The Complainant is Bouygues SA, France, represented by Altana, France.
The Respondent is James Rid, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2020. On May 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2020, 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 May 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2020. The Center appointed Jane Lambert as the sole panelist in this matter on June 12, 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 The Complainant is a public company incorporated in France with limited liability. The French term for a public limited company is “Société Anonyme” which is commonly abbreviated to the letters “SA”. The corporate name of the Complainant is Bouygues SA. The Complainant has subsidiaries in over 90 countries carrying on business in construction, media, and telecoms. It has registered the word BOUYGUES in France as a trade mark for a wide range of goods and services in various classes under registration number 92408370 on March 3, 1992. It has registered the same word in France as a trade mark for other goods and services. It has registered that word as a trade mark for a variety of goods and services in other countries as well as a lozenge shaped device framing the word BOUYGUES as a trade mark in France and several other countries. The Chairman and Chief Executive Officer of the Complainant is one Martin Bouygues. The disputed domain name was registered on September 6, 2019 and does not resolve to any active website. The Respondent has used the disputed domain name to set up an email account “[...]@bouyguessa.com” in the name of Mr. Bouygues without his knowledge or consent. That account has been used to send emails in Mr. Bouygues’ name but without his knowledge or consent to recipients in different countries requesting their help with an unspecified little problem. Copies of those emails have been annexed to the Complaint. Nothing is known about the Respondent other than the particulars revealed on the WhoIs search. 5. Parties’ Contentions A. Complainant The Complainant requests the transfer of the disputed domain name on the grounds that: - the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights; and - the Respondent has no rights or legitimate interests in respect of the disputed domain name; and - the disputed domain name has been registered and is being used in bad faith. In support of the first ground, the Complainant points to its French registered trade mark number 92408370 for BOUYGUES and all similar registered trade marks. As it is the registered proprietor of all those marks they are all trade marks in which the Complainant has rights. The disputed domain name incorporates the French registered mark in its entirety with the addition of the letters “sa”. As noted above, “SA” is the conventional abbreviation for the words “Société Anonyme” (the equivalent of “PLC” or “Public Limited Company” in the United Kingdom and several other English speaking countries). As for the second ground, the Complainant states that it has never licensed or permitted the Respondent to register the disputed domain name. The Respondent has used the disputed domain name to set up the email account mentioned above and has used the account to send the bogus emails to which reference has been made. None of the circumstances set out in paragraph 4(c) of the Policy applies to this case. In respect of the third ground, the Complainant contends that its marks are registered and would have come to light on a reasonable search. Its business is so large and well established that it is inconceivable that the Respondent had not heard of it when he registered the disputed domain name. It follows that the disputed domain name was registered in bad faith. The use of the disputed domain name to set up a spurious email account and sending bogus emails in the name of the Complainant’s Chairman and Chief Executive Officer constitutes use in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The registration agreement to register the disputed domain name incorporated the Policy. Paragraph 4(a) of the Policy provides as follows: “Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that: (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar The Panel finds that the first element is present. The French trade mark for BOUYGUES mentioned above is undisputedly a trade mark in which the Complainant has rights. The disputed domain name differs from that trade mark only in the addition of the letters “sa”. The Panel notes that those letters stand for “Société Anonyme”. As the trade mark is recognizable in the disputed domain name, the addition of the letters “sa” and the generic Top-Level Domain (“gTLD”) “.com” do not prevent a finding of confusing similarity. See sections 1.7, 1.8, and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel concludes that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests The Panel finds that the second element is present. Paragraph 2.1 of the WIPO Overview 3.0 states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” Because of the size and extent of the Complainant’s trade mark portfolio and the goodwill and reputation likely to accrue to its corporate name by reason of its sales and advertising around the world it is difficult to see how any business could lawfully register or trade under the disputed domain name without the Complainant’s consent. The Complainant denies that it has given such consent. Further, paragraph 4(c) of the Policy lists a number of circumstances that could demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. The Complainant has denied that any of those circumstances apply. The Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Consequently, the burden of production on this element has shifted to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. The Respondent has been given an opportunity to adduce such evidence and make representations but has not taken advantage of that opportunity. Accordingly, the Respondent has failed to discharge his evidential burden. The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Panel finds that the third element is present. Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: the fourth of those circumstances is as follows: “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.” Use of the disputed domain name to set up a spurious email account and use it to send bogus messages is bad faith use of the domain name. It also manifests an intention to attract the recipients of the bogus emails to the spurious email account. Such an account is at an online location other than a website. The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s mark, and the addition of the letters “sa” standing for “Société Anonyme” are likely to exacerbate confusion with the Complainant’s mark. That is because at least some recipients of an email from such an account can be expected to surmise that the email bears the full name of the holding company for a reason and to conclude that it identifies an email from the Complainant. Therefore, the Respondent has used the likelihood of confusion to induce the recipients of the bogus emails to believe that they came from the Chairman and Chief Executive Officer of the Complainant. The object of the exercise has not yet become clear but it may reasonably be inferred that the Respondent would not have gone to the trouble of setting up a spurious account or sending bogus emails had he not expected to derive some pecuniary advantage. It follows that all the requirements of paragraph 4(b)(iv) of the Policy have been satisfied and that is enough to determine in favor of the Complainant. However, out of deference to the submissions of the Complainant the Panel accepts the Complainant’s contention that the registration of the disputed domain name that is confusingly similar to the Complainant’s distinctive and widely known trade mark constituted registration in bad faith and that the use of the disputed domain name to set up a spurious email account and send bogus emails was certainly use in bad faith. The Panel therefore concludes that the Respondent has registered and used the disputed domain name 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 Jane Lambert
Sole Panelist
Date: June 26, 2020
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