Complainant is Bureau Veritas, France, represented by Novagraaf France, France.
Respondent is Domains by Proxy, LLC, United States of America (“United States”) / Christian Weah, Canada.
2. The Domain Name and RegistrarThe Disputed Domain Name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2021. On November 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 18, 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 Complainant on November 19, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 24, 2021.
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 Respondent of the Complaint, and the proceedings commenced on November 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2021. On November 20, 2021, Respondent sent an email communication disavowing ownership or registration of the Disputed Domain Name. On November 25, 2021, Respondent sent an email reiterating the above point, disavowing any domicile in Canada, the country the Registrar had confirmed as the mailing address for Respondent.
The Center sent the Commencement of Panel Appointment Process to the parties on December 16, 2021.
The Center appointed Richard W. Page as the sole panelist in this matter on January 11, 2022. 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 BackgroundComplainant is the owner of several intellectual property rights for the denomination BUREAU VERITAS. The company name BUREAU VERITAS has been registered under this name in France since January 1985.
Complainant owns several trademark registrations, including without limitation, European Union Registration No. 004518544 BUREAU VERITAS filed on June 30, 2005, registered on June 1, 2006 and renewed on May 20, 2015 in classes 38 and 42; and European Union Registration No. 005927711 BUREAU VERITAS 1828 filed on May 11, 2007, registered on February 06, 2008 and renewed on April 24, 2017 in class 42. Complainant’s trademark registrations shall be collectively referred to as the “BUREAU VERITAS Mark”.
Complainant registered the domain name
Complainant claims that it is a world leader in Testing, Inspection and Certification, created in the year 1828 with a simple goal: to make shipping safer by offering up-to-date information about ships, and equipment to underwriters. Complainant’s mission is at the heart of key challenges: quality, health and safety, environmental protection and social responsibility.
Complainant’s industry-leading testing, inspection and certification services help clients improve performance and mitigate risk which strengthen their brands. Complainant also tests for compliance with applicable standards, regulations and specifications, performing laboratory and onsite testing for manufacturing and process industries. Complainant benefits from a large network of laboratories operating worldwide. Complainant’s facilities are strategically located for its clients’ benefit, granting easier access from ports and major manufacturing locations. Complainant’s inspection services give companies confidence in the reliability and integrity of their products, assets and systems. In the year 2018, Complainant’s revenue amounted to EUR 4.8 billion. Complainant has more than 400,000 clients, over 77,000 employees, more than 1,500 offices and laboratories in 140 countries.
As a certification body, Complainant certifies that the QHSE management systems utilized by clients comply with international standards (usually ISO), or national, segment or large company-specific standards. Complainant works with retailers and manufacturers of consumer products to assess their product and manufacturing processes for compliance with regulatory, quality and performance requirements. Complainant tests products, inspects merchandise, assesses factories and conducts audits of the entire supply chain.
The Disputed Domain Name was registered August 17, 2020. The Disputed Domain Name resolves to an error page.
5. Parties’ Contentions A. ComplainantComplainant contends that the Disputed Domain Name entirely and almost identically reproduces Complainant’s commercial name, Complainant’s domain names and the BUREAU VERITAS Mark.
Complainant further contends that the Disputed Domain Name constitutes a misspelling of the BUREAU VERITAS Mark to which an additional letter “a” has been added. Complainant further contends that this is a typical form of “typosquatting” where the registration of a domain name differs only by way of a minor spelling or typing error from a registered trademark to cause Internet users to arrive at a webpage not in fact associated with the trademark owner. Complainant further contends that the addition of the generic Top-Level Domain (“gTLD”) “.com” can be ignored for determining confusing similarity.
Complainant further contends that the Disputed Domain Name undeniably creates a likelihood of confusion and is reinforced by the high notoriety of Complainant in France and all over the world in relation to quality control and certification.
Complainant submits that Respondent is creating confusion to take undue profit from the notoriety of Complainant and with the idea to benefit from this image of a certification company and of a leader trusted by the consumers throughout the world.
Complainant further submits that Respondent’s aim is to drive Internet users to a website for phishing and taking an unfair advantage of the BUREAU VERITAS Mark, Complainant’s domain names and Complainant’s company name.
Complainant alleges that the Disputed Domain Name was registered by Respondent without Complainant’s consent and directs to an error page. A trademark search did not reveal any trademark in the name of Respondent. All the more, the Disputed Domain Name currently directs to an error page.
Complainant further alleges that an intentional misspelling of the BUREAU VERITAS Mark cannot constitute fair use and constitutes an illegitimate noncommercial use of the Disputed Domain Name. Respondent does not show any apparent rights or legitimate interests in the Disputed Domain Name.
Complainant argues that Respondent is not authorized by Complainant to use the BUREAU VERITAS Mark in a domain name or in any other way.
