WIPO Domain Name Decision D2020-2715 for bouygues-fr.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bouygues SA v. WhoisGuard Protected, WhoisGuard, Inc. / David Lenoir Case No. D2020-2715 1. The Parties

The Complainant is Bouygues SA, France, represented by ALTANA, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / David Lenoir, France. 2. The Domain Nameand Registrar

The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2020. On October 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 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 October 20, 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 October 23, 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 November 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2020.

The Center appointed Alexandre Nappey as the sole panelist in this matter on December 21, 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

Bouygues SA (The Complainant) is a French company founded by Mr. Francis Bouygues in 1952.

The Complainant gradually expanded its activities around three sectors of activity: construction, telecoms and medias, both in France and in other countries and has since branched out into new lines of business.

Bouygues SA has become the group’s holding company. Bouygues is established in more than 90 countries throughout five continents.

The Complainant claims numerous trademark rights and domain name registrations. As France is the key territory here, in view of the Respondent’s alleged location, the Panel finds it pertinent to mention here a few trademark rights with effect in this country:

- French trademark BOUYGUES (word) No. 92408370 of March 3, 1992 in classes 6, 7, 9, 16, 29, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45;

- French trademark BOUYGUES (word) No. 1197243 of March 4, 1982 in classes 6, 16, 19, 28, 35, 37, 40, 41, 42, 43, 44, 45.

The Complainant is a public company incorporated in France, a country which is commonly abbreviated to the letters “FR”.

The disputed domain name was registered on March 28, 2020 and does not resolve to any active website. The Respondent has used the disputed domain name to set up an email account “[...]@bouygues-fr.com” using the name of a former employee of the Complainant, and which has been used to send emails to various companies. 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 - Identity or confusing similarity:

First the Complainant indicates that the domain name is confusingly similar with its prior trademarks BOUYGUES. “The litigious domain name wholly incorporates the Complainant’s trademarks BOUYGUES. This term is easily identified in the disputed domain name, regarding its attack position and it is the first word a consumer will perceive of the litigious domain name. Then, the domain name is necessarily confusingly similar to the Complainant’s trademarks.” - Rights of legitimate interests:

The Complainant claims that “the Respondent cannot have any intellectual property right on the sign BOUYGUES, as the wording “bouygues-fr” has no apparent association with any other person or entity than Bouygues itself. Moreover, the trademarks owner has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks”. The Complainant also states that the disputed domain name is not being used in connection with a bona fide offering of goods and services, as “the litigious domain name has been used to send fraudulent emails by an individual impersonating Bouygues’ former employee, namely Mr.[name redacted]. No less than four French or foreign companies have been contacted by this way, in French or in English and especially between April and May 2020, by emails specifying that Bouygues was interested in buying products from the company contacted”. - Bad faith:

Finally, on the third element of the Policy, the Complainant claims that the Respondent acted in bad faith when registering and using the disputed domain name. Registration took place in bad faith as the Respondent necessarily knew and targeted the trademark BOUYGUES when choosing its domain name. And use was also made in bad faith insofar the Respondent created and sent emails to impersonate a former employee of the Complainant. B. Respondent

The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following. A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns numerous trademark rights in the name BOUYGUES. This trademark is fully reproduced in the disputed domain name .

The addition of the suffix “fr” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Panel finds that the Complainant has succeeded in showing that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant has clearly satisfied its burden of evidence here: the Complainant has argued that it does not know the Respondent, is not linked to the Respondent, and that to its knowledge the Respondent has no rights or legitimate interests in the disputed domain name. Besides, the disputed domain name is not used in connection with a bona fide offering of goods or services. On the contrary, the operation by the Respondent of a phishing scheme demonstrates a lack of rights or legitimate interest.

Furthermore, the composition of the disputed domain name, consisting of the Complainant’s well‑known trademark with an additional term, cannot constitute fair use in these circumstances as it carries a risk of implied affiliation and effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of WIPO Overview 3.0.

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, which has not been rebutted by the Respondent. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered, or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

Bad faith is obvious in the present case:

First, the Respondent has registered the disputed domain name using a false identity and a false address. Indeed, this Panel finds it highly doubtful that the Respondent is linked with the person named in the WhoIs records.

Second, the Respondent had necessarily the Complainant’s trademark in mind when it chose the disputed domain name. Indeed, the disputed domain name not only reproduces the mark BOUYGUES; it is also very similar overall to a number of domain names operated by the Complainant.

Third, the Respondent has operated a phishing scheme impersonating the Complainant and trying to confuse the companies with which it established contacts. The use of a misleading email address, to impersonate the Complainant, lured a number of entities. It attracted them for the commercial gain of the Respondent.

Therefore, the Panel also finds that the disputed domain name was registered and is being used by the Respondent in bad faith.

Accordingly, the third criteria set out in paragraph 4(a) of the Policy is also satisfied. 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.

Alexandre Nappey
Sole Panelist
Date: January 5, 2021

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