WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bechtel Group, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Greg Tapper

Case No. D2020-0748

1. The Parties

The Complainant is Bechtel Group, Inc., United States of America (“United States” or “U.S.”), represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Greg Tapper, United States.

2. The Domain Name and Registrar

The disputed domain name <bechtel-global.com> (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 March 27, 2020. On March 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 30, 2020, 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 April 1, 2020 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 April 3, 2020.

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 April 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2020.

The Center appointed Martin Schwimmer as the sole panelist in this matter on May 5, 2020. 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 the holding company for a large group of international construction, procurement and engineering companies based in the United States, collectively “Bechtel”. The Complainant has used the BECHTEL trademark since 1925 and owns various trademark registrations for the BECHTEL mark, including U.S. Registration No. 1047369 registered August 31, 1976. The Respondent registered the Disputed Domain Name on March 2, 2020. It allegedly used the Disputed Domain Name to send emails purportedly sent by the Complainant’s Chief Executive Officer (“CEO”), soliciting funds and financial information.

5. Parties’ Contentions

A. Complainant

Founded in 1898, the Complainant has completed more than 25,000 projects across 160 countries on all seven continents and in 2019 employed approximately 38,000 people. Projects which Bechtel has managed include the Hoover Dam, the Tacoma Narrows Bridge, Jubail Industrial City and the Chunnel.

The Complainant has used the BECHTEL trademark since 1925. The Complainant owns various trademark registrations reflecting the BECHTEL mark, including U.S. Registration No. 1047369 registered August 31, 1976, U.S. Registration No. 1086326 registered February 28, 1978, and European Union Trade Mark No. 003514809 registered July 7, 2005.

The Complainant promotes its subsidiaries’ services through its primary website at <bechtel.com>.

The Complainant’s affiliated companies include Bechtel Global Corporation and Bechtel Global Services, Inc. The Complainant also owns the domain name <bechtelglobal.com>. Thus, the term “global” closely relates to the Complainant and its business.

The use of such hyphen does not diminish the confusing similarity between the Disputed Domain Name and the Complainant’s trademark and should be disregarded for purposes of making this determination. See Chernow Commc’ns, Inc. v. Kimball, WIPO Case No. D2000-0119 (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark”).

The Respondent registered the Disputed Domain Name in March 2020, 95 years after the Complainant began use of the BECHTEL mark.

The Respondent is not sponsored by or affiliated with the Complainant in any way. Furthermore, the Complainant has not given the Respondent license, authorization or permission to use the Complainant’s trademark in any manner, including in domain names. “In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.” See Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.

The Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests. The pertinent WhoIs information identifies the Registrant as “Greg Tapper,” which does not resemble the Disputed Domain Name in any manner.

At present, the Disputed Domain Name redirects Internet users to a website that resolves to a blank page and lacks content. The Respondent has failed to make use of the Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the Disputed Domain Name and website, which evinces a lack of rights or legitimate interests in the Disputed Domain Name, as confirmed by numerous past UDRP panels. See Philip Morris USA Inc. v. Muhammad Faisal, WIPO Case No. D2016-0621 (“As the Respondent is not actively using the Domain Names, the Panel is of the view that the Respondent is not making a legitimate noncommercial or fair use of the Domain Names.”).

Although the Disputed Domain Name’s website currently resolves to a blank page, the Respondent sent emails from the Disputed Domain Name to numerous people, fraudulently attempting to create the impression that such emails originated from the Complainant. Prior to the Complainant’s request to disable the Disputed Domain Name, the Respondent attempted to impersonate the Complainant’s Chairman and CEO, by using the email address in an effort to obtain money from Internet users. In other words, the Respondent intentionally and fraudulently attempted to pass itself off as the Complainant by using an email address associated to the Disputed Domain Name to perpetrate fraud for financial gain.

Such use provides additional evidence of the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name. See Regeneron Pharmaceuticals, Inc. v. Nikki Dockum, Tred, WIPO Case No. D2018-0155 (“In this case, the principal indicator of the lack of rights or legitimate interests comes from the alleged fraudulent nature of the Respondent’s use of the disputed domain name to generate spear phishing email. […] Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name.”).

As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. By sending fraudulent emails and impersonating the Complainant’s Chairman and CEO, it is evident that the Respondent had actual knowledge of the Complainant, its business and its trademark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BECHTEL in numerous countries.

The Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark BECHTEL; (b) a hyphen; (c) the geographical name “global”; and (d) the generic Top-Level Domain (“gTLD”) “.com”. The use of such hyphen does not avoid the confusing similarity between the Disputed Domain Name and the Complainant’s trademark and should be disregarded for purposes of making this determination. See Chernow Commc’ns, Inc. v. Kimball, WIPO Case No. D2000-0119 (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark”).

It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286).

The relevant comparison to be made is with the second-level portion of the Disputed Domain Name. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the word “global”. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has not given the Respondent permission to use the Complainant’s trademarks in any manner, the Respondent is not commonly known by the Disputed Domain Name, and the Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the Disputed Domain Name.

The Disputed Domain Name is not being used in connection with a website. However, the Complainant provided evidence that the Dispute Domain Name was used to create and transmit emails purporting to come from the CEO of the Complainant, which emails solicited funds and financial information. Such use provides additional evidence of the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name. See Regeneron Pharmaceuticals, Inc. v. Nikki Dockum, Tred, WIPO Case No. D2018-0155 (“In this case, the principal indicator of the lack of rights or legitimate interests comes from the alleged fraudulent nature of the Respondent’s use of the disputed domain name to generate spear phishing email. […] Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name.”).

The Panel finds that, in the absence of a response from the Respondent, the Complainant is deemed to have satisfied the burden of proof on this element (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, the trademark BECHTEL is such a famous mark for engineering, construction, and project management services that it would be inconceivable that the Respondent might have registered the mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Bechtel Group, Inc. v. Up!, Paul Hallelujah, WIPO Case No. D2017-1389 (“The well-known trademark BECHTEL”); Bechtel Group, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Arban Mas, WIPO Case No. D2018-2202 (“It is well-known that the Complainant is a United States company with a group of subsidiaries throughout the world. Anyone seeing the Disputed Domain Name would assume that it had been registered and was being used by the Complainant.”)). Additionally, in this instance, the Complainant has established that it utilizes the word ‘global’ as part of trading names of certain of its affiliated companies, and that the Complainant is truly a global business. Therefore, the addition of the word reinforces the confusion by suggesting that the Disputed Domain Name is related to the Complainant and/or the Complainant’s company or affiliate member firms. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez, WIPO Case No. D2016-1004.
Further, there are unrebutted assertions and evidence that the Respondent used the Disputed Domain Name to send deceptive emails purporting to come from the Complainant’s CEO. Again, it is therefore inconceivable that the Respondent was not aware of the Complainant’s rights in its mark, and thus, acted in bad faith. See Minerva S.A. v. Whoisguard Prote, Whoisguard, Inc. / Greyhat Services, WIPO Case No. D2016-0385 (finding that the disputed domain name was registered and used in bad faith by sending fraudulent emails in an attempt to create a likelihood of confusion between it and the Complainant).

Furthermore, the Panel may also make negative inferences arising from the Respondent’s failure to respond. See, e.g., Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409.

The Panel finds that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith, as outlined in paragraph 4(a)(iii) 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 <bechtel-global.com> be transferred to the Complainant.

Martin Schwimmer
Sole Panelist
Date: May 19, 2020