Complainant further argues that given the notoriety of Complainant in the fields in which it is active, Respondent can reasonably be assumed to have been aware of the existence of the BUREAU VERITAS Mark, Complainant’s company name and Complainant’s numerous domain names when registering the Disputed Domain Name.
Complainant further argues that previous UDRP panel has ruled in a similar case that the “practice of typosquatting”, of itself is evidence of bad faith registration. ESPN, Inc. v. XC2,
WIPO Case No. D2005-0444.
Respondent did not reply to Complainant’s contentions. However, on November 20, 2021, Respondent sent an email communication stating that disavowing ownership or registration of the Disputed Domain Name. On November 25, 2021, Respondent sent an email reiterating the above point, disavowing any domicile in Canada, the country the Registrar had confirmed as the mailing address for Respondent.1
6. Discussion and FindingsParagraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Respondent is not obliged to participate in a domain name dispute proceeding, but when it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant: See Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441.
Even though Respondent has failed to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the BUREAU VERITAS Mark in which Complainant has rights; and
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarSection 1.2.1 of the WIPO Overview 3.0 states that registration of the BUREAU VERITAS Mark is prima facie evidence of Complainant having enforceable rights.
Complainant owns several trademark registrations, including without limitation, European Union Registration No. 004518544 BUREAU VERITAS filed on June 30, 2005, registered on June 1, 2006 and renewed on May 20, 2015 in classes 38 and 42; and European Union Registration No. 005927711 BUREAU VERITAS 1828 filed on May 11, 2007, registered on February 06, 2008 and renewed on April 24, 2017 in class 42.
Respondent has not contested Complainant’s trademark rights.
Based on the record, the Panel finds that, for purposes of this proceeding, Complainant has enforceable trademark rights in the BUREAU VERITAS Mark.
Complainant contends that the Disputed Domain Name is almost identical with and confusingly similar to the BUREAU VERITAS Mark pursuant to paragraph 4(a)(i) of the Policy.
Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also, section 1.9 of the WIPO Overview 3.0 instructs that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. Also, section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as “.com” may be disregarded for purposes of assessing confusing similarity.
Complainant contends that the Disputed Domain Name constitutes a misspelling of the BUREAU VERITAS Mark to which an additional letter “a” has been added. Complainant further contends that this is a typical form of “typosquatting” where the registration of a domain name differs only by way of a minor spelling or typing error from a registered trademark to cause Internet users to arrive at a webpage not in fact associated with Complainant.
The Panel agrees with Complainant. The Panel also agrees that the addition of the gTLD “.com” can be ignored for determining confusing similarity.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the BUREAU VERITAS Mark pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsComplainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 BUREAU VERITAS Mark.
Complainant alleges that the Disputed Domain Name was registered by Respondent without Complainant’s consent and directs to an error page.
Complainant further alleges that an intentional misspelling of the BUREAU VERITAS Mark cannot constitute a bona fide or fair use and cannot constitute a legitimate noncommercial interest in the Disputed Domain Name.
Respondent has not shown any contrary evidence of rights or legitimate interests.
Therefore, based on this record, the Panel finds that Complainant has satisfied the elements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithComplainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the BUREAU VERITAS Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the BUREAU VERITAS Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the BUREAU VERITAS Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant argues that given the notoriety of Complainant in the fields in which it is active, Respondent can reasonably be assumed to have been aware of the existence of the BUREAU VERITAS Mark, Complainant’s company name and Complainant’s numerous domain names when registering the Disputed Domain Name.
Complainant further argues that previous UDRP panel has ruled in a similar case that the “practice of typosquatting”, of itself is evidence of bad faith registration. ESPN, Inc. v. XC2,
WIPO Case No. D2005-0444.
The Panel finds that the elements of paragraph 4(b) are not exclusive. See Telstra Corp. v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The Disputed Domain Name resolves to an error page and thus not prevent a finding of bad faith.
The Panel accepts as more likely than not that Respondent knew or should have known of Complainant’s prior rights in the BUREAU VERITAS Mark. See section 3.2.2 of the WIPO Overview 3.0. Another factor is “typosquatting” through a typing error or common misspelling of Complainant’s trademark, which supports a finding of bad faith. See section 3.2.1 of the WIPO Overview 3.0.
The Panel finds each of these additional factors present and that Respondent has registered and used the Disputed Domain Name in bad faith under paragraphs 4(b) and 4 ((a)(iii) of the Policy.
7. DecisionFor 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
Richard W. Page
Sole Panelist
Date: January 26, 2022
1 While the Respondent denies registering the Disputed Domain Name, the Panel notes that Respondent’s communication was sent from the email address of the registrant of the Disputed Domain Name as confirmed by the Registrar.