademark and activities.
The complaint shows that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant’s COLAS mark is distinctive and known in its field of activities. Thus, disputed a domain name that comprises such a mark adding those geographical and descriptive terms directly linked to the Complainant’s businesses is already suggestive of the registrant’s bad faith.
The addition of the geographical terms “rhonealpes-auvergne” and the descriptive word “carrieres” (in English: “quarries”) to a disputed domain name linked to a website in Japanese with no relation with that region and/or with “quarries”, is likely to mislead Internet users into believing that the disputed domain name belongs to or is in any manner associated with the Complainant.
Therefore, this Panel finds that the Respondent has intentionally attempted to obtain any kind of commercial gain with the registration of the disputed domain name.
This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark COLAS as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and 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.
Mario Soerensen Garcia
Sole Panelist
Date: October 16, 2019
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