Complainant is Bureau Veritas, France, represented by Novagraaf France, France.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“Unites States” or “U.S.”) / Frank Junior, Turkey. 2. The Domain Name and Registrar
The disputed domain name Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2020. On April 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 4, 2020 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 May 7, 2020. 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 May 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 3, 2020. The Center appointed John C. McElwaine as the sole panelist in this matter on June 19, 2020. 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 Founded in 1828, Complainant is a French-based testing, inspection and certification organization. Complainant registered its company name, Bureau Veritas, in France in January 1985. Complainant is the owner of the BUREAU VERITAS trademark and has obtained numerous registrations worldwide for the trademark, including, but not limited to, registrations for the trademark in the European Union (European Union Trade Mark (“EUTM”) Reg. Nos. 004518544 and 005927711), the United States (U.S. Reg. Nos. 3214422, 2871545, 3448092, 3425827, 3425828, and 3425829), Australia (Reg. Nos. 1169634 and 1180194), New Zealand (Reg. Nos. 769695 and 769697), and International Registrations (Reg. Nos. 1289458 and 1291135) designating the European Union, India, the United States, Japan, Republic of Korea, Singapore, and China; all of which cover Complainant’s testing, inspection and certification services. In addition, Complainant is the owner of numerous domain names incorporating the BUREAU VERITAS trademark, including, but not limited to, the In the year 2018, Complainant’s revenue amounted to EUR 4.8 billion. Complainant has more than 400,000 clients, over 77,000 employees, and more than 1,500 offices and laboratories in 140 countries. Complainant primarily provides its services to the maritime and offshore, agri-food and commodities, industry, buildings and infrastructure, certification, and consumer products sectors. On February 21, 2020, Respondent registered the Domain Name. The Domain Name was initially used to reproduce and mimic Complainant’s own United Kingdom and Ireland country-specific website, purporting to offer Complainant’s services, reproducing Complainant's BUREAU VERITAS trademark and logo. The Domain Name does not presently resolve to an active website as a result of Complainant’s take down request to the web hosting company. 5. Parties’ Contentions A. Complainant Complainant contends that the Domain Name should be transferred because each of the three elements required in paragraph 4(a) of the Policy has been established. With respect to the first element of the Policy, Complainant asserts registered rights in the trademark dating back at least as early as August 10, 2004, based on Complainant’s U.S. Reg. No. 2871545, filed on March 4, 2003 and registered on August 10, 2004. Complainant alleges that the Domain Name is comprised of Complainant’s BUREAU VERITAS trademark plus the geographic abbreviation for the United Kingdom – UK – and that the addition of the geographically descriptive term does not distinguish the Domain Name from Complainant’s BUREAU VERITAS trademark. With respect to the second element of the Policy, Complainant alleges that the following establish that Respondent does not have any rights or legitimate interests in the Domain Name: (i) Complainant has never authorized Respondent to use the BUREAU VERITAS trademark or to register the Domain Name; (ii) Respondent has never been commonly known by “Bureau Veritas” or “Bureau Veritas Uk”; (iii) to the best of Complainant’s knowledge Respondent does not own any trademark rights in BUREAU VERITAS or BUREAU VERITAS UK; and (iv) Respondent’s use of the Domain Name to host a website that mimicked Complainant’s own website is not a legitimate noncommercial or fair use of the Domain Name nor, before any notice of the dispute, did Respondent use, or make demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. With respect to the third element of the Policy, Complainant alleges that Respondent registered and used the Domain Name to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's BUREAU VERITAS trademark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on its website or location. Specifically, Complainant alleges that, prior to the takedown of the website hosted at the Domain Name, Respondent used the Domain Name to host a website that mimicked Complainant’s own website and that this was likely done for the purposes of attracting visitors to the Domain Name for the purposes of phishing. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Even though Respondent did not formally reply to the Complaint, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating: (i) the 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 of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Because of the absence of a formal Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2 . Complainant has provided evidence that it is the owner of numerous trademark registrations globally for the BUREAU VERITAS trademark. It is well-established, and the Panel agrees, that the addition of a descriptive/geographic word to a trademark in a domain name does not avoid a finding of confusing similarity. See WIPO Overview 3.0, section 1.8; see e.g., Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768 (citing Playboy Enterprises International Inc. v. Melancia,WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com,WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc, Inter-Continental Hotels Corporation. v. South East Asia Tours,WIPO Case No. D2004-0388). The Domain Name contains Complainant’s BUREAU VERITAS trademark in its entirety, as a dominant element of the Domain Name. The addition of the geographically descriptive abbreviation for the United Kingdom – UK – does not prevent a finding of confusing similarity between the Domain Name and Complainant’s trademark. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s BUREAU VERITAS trademark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as “Frank Junior” and the Panel, therefore, finds, based on the record and the lack of evidence otherwise, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049 (“the Panel notes that the Respondent’s name is ‘Bestinfo’ and that it can therefore not be commonly known by the Domain Name.”) As noted above, as it pertains to Complainant’s allegation that Respondent is not authorized by Complainant to use the BUREAU VERITAS trademark, although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit a formal response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269. Furthermore, the Panel also finds that Respondent was not making bona fide use of the Domain Name under paragraph 4(c), as, based on the uncontroverted facts made of record in the subject proceeding, the Domain Name was being used to mimic Complainant’s own website, potentially for phishing purposes. Prior UDRP panels have found that legitimate rights or bona fide use do not exist when the domain name is used in bad faith to divert users through confusion. See The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan,WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937; MSC Mediterranean Shipping Company Holding S.A. v. Whoisguard Protected, Whoisguard, Inc. / HOSTER NODE,WIPO Case No. D2016-2105; Old Dominion Freight Line, Inc. v. Tyrone B. Bryant, ODFL Services,WIPO Case No. D2019-2693. Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Bad faith registration can also be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. Here, the Panel is satisfied that the BUREAU VERITAS is a globally well-known trademark associated exclusively with Complainant. Based on Complainant’s submission, which was not rebutted by Respondent, Respondent must have known of Complainant’s BUREAU VERITAS trademark when it registered the Domain Name. See WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-0909 (finding that "it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009".) As discussed in the previous section, based on the uncontested facts, Respondent does not appear to have any rights or legitimate interests in the Domain Name and there does not appear to be any justification for Respondent’s choice to register the Domain Name. Accordingly, on balance, there does not appear to be any other reason for Respondent’s registration of the Domain Name other than for the possibility to trade off the goodwill and reputation of Complainant’s BUREAU VERITAS trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed. This is additionally evidence of bad faith registration and use. Furthermore, as noted above, Respondent was using the Domain Name to host a website that mimicked Complainant’s own website, reproduced Complainant's BUREAU VERITAS trademark and logo, and purportedly offering Complainant's services. The Panel accordingly finds that is beyond doubt, based on the uncontested facts of the record, that Respondent had prior knowledge of Complainant's rights and specifically targeted Complainant in bad faith. Where a domain name is so obviously connected with a trademark, its very use by someone with no connection to the trademark suggests opportunistic bad faith (see, e.g., LEGO Juris A/S v. store24hour;WIPO Case No. D2013-0091; LANCOME PARFUMS ET BEAUTE & CIE, L’OREAL v. 10 Selling,WIPO Case No. D2008-0226). For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under 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 Domain Name John C. McElwaine
Sole Panelist
Date: July 3, 2020
Full & Egal Universal Law Academy