ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Bureau Veritas v. Ryan Manning Case No. D2024-2083 1. The Parties The Complainant is Bureau Veritas, France, represented by Dennemeyer & Associates S.A., France. The Respondent is Ryan Manning, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2024. On May 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2024, 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”) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 22, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on May 23, 2024. 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 May 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2024.
page 2 The Center appointed William A. Van Caenegem as the sole panelist in this matter on June 24, 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. 4. Factual Background The Complainant, founded in 1828, is based in France and provides testing, inspection, and certification services around the world that allow clients to comply with regulations and standards. It employs 82,000 people in 1,600 offices and laboratories. The Complainant has numerous trademark registrations for the words BUREAU VERITAS and composite marks that include those terms including: the word mark BUREAU VERITAS, European Union trademark no. 004518544 filed on 30 June, 2005, and registered on 1 June, 2006, renewed on 20 May, 2015, to designate services in classes 38 and 42, a mark that the Complainant also owns in most countries. These include the United Kingdom, France, Chile, Malaysia, Singapore, India, Japan, Korea, Mexico, Jordan, Cambodia, the United States of America, and Brazil. The disputed domain name was registered on March 8, 2022, and directs to an “Under Maintenance” website that also reproduces the registered composite mark of the Complainant. 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 is confusingly similar to its BUREAU VERITAS registered word mark. It reproduces the verbal elements “bureau” and “veritas” with the slight variation of the addition of the letter “e” as in “verietas”. According to the Complainant this difference does not affect the visual and phonetic similarities or the public's perception of them, and there is therefore a clear risk of confusion in the public mind. This amounts to a clear case of typosquatting, the Complainant says. All the legitimate domain names of the Complainant also include the attached terms “bureau” and “veritas” as in BUREAUVERITAS. Further, the Complainant contends that the disputed domain name has been registered fraudulently by a person who is not an employee of the Complainant nor linked with it. The Complainant says that it has never authorized the Respondent to register a domain name similar to its trademark registrations. The Respondent thus does not have rights or legitimate interests in the disputed domain name, the Complainant contends. The Complainant points out that the disputed domain name is inactive and the website to which it resolves appears as ‘Under Maintenance’. This website also identically reproduces the Complainant’s composite BUREAU VERITAS mark. The Complainant contends that the Respondent is therefore making unlawful and unfair use of the disputed domain name with the intention of diverting customers by creating confusion about the origin of the relevant services, tarnishing the Complainant's trademarks, and damaging the Complainant's image and reputation. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 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 the Complainant’s trademark 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 trademark 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, with only the very slight variation of the addition of the letter “e” in the term “veritas” to form “verietas”. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. The Panel finds that the mark is immediately recognizable within the disputed domain name despite the very minor change which is in the nature of “typosquatting” (WIPO Overview 3.0, section 1.9). 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). 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. The Complainant states that it did not authorize the use of its BUREAU VERITAS registered trademark and the website to which the disputed domain name resolves cannot give rise to any claim of rights or legitimate interests. It reproduces the Complainant’s complex composite mark in identical form without permission or any other legitimizing indication, and nothing more than a notice saying it is ”Under maintenance”. Furthermore, the Complainant’s trademark is recognizable within the disputed domain name, comprising the Complainant’s trademark with a misspelling, indicating an awareness of the Complainant and its trademarks, as well as an intent to take unfair advantage of them, which does not support a finding of rights or legitimate interests on behalf of the Respondent. 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.
page 4 In the present case, the Panel notes that the Respondent has registered a disputed domain name that incorporates in almost identical form a trademark that has been used by the Complainant for a very long time across the globe. The Complainant is a very large organization present in many jurisdictions. It is apparent from the composition of the disputed domain name, comprising the Complainant’s trademark with a misspelling, that the Respondent was aware of the Complainant’s rights and its reputation vested in the trademark, as the Respondent almost identically copied the trademark for the disputed domain name when he registered it. This is further confirmed by the fact that the website to which the disputed domain name resolves contains a facsimile reproduction of the Complainant’s composite mark which includes the terms Bureau Veritas and various device elements. The fact that the Respondent has done nothing else with the disputed domain name does not favor him, as has been long established by Panel decisions (WIPO Overview 3.0, section 3.3). The Panel finds that the Complainant has established the third element of the Policy. 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. /WiIliam A. Van Caenegem/ WiIliam A. Van Caenegem Sole Panelist Date: July 8, 2024
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