The Complainant is Bouygues, France, represented by Nameshield, France.
The Respondent is Whois Privacy Protection Foundation, United States of America / Warren Frederic, Aoummeur, France.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 December 27, 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 amended Complaint also on December 27, 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 the Respondent of the Complaint, and the proceedings commenced on January 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2022.
The Center appointed Elise Dufour as the sole panelist in this matter on February 1, 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 BackgroundThe Complainant is Bouygues S.A., a French group of industrial companies centered on three sectors of activity: construction (with Bouygues Construction, Bouygues Immobilier, and Colas), telecoms and media.
Bouygues Travaux Publics, one of Bouygues Construction’s subsidiaries, is an expert in complex projects involving tunnels, engineering structures and road, port and rail infrastructures. Operating in France and many other countries, the entity has acknowledged expertise in managing large-scale projects with high added value and in setting up public–private partnership (PPP) projects.
The Complainant owns several trademark registrations including the following:
- International trademark BOUYGUES No. 390771, registered on September 1, 1970, duly renewed and designating goods and services in international classes 6, 19, 37 and 42;
- French trademark BOUYGUES No. 1197244, registered on March 4, 1982, duly renewed and designating goods and services in international classes 6, 16, 19, 28, 35, 37, 40, 41, 42, 43, 44, 45;
- International trademark BOUYGUES TRAVAUX PUBLICS No. 1234824, registered on September 22, 2014, and designating services in international classes 37 and 42;
The Complainant also owns, through its subsidiary, a number of domain names including the trademark BOUYGUES TRAVAUX PUBLICS such as:
-
The disputed domain name
According to evidence submitted by the Complainant, the disputed domain name used to resolve to a parking page and was used in a phishing scheme.
By the date the Decision was drafted, the disputed domain name resolved to an inactive website.
5. Parties’ Contentions A. ComplainantThe Complainant claims that the disputed domain name is (i) confusingly similar to its earlier trademarks, (ii) that the Respondent has no rights or legitimate interests in the disputed domain name, and (iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(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.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly SimilarThe disputed domain name wholly incorporates the Complainant’s trademarks BOUYGUES and BOUYGUES TRAVAUX PUBLICS, which, as long established by previous UDRP panels, may be sufficient to determine that a disputed domain name is confusingly similar to the Complainant’s trademarks.
In addition, the disputed domain name only differs from the Complainant’s trademark BOUYGUES TRAVAUX PUBLICS through the addition of “fr”, which is the ISO alpha-2 country code for France.
The Panel finds that the Complainant’s trademarks are clearly recognizable and entirely contained in the disputed domain name. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Finally, the applicable generic Top-Level Domain “.com” in the disputed domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test (See section 1.11, WIPO Overview 3.0).
Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate InterestsThe burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, the burden of production then shifts to the Respondent, which has to then demonstrate rights or legitimate interests in the disputed domain name.
On the basis of the submitted evidence, the Panel considers that the Complainant has successfully established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name: The Respondent is not commonly known under the disputed domain name, nor owns any registered rights on the disputed domain name or has been authorized by the Complainant to use the prior trademarks in any way.
The Panel does not find any indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or has rights or legitimate interests in any other way in the disputed domain name.
On the contrary, the disputed domain name used to resolve to a parking page and was used in a phishing scheme. Indeed, the Complainant demonstrated that the Respondent has used the disputed domain name to pass itself off as one of the employees of Bouygues Travaux Publics, in order to receive products in place of the Complainant.
Such use is clear evidence of fraudulent intent and cannot amount to a legitimate noncommercial or fair use of the disputed domain name.
Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Given these circumstances the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad FaithIn regard to the registration of the disputed domain name, which encompasses the trademarks BOUYGUES and BOUYGUES TRAVAUX PUBLICS, the Panel considers it unlikely that, at the time of the registration of the disputed domain name, the Respondent did not know about the Complainant’s trademarks.
Indeed, given the fact that the Complainant’s trademarks are well-known in the construction services, the Respondent cannot credibly claim to have been unaware of the existence of the previous trademarks (see section 3.2.2 of the WIPO Overview 3.0) and previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0).
As for use of the disputed domain name in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant, and the brief verification carried out by the Panel of the website associated with the disputed domain name, the Panel is satisfied that the disputed domain name is used in bad faith.
Indeed, the Complainant provided evidence that the disputed domain name used to resolve to a parking page and has been used in a phishing scheme. It is well-established that using a domain name for purposes of phishing or other fraudulent activity constitutes solid evidence of bad faith use.
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
Therefore, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).
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
Elise Dufour
Sole Panelist
Date: February 15, 2022