WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bouygues S.A. v. Whois Privacy (enumDNS dba) / Rafael Vivier

Case No. D2019-1390

1. The Parties

The Complainant is Bouygues S.A., France, represented by Nameshield, France.

The Respondent is Whois Privacy (enumDNS dba), Luxembourg / Rafael Vivier, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bouyguesconstructions-tp.com> is registered with EuroDNS S.A. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2019. On June 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2019, 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 June 20, 2019, 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 June 20, 2019.

The Center verified that the Complaint, together with the amendment to 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 June 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2019.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on July 22, 2019. 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 following summary sets out the uncontested factual submissions made by the Complainant:

The Complainant is a company based in France that is active in the construction industry through its wholly-owned subsidiary Bouygues Construction.

The Complainant owns a number of registered trademarks for BOUYGUES CONSTRUCTION, including French trademark No. 99820969, registered on November 3, 1999 (“Complainant’s Mark”).

In addition, the Complainant owns, through its subsidiary, a number of a domain names related to the Complainant’s Mark, including <bouygues-construction.com>, registered since May 10, 1999.

The disputed domain name was registered on May 31, 2019. As of the date of the decision, the disputed domain name appears to resolve to a parking page with commercial links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the Complainant’s Mark and has produced a print-out of the international registration for BOUYGUES CONSTRUCTION. The print-out indicates that the international registration is based on a French trademark registered on November 3, 1999.

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s Mark as it is constituted entirely of the Complainant’s BOUYGUES CONSTRUCTION mark with a few minor differences. The Complainant is of the view that these minor differences do not prevent the likelihood of confusion between the disputed domain name and the Complainant’s Mark. The Complainant has referred this Panel to a number of previous UDRP panel decisions where the Complainant’s rights in other domain names, which wholly incorporated the Complainant’s Mark, were confirmed by those panels.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent is not known by the disputed domain name and has not acquired trademark rights in respect thereof. Furthermore, the Complainant submits that the Respondent is not affiliated with it nor authorized by it in any way to use the Complainant’s Mark, nor does the Complainant carry out any activity for, or have any business with, the Respondent. The Complainant further contends that the resolution of the disputed domain name to a parking page with commercial links cannot constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. In support of which, the Complainant has referred the Panel to the various UDRP panel decisions, including Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe, WIPO Case No. D2007-1695.

The Complainant further contends that the Respondent has used and registered the disputed domain name in bad faith. The Complainant submits that the Complainant’s Mark is well-known and that the Respondent registered the disputed domain name with full knowledge of the Complainant’s Mark. As such, the Respondent was intentionally attracting Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s activities for commercial gain. Thus, the Complainant has indicated that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the Complainant’s Mark through its abovementioned registrations in France and the other designated countries. The Panel also takes note that the Complainant’s rights in the mark have been recognized by other UDRP panels.

The disputed domain name comprises the Complainant’s Mark in its entirety and only differs by minor additions, those being (1) the letter “s”, (2) a hyphen, (3) the letters “tp”, and (4) the generic Top-Level Domain (“gTLD”).

This Panel agrees that a gTLD indicator such as “.com” cannot be taken into consideration in this case when judging confusing similarity and is guided by section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) where it states that:

“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”

Regarding the pluralization of the word “construction”, this Panel does not consider the addition of the letter “s” to distinguish the disputed domain name and the Complainant’s Mark. This Panel is guided by the decision in Indivior UK Limited v. Cimpress Schweiz GmbH, WIPO Case No. D2018-0421, where that panel held that: “The addition of a plural ‘s’ does not avoid the confusing similarity between the Domain Name and the Trade Marks”. See also: Oakley, Inc. v. Shi An Liu, WIPO Case No. D2011-1416; Halcyon Yarn, Inc. v. Henry Chan, WIPO Case No. D2004-0336.

As for the hyphen, the Panel agrees with the Complainant that this does not serve to distinguish the disputed domain name from the Complainant’s Mark. In Rolls-Royce plc v. John Holt, WIPO Case No. D2017-1842, the panel held that: “The addition of the hyphen does not in any manner eliminate confusion”.

