The Complainant is Colas, Société Anonyme, France, internally represented.
The Respondent is Concept Bale, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2020. On October 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 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 Registrar also indicated that the language of the Registration Agreement was English. Since, the Complaint was filed in French, the Center sent an email communication to the Complainant on October 20, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for French to be the language of proceeding, a Complaint translated into English, or a request for French to be the language of proceedings. On October 21, 2020, the Complainant requested an extension of time to submit the amended Complaint translated into English. The Complainant filed an amended Complaint translated into English on October 26, 2020. The language of the proceedings is English, being the language of the Registration Agreement, according to the paragraph 11(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”). On November 2, 2020, the Complainant submitted additional evidence presented as Annex 12 of the Complaint. 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 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2020. The Center appointed Edoardo Fano as the sole panelist in this matter on December 4, 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. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent. 4. Factual Background The Complainant is Colas Société Anonyme, a French company operating in the construction and maintenance of transport infrastructure field and owning several trademark registrations for COLAS, among which the following ones: - French Trademark Registration No. 3051318 for COLAS, registered on September 13, 2000; The Complainant also operates on the Internet, its official website being “www.colas.com”. The Complainant provided evidence in support of the above. The disputed domain name The Complainant states that the disputed domain name is confusingly similar to its trademark COLAS, as the disputed domain name wholly contains the Complainant’s trademark with the addition of the generic term “project”. Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, since it is using it to fraudulently pass itself off as the Complainant. The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark COLAS is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name. Additionally, the Complainant contends that the use of the disputed domain name for fraudulent activities, as part of a phishing scheme, by sending emails associated with the disputed domain name impersonating the Complainant, qualifies as bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant’s contentions and is therefore in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record. A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman ,WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (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. A. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark COLAS both by registration and acquired reputation, and that the disputed domain name is confusingly similar to the trademark COLAS. Regarding the addition of the word “project” and a hyphen, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the domain name and a trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The addition of the word “project” and the hyphen do not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com,WIPO Case No. D2000-0607). The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Respondent did not file a Response in accordance with the Rules, paragraph 5. The Complainant asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The Complainant states that the Respondent, using email addresses associated with the disputed domain name (i.e., [...]@colas-project.com), is fraudulently passing itself off as the Complainant to approach prospective customers. The Panel is of the opinion that the Respondent’s phishing activity cannot be considered as a use of the disputed domain name in connection with a bona fide offering of goods or services. The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it. Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation, also considering that a subsidiary of the Complainant established in France in 2018 is called Colas Projects. See WIPO Overview 3.0, section 2.5.1. Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, 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 [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) that [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or (iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”. Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark COLAS in the construction and maintenance of transport infrastructure field is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, especially because within the disputed domain name the word “project”, a dictionary term directly referring to the Complainant’s activities, is added to the Complainant’s trademark COLAS. The Panel further notes that the disputed domain name is also used in bad faith in connection to phishing activity, as established by the Complainant by producing emails associated with the disputed domain name via which the Respondent is impersonating the Complainant by pretending to be an employee of the Complainant trying to establish business relationships and reproducing in particular the Complainant’s trademark, company name, address, company registration number as well as the Complainant’s website “www.colas.com”. The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been 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, Edoardo Fano
- International Trademark Registration No. 753190 for COLAS, registered on February 16, 2001;
- European Union Trade Mark Registration No. 010799559 for COLAS, registered on January 11, 2013;
- United Kingdom Trademark Registration No. 448164A for COLAS, registered on May 7, 1924.
Sole Panelist
Date: December 16, 2020
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