WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Balfour Beatty plc v. WhoisGuard Protected, WhoisGuard, Inc. / Name Redacted

Case No. D2021-0064

1. The Parties

The Complainant is Balfour Beatty plc, United Kingdom, represented by Stobbs IP Limited, United Kingdom.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. Panama / Name Redacted¹.

2. The Domain Name and Registrar

The disputed domain names <balfourbeattyus.org> and <balfourbeattyuss.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2021. On January 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2021, 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 January 12, 2021, 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 January 12, 2021.

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 January 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2021. On January 21, 2021, the Center received a communication from a third party working at the company identified in the verification response of the Registrar. The third party considered that the registration of the disputed domain name has been made without the third party’s knowledge or the identified registrant’s knowledge. The Center acknowledged receipt of the communication. Accordingly, the Center notified the Commencement of Panel Appointment Process on February 3, 2021.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on February 9, 2021. 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 a leading construction and engineering company with operations in many parts of the world and with a history dating back to the early 20th century. The Complainant entity itself was incorporated in 1945.

The Complainant owns the European Trade Mark Registration No. 016499832 for BALFOUR BEATTY, registered on October 5, 2017.

The disputed domain name <balfourbeattyus.org> was registered on December 7, 2020, and the disputed domain name <balfourbeattyuss.com> was registered on December 24, 2020. Both disputed domain names do not resolve to active websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademark BALFOUR BEATTY. The Complainant has registered the trademark BALFOUR BEATTY since the early 90s. The disputed domain names incorporate the Complainant’s trademark in its entirety. The addition of the geographical suffix “us” to the first disputed domain name and the misspelling of the said suffix as “uss” in the second disputed domain name do not alter the overall impression.

The Complainant also owns the domain name <balfourbeattyus.com>. The inclusion of the suffix “us” further increases the similarity with the Complainant’s trademark. The generic Top-Level Domains (“gTLDs”) “.com” and “org” should be ignored.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not using or preparing to use the disputed domain names in connection with a bona fide offering of goods or services as the disputed domain names do not resolve to active websites. Further they are used for phishing. The Respondent does not seem to be commonly known by the disputed domain names. The use of the distinctive trademark of the Complainant combined with the phishing attempt confirm that the Respondent only registered the disputed domain names in order to take advantage of the Complainant’s goodwill and reputation. The Respondent is not making a legitimate noncommercial or fair use of the domain names. Instead they have been used for phishing.

The Complainant contends that the disputed domain names were registered and are being used in bad faith.

The Complainant’s trademark is distinctive and the scope of business of the Complainant is colossal. Prior UDRP panel decisions have found that using a domain name for the purpose of sending phishing emails indicate that the Respondent is attempting to mislead Internet users. Furthermore, the Respondent used false information on the WhoIs.

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 that the Complainant has established its ownership of the trademark BALFOUR BEATTY as the trademark is registered in the Complainant’s name.

The disputed domain names comprise the Complainant’s trademark BALFOUR BEATTY with the addition of the suffix “us” in <balfourbeattyus.org> and the addition of the suffix “uss” in <balfourbeattyuss.com>. The addition of the said suffixes does not prevent a finding of confusing similarity as it does not prevent the Complainant’s trademark from being recognizable in the disputed domain names. The gTLDs “.com” and “.org” should typically be ignored when assessing confusing similarity, as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain names are confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain names, by demonstrating that the Respondent is not using or preparing to use the disputed domain names in connection with a bona fide offering of goods or services as the disputed domain names not only do not resolve to active websites but have been used in a phishing attempt. The Complainant demonstrated that the Respondent does not seem to be commonly known by the disputed domain names as BALFOUR BEATTY is a distinctive and well-known trademark belonging to the Complainant. Lastly, it is clear that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names but using them for phishing.

The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain names.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain names. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s trademark is a well-known trademark and has been registered for three decades and used for several decades. The Complainant is the registrant and uses the domain name <balfourbeattyus.com>, which is almost identical to the disputed domain names. Accordingly, the Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain names. While the disputed domain names do not resolve to active websites, the Respondent is using the disputed domain names in bad faith as the Respondent has made phishing attempts as per the evidence on file. Furthermore, the Respondent’s use of a privacy service in the above circumstances further supports an inference of bad faith.

Such conduct falls squarely within the concept of registration and use in bad faith of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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 names <balfourbeattyus.org> and <balfourbeattyuss.com>be transferred to the Complainant.

Nayiri Boghossian
Sole Panelist
Date: February 17, 2021

¹ The Respondent appears to have used the name of a third party when registering the disputed domain names. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain names, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.