The Complainant is Bureau Veritas, France, represented by Novagraaf France, France.
The Respondent is \u0e1b\u0e23\u0e34\u0e0d \u0e40\u0e1b\u0e23\u0e21\u0e1a\u0e23\u0e34\u0e23\u, Thailand.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2021. On April 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 23, 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 April 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 May 3, 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 May 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021. On May 6 and 7, 2021, the Respondent sent informal communications to the Center, but the Respondent did not submit any formal response. Accordingly, the Center informed the Parties on May 25, 2021 that it was proceeding to panel appointment. The Center appointed Lynda M. Braun as the sole panelist in this matter on June 2, 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 Founded in 1828, the Complainant is a French company that specializes in testing, inspection and certification. The Complainant operates in a variety of sectors, including building and infrastructure, agri-food and commodities, marine and offshore, and consumer products. The Complainant has approximately 400,000 clients, 77,000 employees, and 1,500 offices and laboratories in 140 countries worldwide. The Complainant has numerous trademarks in jurisdictions worldwide, including, but not limited to: BUREAU VERITAS, European Union Trade Mark Registration No. 004518544, registered on June 1, 2006 in international classes 38 and 42; BUREAU VERITAS 1828 and device, European Union Trade Mark Registration No. 005927711, registered on February 6, 2008 in international class 42; and BUREAU VERITAS, International Trademark Registration No. 1289458, registered on December 23, 2015 in international class 24 (designating several jurisdictions) (hereinafter collectively referred to as the “BUREAU VERITAS Mark”). In addition, the Complainant owns the The Disputed Domain Name was registered on April 7, 2021. The Disputed Domain Name resolves to a website that reproduces the Complainant’s trademark and logo in an attempt to mislead the consumers mistakenly arriving at the website. The website also includes similar sections and reproduces some of the same photographs as those that are part of the Complainant’s official website. The website is labeled “Access BV” and has a similar look and feel as the Complainant’s official website. The website states that “AccessBV is Bureau Veritas’ umbrella brand for various Customer Portals”, demonstrating that the Respondent is impersonating the Complainant to solicit inquiries from unsuspecting consumers who believe that they are communicating with the Complainant. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and - the Disputed Domain Name was registered and is being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent Several emails written by the Respondent’s friend were received on May 6 and 7, 2021 because the Respondent (according to his friend) does not understand English. The emails stated that the Respondent was hired by a group of individuals to register the Disputed Domain Name and create the website for them, that the Respondent had no knowledge of their bad intentions, that the server of the Disputed Domain Name has been shut down permanently, and that the Respondent was willing to cooperate. No additional communication was received. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding: (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 was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the BUREAU VERITAS Mark. It is uncontroverted that the Complainant has established rights in the BUREAU VERITAS Mark based on its years of use as well as its registered trademarks for the BUREAU VERITAS Mark in numerous jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the BUREAU VERITAS Mark. The Disputed Domain Name consists of the BUREAU VERITAS Mark in its entirety preceded by and connected by a hyphen to the dictionary or descriptive term “access”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of another term. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary word to a trademark does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0 , section 1.11 . Thus, the Panel considers that the Disputed Domain Name is confusingly similar to the Complainant’s BUREAU VERITAS Mark. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has 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 production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0 , section 2.1 . There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s BUREAU VERITAS Mark. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name. Moreover, the Complainant does not have any business relationship with the Respondent and based on the use made of the Disputed Domain Name to resolve to a website that impersonates the Complainant and displays the Complainant’s trademarks and logo, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. Finally, the composition of the Disputed Domain Name, comprising the entirety of the BUREAU VERITAS Mark with a hyphen and dictionary term, carries a risk of implied affiliation and cannot constitute fair use here, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(b) of the Policy. First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BUREAU VERITAS Mark. The Panel finds that the Respondent registered the Disputed Domain Name to attract customers to its website by using a domain name that is confusingly similar to the Complainant’s BUREAU VERITAS Mark. The use of a domain name to intentionally attempt to attract Internet users to a registrant’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith. Second, the registration of the Disputed Domain Name is aimed to disrupt the Complainant’s business by diverting Internet users who are searching for the Complainant’s services or products from its genuine website as well as to prevent the Complainant from registering the Disputed Domain Name. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. The Panel thus concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. Moreover, UDRP panels have consistently found that the mere registration of a domain name that reproduces a widely-known trademark in its entirety (being identical or confusingly similar to such trademark) plus a descriptive term by an individual or entity that has no relationship to that mark, can by itself create a presumption of bad faith. See WIPO Overview 3.0 , section 3.1.4 . Further, the Disputed Domain Name Finally, the Respondent improperly reproduces the Complainant’s trademarks and logo on its website and has the look and feel of the Complainant’s official website. In addition, the website states that “AccessBV is Bureau Veritas’ umbrella brand for various Customer Portals”. Thus, the Respondent’s aim is to mislead consumers who mistakenly arrive at the Respondent’s website and to pass itself off as the Complainant, which is emblematic of bad faith. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun 1 According to the online decoding tool, the Respondent’s name appears to be “ปริญ เปรมบริร\u” in Thai, and “Prin Prembri\u” in English.
Sole Panelist
Date: June 13, 2021
Full & Egal Universal Law Academy