The Complainant is Bouygues SA, France, represented by Altana, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Tessier Cosme, France. 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 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 May 19, 2020 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 May 20, 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 the Respondent of the Complaint, and the proceedings commenced on May 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2020. The Center appointed Isabelle Leroux as the sole panelist in this matter on June 22, 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 service group headquartered in France, which operates in nearly 91 countries and which is organized around the three following sectors: construction, telecoms and media. The Complainant owns a vast portfolio of registered trademarks consisting of BOUYGUES, including the following: - French word trademark BOUYGUES, No 92408370, registered on March 3, 1992 in classes 6, 7, 9, 16, 19, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45 and duly renewed; - French semi-figurative trademark BOUYGUES, No 92408369, registered on March 3, 1992 in classes 6, 7, 9, 16, 19, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45 and duly renewed ; - French word trademark BOUYGUES, No 1197243, registered on March 4, 1982 in classes 6, 16, 19, 28, 35, 37, 40, 41, 42, 43, 44, and 45 and duly renewed; - French semi-figurative trademark BOUYGUES, No 1197244, registered on March 4, 1982 in classes 6, 16, 19, 28, 35, 37, 40, 41, 42, 43, 44, and 45 and duly renewed ; - International word trademark BOUYGUES, No 949188, registered on September 27, 2007 in classes 6, 19, and 37 and duly renewed (hereafter, the “Trademarks”). The Complainant also shows that it holds numerous domain names such as: The disputed domain name was registered on August 10, 2019. As of the date of the complaint, the disputed domain name appeared to resolve to an inactive website. 5. Parties’ Contentions A. Complainant (i) The Complainant contends that the disputed domain name is similar to the Trademarks. Firstly, it contends that the disputed domain name is confusingly similar to the Trademarks, which are entirely reproduced in it. In doing so, the Complainant argues that the mere addition of a generic term such as “facturation”, does not have any consequences on the overall impression of the disputed domain name and therefore does not alter the risk of confusion with its Trademarks. (ii) Furthermore, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and was not authorized by the Complainant to use any of the Trademarks. In addition, the Complainant underlines the fact that the website associated to the disputed domain name is not operated, corroborates the finding that the Respondent has no interest in the disputed domain name. (iii) Lastly, the Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant submits that its Trademarks are well known and that the Respondent knew or should have known the existence of the Complainant’s rights at the time of the registration of the disputed domain name. Moreover, the Complainant contends that the non-use of the disputed domain name is “passive holding”, which entails a deliberate and probably fraudulent attempt to misappropriate a certain amount of the Complainant’s assets and constitutes bad faith use. (iv) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has provided evidence that it has rights in the Trademarks and Domain Names well before the Respondent registered the disputed domain name. In comparing the disputed domain name The Panel considers that the mere addition of the dictionary term “facturation”, commonly used in the corporate world, does not avoid a finding of confusing similarity. Further, the adjunction of a hyphen also does not suffice to avoid confusingly similar with the Complainant’s Trademarks. See Prada S.A. v. Chen Mingjie,WIPO Case No. D2015-1466; Carrefour v. Milen Radumilo / United Privacy Corp.,WIPO Case No. D2015-1851. Therefore the Panel finds that the disputed domain name is confusingly similar to the Trademarks and thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Numerous UDRP panels have found that, even though the Complainant bears the general burden of proof under paragraph 4(a)(ii) of the UDRP, the burden of production shifts to the Respondent once the Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). Hence after the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, it will be deemed to have satisfied paragraph 4(a)(ii) of the UDRP when the Respondent fails to submit a response. In this case, the Complainant brings forward the following arguments: - no license or authorization has been granted by the Complainant to the Respondent; - the Complainant has no relationship whatsoever with the Respondent; - no apparent use is being made of the disputed domain name. In light of the foregoing, the Panel does not find any indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or has rights or legitimate interests in any other way in the disputed domain name. Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proved otherwise. Given these circumstances, the Panel finds that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith Considering the fact that the Trademarks were registered long before the registration of the disputed domain name and that the Trademarks are widely used by the Complainant, especially in France where the Respondent is located, the Panel considers that the latter could not plausibly ignore the existence of the Complainant’s Trademarks at the time the disputed domain name was registered and, consequently, finds that the registration was made in bad faith. As to the use of the disputed domain name in bad faith, the disputed domain name resolved, at the time of the Complaint, to an inactive webpage. This indicates that there seems to be no other intention, from the Respondent, than to “passively hold” the disputed domain name. Furthermore, the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. Lastly, the Panel finds that the Respondent’s endeavors to conceal its identity through the use of a proxy service as well as of the use of what appears to be fanciful contact details can be construed as further evidence that the disputed domain name was registered and is being used in bad faith. Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be in bad faith. The disputed domain name being confusingly similar to the Complainant’s Trademarks will only contribute to confusion amongst Internet users. Consequently, the Panel finds that the disputed domain name 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 Isabelle Leroux
Sole Panelist
Date: July 6, 2020
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