The Complainant is Demathieu Bard Holding 4, France, represented by Cabinet Boettcher, France.
The Respondent is Franck Bruno, 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 January 26, 2021. On January 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2021, 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 January 28, 2021, 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 amendment to the Complaint on January 29, 2021. The Center verified that the Complaint together with the amendment to 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 February 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2021. The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on March 7, 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 French contractor, founded in 1861, which is active in road and rail infrastructure, industrial civil engineering (including large scale urban development projects), and the building industry and real estate sectors. In 2019, the Complainant had a turnover of EUR 1.6 billion. Outside France, it completed projects in Luxembourg, Germany, and North America. The Complainant owns a large portfolio of registered trademarks containing the terms “demathieu” and “bard”, including, inter alia, French trademark DEMATHIEU & BARD no. 3052974 registered on September 21, 2000, International trademark DEMATHIEU & BARD no. 753188 registered on March 1, 2001 and European Union Trade Mark DEMATHIEU & BARD no. 001916535 registered on December 4, 2001 (together referred to hereinafter as: “the Mark”). The domain name The disputed domain name The disputed domain name was initially registered in the name of a proxy service. The identity of the Respondent was disclosed by the Registrar in response to the Center’s request for registrar verification in connection with the disputed domain name. The Complainant has submitted evidence that when active, the disputed domain name resolved to a website featuring the Mark and reproducing visual elements copied and pasted from pages of the Complainant’s official website. 5. Parties’ Contentions A. Complainant (i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, (ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never authorized the Respondent to use the Mark in any manner and that the Respondent has never had any affiliation with the Complainant. (iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent had knowledge of the Mark when registering the disputed domain name. (iv) The Complainant submits that by creating confusion with the Mark for commercial gain, the Respondent is using the disputed domain name in bad faith. (v) 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 6.1. Procedural Aspects: Failure to respond Under the Rules, paragraphs 5(f) and 14(a), the effect of a failure to submit a formal response by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint. Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the absence of a formal response. Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s failure to file a formal response as it considers appropriate under the circumstances. In this case, the Panel finds that the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name. Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith. 6.2. Requirements of paragraph 4(a) of the Policy A. Identical or Confusingly Similar In comparing the Mark with the disputed domain name It is well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity. The Panel finds that the disputed domain name Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent. Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel finds the Complainant has made in this case, based on the facts and arguments set out above. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270, and WIPO Overview 3.0, section 2.1. As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses (or has made bona fide preparations to use) the disputed domain name in a business or otherwise. The disputed domain name, when active, resolved to a website displaying the Mark and reproducing visual elements copied and pasted from pages of the Complainant’s official website. No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name. To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no affiliation with the Complainant, (ii) received no authorization from the Complainant to register or use the disputed domain name and (iii) used the disputed domain name to sell bogus products under the Mark. In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name. C. Registered and Used in Bad Faith As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant in registering a domain name confusingly similar to the Mark. It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. J. Clarke,WIPO Case No. D2001-0775. In this case, considering the fact that the disputed domain name resolved to a website displaying the Mark and reproducing visual elements copied and pasted from pages of the Complainant’s official website, the Panel finds it impossible to believe that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384, citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; and Sembcorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092. Prior UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible, considering the specificity of the activity (see Audi AG v. Hans Wolf,WIPO Case No. D2001-0148). The Panel finds it is indeed not possible to imagine any plausible future active use of the disputed domain name that would not be illegitimate, considering the specificity of the Complainant’s activity. Furthermore, prior UDRP panels have also held that deliberate concealment of identity and contact information may in certain circumstances be indicative of bad faith (see TTT Moneycorp Ltd. v. Diverse Communications,WIPO Case No. D2001-0725, and Schering Corporation v. Name Redacted,WIPO Case No. D2012-0729). In this case, the Respondent has taken active steps to hide its identity and has submitted no evidence of any good faith use of the disputed domain name. The Panel also notes that although using a proxy service to hide the identity of the registrant is not per se conclusive of bad faith registration and use (see Trinity Mirror Plc and MGN Ltd. v. Piranha Holdings,WIPO Case No. D2008-0004), the fact that the Respondent used a proxy service to hide its identity and contact details prevented the Complainant from contacting it. Finally, prior UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name, which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. Ben de Boer,WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex,WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141. The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 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, Louis-Bernard Buchman
Sole Panelist
Date: March 12, 2021
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