ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Bureau Veritas v. word Chan Case No. D2023-5274 1. The Parties The Complainant is Bureau Veritas, France, represented by Dennemeyer & Associates SAS, France. The Respondent is word Chan, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2023. On December 19, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2023, 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 (Unknown / redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 20, 2023 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 on December 20, 2023. 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 proceeding commenced on December 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2024. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on January 18, 2024. 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.
page 2 4. Factual Background A. Complainant The Complainant is a French company, founded in 1828, and a leading global provider of testing, inspection, and certification services under the BUREAU VERITAS word mark and the BUREAU VERITAS 1828 device mark (the “Trade Mark(s)”). The Complainant is the owner of numerous registrations for the Trade Marks in jurisdictions worldwide, including European Union registration No. 004518544 for the BUREAU VERITAS word mark, with a registration date of June 1, 2006; Chinese registration No. 1357400 for the BUREAU VERITAS word mark, with a registration date of January 21, 2000; European Union registration No. 005927711 for the BUREAU VERITAS 1828 device mark, with a registration date of February 6, 2008; and Chinese registration No. 6683463 for the BUREAU VERITAS 1828 device mark, with a registration date of September 7, 2010. B. Respondent The Respondent is apparently located in the United States of America. C. The Disputed Domain Name The disputed domain name was registered on December 8, 2023. D. Use of the Disputed Domain Name The disputed domain name is resolved to a Chinese language website apparently operated by a company in China, 广州必维技术检测有限公司, (“Guangzhou Bi Wei Technical Inspection Co., Ltd.”), featuring prominently the Complainant’s word and device Trade Marks, and offering testing, inspection and verification services (the “Website”). The Panel notes, through its independent search, that the Complainant has used the Chinese characters 必维 (“Bi Wei”) as a translation for its brand BUREAU VERITAS according to the website at “www.bureauveritas.cn”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name has been registered and used with the intention of diverting customers to the Website, by creating confusion about the origin of the services on the Website, and thus tarnishing the Complainant’s Trade Marks and damaging the Complainant’s image and reputation. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
page 3 the Complainant’s trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, “testing”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. To the contrary, the disputed domain name has been used, without the authorization or approval of the Complainant, in respect of the Website, featuring prominently the Trade Marks, and offering the same testing services offered by the Complainant for many years under the Trade Marks (including in China, where the operator of the Website is based). Furthermore, the Panel notes the composition of the disputed domain name carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s Trade Marks. Accordingly, the Panel finds that bad faith has been made out under paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 4 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 be transferred to the Complainant. /Sebastian M.W. Hughes/ Sebastian M.W. Hughes Sole Panelist Date: January 25, 2024
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