WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bouygues v. Rafael Vivier

Case No. D2019-1693

1. The Parties

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

The Respondent is Rafael Vivier, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bouygues-batiments-iles-de-france.com> (the ‘Domain Name’) is registered with NETIM SARL (the “Registrar”).

3. Procedural History

The Complaint in French was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2019. On July 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 24, 2019, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 24, 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 in English on July 24, 2019. On July 24, 2019, the Center sent an email communication in both English and French to the Parties regarding the language of proceeding. The Respondent did not comment on the language of proceedings.

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 July 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2019.

The Center appointed Gregor Vos as the sole panelist in this matter on August 20, 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.

On July 24, 2019, the Center informed the Parties that the Complaint was submitted in French while the language of the Registration Agreement for the Domain Name is English. On July 24, 2019, the Complainant sent a Complaint translated in English. Therefore, the Panel will render its Decision in English.

4. Factual Background

The Complainant is a French company, which is engaged in the field of construction, telecommunication and media.

The Complainant is the owner of inter alia the following trademarks (the “Trademarks”):

- International Trademark registration No. 723515 for the wordmark BOUYGUES BATIMENT registered on November 22, 1999 ;

- European Union Trademark registration No. 001217223 for the wordmark BOUYGUES BATIMENT registered on July 25, 2000.

In addition to these Trademarks, a subsidiary of the Complainant, Bouygues Construction, has several domain names, including <bouygues-batiment.com>, <bouygues-batiment-idf.com> and

<bouygues-batiment-ile-de-france.com>.

The Respondent registered the Domain Name on June 12, 2019. The Domain Name does not resolve to any other website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its Trademarks. The Domain Name reproduces both terms of its Trademarks BOUYGUES BATIMENT in its entirety. The addition of a generic Top-Level Domain (“gTLD”) could be disregarded according to the Complainant. The terms “iles de france” would refer to the French area where the Complainant has its headquarters and to a subsidiary of the Complainant, which therefore even gives a stronger impression that the Domain Name and the Complainants business are related. The Complainant concludes that the Domain Name is confusingly similar to the Trademarks, as the Domain Name fully incorporates the Trademarks.

Furthermore, the Complainant argues that the Respondent has no rights or no legitimate interests in respect of the Domain Name. The Complainant states that the Respondent is not commonly known by the Domain Name, affiliated with the Complainant or authorized by the Complainant to use the Domain Name or to use the Trademarks. According to the Complainant the Domain Name is currently inactive and there seems to be no indication that the Respondent will use the Domain Name.

Finally, the Complainant asserts that the Domain Name has been registered and has been used in bad faith. According to the Complainant, its Trademarks are well-known trademarks and the Domain Name is inactive. According to the Complainant, this would constitute the bad faith registration and use of the Domain Name.

The Complainant requests that the disputed Domain Name will be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Based on paragraph 4(a) of the UDRP, a request to transfer a domain name must meet three cumulative conditions:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

In the administrative proceedings, the Complainant must prove that each of these three elements is present. Only if all three elements are fulfilled can the Panel grant the remedy requested by the Complainant.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the UDRP requires two elements to be proved. A disputed domain name should be (i) identical or confusingly similar to a trademark or service mark, (ii) in which a complainant has rights.

With respect to having rights pursuant to paragraph 4(a)(i) of the UDRP, it is noted that the Complainant is registered as the owner of the Trademarks, as can be seen from the submitted copies of the registrations of the trademarks. Consequently, the Panel finds that the Complainant has proven that it is the owner of the trademarks.

With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name. While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

For the purpose of assessing confusing similarity under the Policy, the gTLD suffix (in the present case “.com”) is generally ignored in the comparison between the disputed domain name and a complainant’s trademark (see Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269).

The Domain Name incorporates the Complainant’s trademark BOUYGUES BATIMENT entirely. Additionally, an “s” is added after “batiment” and the Domain Name contains the term “iles-de-france”. The addition of an “s” to “batiment” in the Domain Name does not alter the fact that the dominant feature of the relevant mark is recognizable in the Domain Name. The Complainant provided evidence that “iles‑de‑france” refers to an area located in France, Ile-de-France, where Complainant has its headquarters. Also, Bouygues Bâtiment Ile-de-France is one of the subsidiaries of the Complainant. The misspelling of Ile-de-France is an obvious misspelling of this area. The addition of “iles-de-france” therefore affirms a confusing similarity between the Domain Name and the Complainant’s Trademarks.

