The Complainant is Colas, France, internally represented.
The Respondent is Contact Privacy Inc., Customer 1248324931, Canada / Ryan Clarke, 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 November 17, 2020. On November 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 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 November 27, 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 December 8, 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 December 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2021. The Center appointed Fabrice Bircker as the sole panelist in this matter on February 4, 2021. 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 globally leading French company established in 1929 and specialized in construction and maintenance of transport infrastructure. The Complainant employs around 57,000 people and undertakes about 72,000 projects every year via a network of 800 construction units and 3,000 material production and recycling sites in five different continents. In 2019, the Complainant’s consolidated revenue totaled EUR 13,6 billion with EUR 6,596 billion being generated in France. The Complainant offers its services, projects and products worldwide under its brand COLAS, which is protected worldwide through many trademark registrations, such as: - United Kingdom trademark registration No. UK0000448164A for COLAS in classes 1, 2, 3, 4, 6, 16, 17, and 19, registered on May 7, 1924, and regularly renewed since then; - International trademark registration No. 1380590 for COLAS and device in classes 1, 19, and 37, registered on July 26, 2017, and notably protected in the European Union, Australia, India, Oman, and the African Intellectual Property Organization. Besides, the Complainant has a subsidiary named Colas Projects, which has been established in France in 2018 and which is dedicated to the management and coordination of major infrastructure projects worldwide. The disputed domain name, It does not resolve to any active website. However, according to the record of the case, the disputed domain name was used to send emails by which the Respondent, by deceitfully pretending being the Complainant’s purchase manager and by communicating a false proof of payment, has conducted a company to deliver goods. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar The Complainant contends that the disputed domain name is confusingly similar to its trademark COLAS, as it fully reproduces said trademark by merely adding the generic French term “projets” which means “projects”. Rights or Legitimate Interests In substance, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name because i) it has never been operating any legitimate activity under the names “COLAS” or “COLAS PROJETS”, ii) it has no prior registered rights to the name “COLAS” or “COLAS PROJETS”, iii) it has not been authorized by the Complainant to use the name “COLAS” or “COLAS PROJETS”. In addition, the Complainant contends that the disputed domain name is neither used in connection with a bona fide offering of goods or services nor with a legitimate noncommercial or fair use, as it does not resolve to an active website and because it was used to swindle a third party by usurping the Complainant’s identity. Registered and Used in Bad Faith First, the Complainant highlights that the COLAS trademark enjoys a global attractiveness and reputation. Then, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith because it has used it for fraudulent activities (namely, sending emails impersonating the Complainant intended to obtain the delivery of merchandises from a third party and without consideration of any payment). B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Taking the foregoing provisions into consideration the Panel finds as follows. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark. Annex 5 to the Complaint shows trademark registrations for COLAS in the name of the Complainant, in particular those detailed in Section 4. above. Turning to whether the disputed domain name There is a consensus view among UDRP panels that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8). In the present case, the word “projets” (which is a French word meaning “projetcs”) is a dictionary term and is separated to the COLAS trademark by a hyphen. As a consequence, the element “-projets” does not prevent the Complainant’s trademark to remain recognizable within the disputed domain name. Besides, gTLDs may be ignored for the purpose of assessing confusing similarity, because they only play a technical function. In light of the above, the Panel finds that the first element under the Policy set for by paragraph 4(a)(i) is fulfilled. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the Respondent], [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 (see WIPO Overview 3.0, section 2.1). In the present proceeding, the Respondent has not been authorized by the Complainant to register and to use the disputed domain name. Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name. Furthermore, according to the record of the case, the disputed domain name was used to send emails by which the Respondent, by deceitfully pretending being the Complainant’s International Sales Manager and by communicating a false proof of payment, has conducted a company to deliver goods. Obviously, such use of the disputed domain name, which is not refuted by the Respondent, does not amount at all to a legitimate noncommercial or fair use of the disputed domain name. On the contrary, such use is made with intent for commercial gain by deceiving third parties by fraudulently impersonating the Complainant. In this respect, Panels have categorically held that the use of a domain name for illegal activity (such as phishing or impersonation) can never confer rights or legitimate interests on a respondent (see WIPO Overview 3.0, section 2.13 or Colas, Société Anonyme v. Concept Bale,WIPO Case No. D2020-2733). In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden of production now shifts to the Respondent to show that it does have some rights or legitimate interests. The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation or evidence that demonstrates any rights or legitimate interests in the disputed domain name. Based on the above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the second element in paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the disputed domain name in bad faith. The circumstances deemed to be evidence of the registration and use of a domain name in bad faith listed at paragraph 4(b) of the Policy are non-exhaustive examples. In the present case, the Panel notes that: - the use of the COLAS trademark by the Complainant predates the registration of the disputed domain name by almost one century, - the COLAS trademark enjoys a substantial international reputation and attractiveness, - The disputed domain name was used to create at least one email address as from which emails deceitfully impersonating the Complainant were sent in order to fraudulently obtain from their recipient the delivery of merchandises (the Respondent even communicated to the victim a false proof of payment by wire transfer), - the fraudulent messages sent by the Respondent contained, in their signature, the COLAS and device trademark and the full contact details of the Complainant, - the presence of the word “projets” in the disputed domain name makes it almost identical to the company name Colas Projects, which is one of the subsidiaries of the Complainant; this circumstance constitutes additional evidence that the disputed domain name was registered and used with the aim to mislead the public, - the Respondent, by remaining silent in the present procedure, has not contested the Complainant’s contentions. It necessarily results from the above findings that the Respondent registered the disputed domain being fully aware of the Complainant’s prior rights and that it is intentionally using the disputed domain name for commercial gain by deceiving third parties by fraudulently impersonating the Complainant. In this respect, it is of constant case-law that the use of a domain name for per se illegitimate activity such swindling or identity theft are manifestly considered evidence of bad faith (see WIPO Overview 3.0, section 3.1.4, Colas, Société Anonyme v. Concept Bale,WIPO Case No. D2020-2733 or COLAS, Société Anonyme v. Elliott Murray,WIPO Case No. D2020-2417). For all the reasons set out above, the Panel concludes that the disputed domain name was registered and is being used in bad faith, within the meaning of 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 disputed domain name, Fabrice Bircker
(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.
Sole Panelist
Date: February 18, 2021
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