WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bouygues Telecom v. zhuhaiyingxunkejiyouxiangongsi

Case No. D2018-2444

1. The Parties

The Complainant is Bouygues Telecom of Paris, France, represented by Nameshield, France.

The Respondent is zhuhaiyingxunkejiyouxiangongsi, of France.

2. The Domain Name and Registrar

The disputed domain name <bouyguetelecom.org> is registered with Todaynic.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2018. On October 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 November 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2018.

The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on December 7, 2018. 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 is French mobile phone, Internet service provider and IPTV company, active since 1996. A major player in the telecoms industry in France, it holds one of the four licenses to operate a 4G network, with 18.3 million customers and has about 7,000 employees. It is a subsidiary of Bouygues SA, a Paris‑listed conglomerate active in the construction and media sectors.

The Complainant is the registered owner of several trademark registrations containing the terms “bouygues telecom”, including French Trademark Registration for BOUYGUES TELECOM, No. 154158916 registered on June 12, 2015; International Trademark Registration for BOUYGUES TELECOM No. 1280110 registered on August 6, 2015 and European Union Trademark Registrations for BOUYGUES TELECOM No. 005272844 registered on January 24, 2008 and No. 005273354 registered on January 4, 2008 (together referred to as: the “Marks”).

The Complainant is the owner of numerous domain names, inter alia <bouyguestelecom.fr> (registered in October 1998) and <bouyguestelecom.com> (registered in September 1999), which resolve to its official website.

The disputed domain name was registered on January 26, 2018 and resolved to a page displaying the Marks and seeking personal information from Internet users, which copied the customer area of the official website of the Complainant. Currently, the disputed domain name does not resolve to any active web page.

5. Parties’ Contentions

A. Complainant

(i) The Complainant submits that the disputed domain name reproduces the Marks, in which the Complainant has rights, and is confusingly similar to the Marks insofar as the disputed domain name obviously misspells the Marks. The Complainant also asserts that the omission in the disputed domain name of the letter “s” contained in the Marks does not serve to distinguish the disputed domain name from the Marks and constitutes a case of typosquatting.

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never licensed the Respondent to use the Marks in any manner, or consented to such use. The Complainant also asserts that the Respondent never had any business connection or affiliation with the Complainant.

(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent chose to register the disputed domain name with knowledge of the Complainant’s rights.

(iv) The Complainant submits that the Respondent used the disputed domain name in bad faith, as part of a phishing scheme to obtain users’ personal information.

(v) The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Procedural Aspects

As aforementioned, no Response was received from the Respondent.

Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.

Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.

In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.

Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.

6.2. Requirements of Paragraph 4(a) of the Policy

A. Identical or Confusingly Similar

In comparing the Marks with the disputed domain name, it is evident that the latter consists solely of the Marks, the only difference being the omission of the letter “s” found in the Marks at the end of the term “bouygues”, and by the generic Top‑Level Domain (“gTLD”) “.org”.

A domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

It is also well established that any gTLD, including, as is the case here, the gTLD “.org”, does not generally affect the assessment of a domain name for the purpose of determining identity or confusing similarity.

The Panel finds that the disputed domain name is confusingly similar to the Marks.

Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.

Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or makes a legitimate noncommercial or fair use of the disputed domain name.

The web page associated with the disputed domain name used to display a copy of the customer area of the official website of the Complainant, and sought to obtain personal information from Internet users.

No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.

To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no business connection or affiliation with the Complainant and (ii) received no license or consent from the Complainant to register or use the disputed domain name.

In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.

C. Registered and Used in Bad Faith

As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Marks.

It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.

A prior UDRP panel has considered the Marks as well-known trademarks (see Bouygues Telecom v. Jacques Combaz, WIPO Case No. D2018-0293).

In this case, the Panel finds that it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Marks. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. PaulBrien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.

In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.

Moreover, the Panel cannot find any actual or contemplated good faith use of the disputed domain name, as its use invariably results in misleading diversion and taking unfair advantage of the Complainant’s rights. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In this case, the disputed domain name resolved to a page seeking personal information from Internet users. This supports the finding that the Respondent is using in bad faith the disputed domain name, as part of a phishing scheme.

Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitutes bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.

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 <bouyguetelecom.org> be transferred to the Complainant.

Louis-Bernard Buchman
Sole Panelist
Date: December 19, 2018