The Complainant is Bureau Veritas, France, represented by Novagraaf France, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Narmatha Manokaran, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2021. On March 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 9, 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 March 12, 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 March 16, 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 March 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2021. The Respondent sent emails to the Center on March 12, 2021, March 15, 2021, March 19, 2021, and March 23, 2021. On April 23, 2021, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Nick J. Gardner as the sole panelist in this matter on April 30, 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 based company established in 1828, and which has used the name Bureau Veritas since 1985. It specialises in testing, inspection and quality control services in numerous industries. In the year 2018, the Complainant’s revenue amounted to EUR 4.8 billion. It has more than 400,000 clients, over 77,000 employees, more than 1,500 offices and laboratories in 140 countries. One of the areas it is active in is the marine and offshore industries sector. The Complainant holds worldwide trademark registrations for the words BUREAU VERITAS, including for example International Registration No. 763643 for word mark BUREAU VERITAS registered on March 29, 2001 and European Union Trade Mark Registration No. 004518544 for word mark BUREAU VERITAS registered on June 1, 2006. These trademarks are referred to as the BUREAU VERITAS trademark in this decision. The Complainant also owns domain names reflecting its trademark, such as Previous UDRP panels have found the Complainant’s trademark BUREAU VERITAS to be highly distinctive and well known. See for example Bureau Veritas v. Perfect Privacy, LLC / Nikolai Timchenko,WIPO Case No. D2018-0751; Bureau Veritas v. Registration Private / Jose Rodriguez,WIPO Case No. DMX2018-0008; and Bureau Veritas v. Whois Protection / Hulmiho Ukolen, Poste Restante,WIPO Case No. D2017-1557. The Disputed Domain Name The Complainant contends that the Disputed Domain Name The Panel will treat the Respondent’s email communications of March 12 and 19, 2021 as its response. They read as follows: March 12, 2021: “Kindly provide me the information on what are the essentials needed from my end? And why is my domain has dispute? My domain is registered as per Indian government company registration and we are doing in a genuine way. Moreover, we don’t use or collect any kind of data online. We wonder how can another organization complain us for collecting client data. You can also investigate from our server end that no data in particular is collected from our clients. Kindly resolve this dispute at the earliest. Thanks”. March 19, 2021: “Dear Authority, Thanks for your trailing mails. We do not know which legal body is undertaking. We are getting numerous emails and huge pressure. It really disturbs and disappoints us. We have even mentioned no content is copied or no model is copied or no clients are copied. Though these are the things, we have received uniform domain name dispute. We wonder, if domain name should not uniform, why do ican permits for the selling of those domains and why do government allows to register? In this regard, I would like to withdraw the domain name because it’s a intentionally filed complaint. We are also sorry that we cannot make any kind of payment for intentional things. Amidst this, we would like to request you humbly for not to make the uniform domain names available for the domain buyers. Kindly close this case, you can withdraw www.maritimebureauveritas.com from us. Thanks in advance”. 6. Discussion and Findings 6.1 Preliminary Matters The Panel notes this is a case where one Respondent (WhoisGuard Protected, WhoisGuard, Inc.) appears to be a privacy or proxy service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows: “Panel discretion In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed. Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.” In the present case the Panel considers the substantive Respondent to be Narmatha Manokaran and references to the Respondent are to that person. 6.2 Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that: (i) the Disputed Domain Name is identical with 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 Complainant has rights in the BUREAU VERITAS trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694). It is also established that the addition of a descriptive term (such as here “maritime”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a dictionary or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189). It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests The Panel finds the BUREAU VERITAS trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation. Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use BUREAU VERITAS trademark. The Complainant has prior rights in the BUREAU VERITAS trademark, which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455). The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. The Panel finds the Respondent’s communications very difficult to understand but nowhere do they provide evidence, which suggests the Respondent has any rights or legitimate interests in the Disputed Domain Name. To the extent the Respondent may be suggesting the Disputed Domain Name corresponds to an Indian registered company name no evidence to support that suggestion has been produced and the Panel discounts it. In any event the Respondent’s Website does not purport to be that of an Indian company. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith In the present circumstances the evidence as to the extent of the reputation the Complainant enjoys in the BUREAU VERITAS trademark, and the fact that the Disputed Domain Name was linked to the Respondent’s Website lead the Panel to conclude the registration and use were in bad faith. The Panel concludes that the Respondent chose to register a name comprising the Complainant’s trademark combined with the descriptive word “maritime” in order to facilitate a scheme where the Respondent produced a website, which purported to be that of a non existent organisation called “Maritime Bureau Veritas”. That clearly was not coincidental but some sort of scheme to produce a website, which would be taken to be that of the Complainant or in some way endorsed by or associated with the Complainant. Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: (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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. In the present circumstances the Panel finds the Respondent’s exact motivation is difficult to discern – on the evidence before the Panel it cannot tell how the Respondent’s Website has been used or what purpose it served. It seems more likely than not that factor (iv) applies as the Panel infers Respondent was seeking to achieve some form of commercial gain by in effect impersonating the Complainant. If for any reason financial gain was not the Respondent’s motive the Panel would in that circumstance infer that factor (iii) applies given Respondent’s Website is clearly confusing in the way it mimics the Complainant’s well known business. The Panel also notes that the Respondent’s emails (see above) do not provide any explanation the Panel can understand as to any case of good faith that the Respondent might have. The Panel infers that none exists. Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Nick J. Gardner
Sole Panelist
Date: May 14, 2021
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