With respect to the letters “tp”, in the absence of any evidence to the contrary, the Panel accepts the Complainant’s submission that this is a common abbreviation of the French term “travaux publics”, which is translated as “civil engineering”. This term is descriptive of the Complainant’s services and does not distinguish the disputed domain name from the Complainant’s Mark in any way. This Panel is guided by section 1.8 of the WIPO Overview 3.0, it states that:

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

This Panel refers to the decision of M/s Daiwik Hotels Pvt. Ltd. V Senthil Kumaran S, Daiwik Resorts, WIPO Case No. D2015-1384, where that panel held that:

“it is a well accepted proposition that a domain name that contains a complainant's trademark along with a generic word that describes its services, sufficiently satisfies the requirement that the disputed domain name is confusingly similar to the complainant's mark.”

As such, the Panel has no hesitation in finding that the Complainant has proved that the disputed domain name is confusingly similar to the Complainant’s Mark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is well settled that a complainant may put forward a prima facie case that the respondent lacks rights or legitimate interests in a domain name. The burden of production then shifts to the respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name in order to rebut that prima facie case. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of WIPO Overview 3.0 and Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416.

The Panel is satisfied with the unrebutted evidence adduced by the Complainant in support of its prima facie case. Based on the absence of a response and the absence of any nexus between the disputed domain name and the Respondent’s name, the Panel could not find any justification, rights, or legitimate interests on the part of the Respondent to the disputed domain name. The notoriety of the Complainant’s Mark, as submitted by the Complainant and confirmed by previous UDRP cases, would present a significant hurdle for the Respondent to justify rights or legitimate interests to the trademark without submitting compelling reasons to this Panel to conclude otherwise.

Further, there is also no evidence to indicate that the Respondent is known by the name “Bouygues”, “Constructions”, “tp” or any combination thereof that would afford the Respondent legitimate rights under paragraph 4(c)(ii) of the Policy. The Panel accepts the Complainant’s contention that the Respondent is not affiliated with him, authorized by him in any way to use the Complainant’s Mark nor does the Complainant carry out any activity for or have any business with the Respondent.

The Panel is guided by the rationale of the decision of Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe, WIPO Case No. D2007-1695, referred to this Panel by the Complainant. The Panel is thus convinced that the Respondent’s use of the disputed domain name that is confusingly similar to the Complainant’s Mark for the purpose of offering sponsored links cannot constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor a non commercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.

In the circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.

C. Registered and Used in Bad Faith

The Panel agrees with the contention by the Complainant that the Respondent had or should have had knowledge of the Complainant’s Mark when it registered the disputed domain name. One key factor that was taken into account to arrive at this conclusion included the fact that the date of registration of the disputed domain name which was many years from the date the Complainant registered the Complainant’s Mark. Indeed, the Panel takes cognizance that the Complainant has registered their BOUYGUES CONSTRUCTION mark in France as early as 1999. As such, the Panel is satisfied that the Respondent had or should have had knowledge of the reputation and goodwill of the Complainant’s Mark when it registered the disputed domain name.

Furthermore, as the disputed domain name resolves to a parking page with commercial links, the Panel agrees with the Complainant’s contention that the Respondent intended to use the disputed domain name to attract Internet users to its website for commercial gain, and such intentional use constitutes bad faith. We are guided by the decisions provided by the Complainant, including Dubizzle Limited BVI v. Syed Waqas Baqir, WIPO Case No. D2018-0564and StudioCanal v. Registration Private, Domains By Proxy, LLC / Sudjam Admin, Sudjam LLC, WIPO Case No. D2018-0497.

In light of the above, the Panel finds that bad faith has been demonstrated under paragraph 4(b) of the Policy and that the third element of paragraph 4(a) of the Policy has been met.

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 <bouyguesconstructions-tp.com> be transferred to the Complainant.

Syed Naqiz Shahabuddin
Sole Panelist
Date: July 30, 2019