As the Complainant correctly argued, the addition of a Top-Level Domain would be irrelevant under the first element confusing similarity test.

Considering the fact that the Domain Name consists of the Trademarks and of a term that refers to one of the headquarters of the Complainant and the Domain Name may be seen as referring to one of its subsidiaries, the Panel finds that it is likely that Internet users when confronted with the Domain Name will be under the impression that there exists a relationship between the Domain Name and the Complainant and that Internet users could be confused. Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademarks.

B. Rights or Legitimate Interests

In order to fulfil the requirement of paragraph 4(a)(ii) of the UDRP, a complainant has to prove that the respondent lacks rights or legitimate interests in the disputed domain name. As this may result in the often impossible task of “proving a negative”, a complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. If a complainant succeeds in making its prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the disputed domain name (see section 2.1 of the WIPO Overview 3.0).

In the present matter, the Complainant argues that the Respondent is not commonly known under the Domain Name. To substantiate this, it submitted that the Respondent is not known under the Domain Name and that the Respondent has no registered trademark rights consisting of the Domain Name. Furthermore, the Complainant states that the Respondent is not related to the business of the Complainant and that the Respondent is not authorized to use the Complainant’s Trademarks.

The Complainant submitted evidence that the Domain Name is currently inactive. According to the Complainant this would confirm that the Respondent has no plan to use the Domain Name, which would indicate a lack of legitimate interests. According to the Panel, the inactivity of the Domain Name is a contra-indication for legitimate interests. There are no indications for legitimate use of the Domain Name by the Respondent such as a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Because of the inactivity, there are no further grounds that would indicate bona fide use or use that is not per se illegitimate under the UDRP. Also, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use is a factor that points towards a lack of right or legitimate interests.

Based on the above, the Panel finds that the Complainant has sufficiently set out its prima facie case. The burden of production on this element therefore shifts to the Respondent.

As the Respondent has not replied to the Complainant’s allegations, the Panel finds that the requirement under paragraph 4(a)(ii) of the UDRP is fulfilled.

C. Registered and Used in Bad Faith

Bad faith under paragraph 4(a)(iii) of the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark.

UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding, including a blank or “coming soon” page) does not prevent a finding of bad faith. See WIPO Overview 3.0, section 3.3; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005; and Virgin Enterprises Limited v. Cesar Alvarez, WIPO Case No. D2016-2140).

While looking at the totality of the circumstances in each case, there are certain factors that have been considered relevant by UDRP panels in applying the passive holding doctrine including, inter alia, (see section 3.3 of the WIPO Overview 3.0):

(i) the degree of distinctiveness or reputation of the complainant’s mark;

(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;

(iii) the implausibility of any good faith use to which the domain name may be put.

The Complainant asserts that its Trademarks are well-known trademarks and as evidence of this assertion has referred to a previous panel decision in which that panel held that the Trademarks are well-known trademarks. However, the Complainant did not file any additional evidence regarding its reputation. Since the previous decision was rendered on August 8, 2017, which is already more than two years ago, and since the reputation of trademarks can alter over time, the Panel finds on the current case file that the Complainant has not proven that the Trademarks are well known. However, the Panel does find the Trademarks to be distinctive and as such the Trademarks enjoy a normal scope of protection.

The Complainant did submit evidence that the Domain Name resolves to an inactive website. Also the Respondent failed to submit a response to provide any evidence of actual or contemplated good-faith use or to give a credible explanation for the choice of the Domain Name.

In addition to these specific factors, section 3.2.1. of the WIPO overview 3.0 provides particular circumstances that may be taken into account in assessing whether a respondent’s registration of a domain name is in bad faith. With a view to these circumstances, the panel finds that the Respondent should have known that the registration of the Domain Name, due to the nature of the included Trademarks and the addition of the Complainant’s geographic area of activity, would be confusingly similar. Furthermore, the Respondent is “holding” the Domain Name without any use and the Respondent has no rights or legitimate interests in the Domain Name. Moreover, the website is inactive. This indicates that there is no other intention than to ”hold” the Domain Name. Any good faith use to which the Domain Name may be put is therefore implausible.

Considering the circumstances of this matter, the Panel finds that the Domain Name was registered by the Respondent in bad faith.

Therefore, the Panel finds that the requirement under paragraph 4(a)(iii) of the UDRP is fulfilled.

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 <bouygues-batiments-iles-de-france.com> be transferred to the Complainant.

Gregor Vos
Sole Panelist
Date: September 5, 2019