WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bureau Veritas v. Privacy Service Provided by Withheld for Privacy ehf / Anthony Reed, BVEU

Case No. D2022-0135

1. The Parties

The Complainant is Bureau Veritas, France, represented by Novagraaf France, France.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Anthony Reed, BVEU, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bureauveritaseu.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2022. On January 17, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2022, 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 19, 2022 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 amendment to the Complaint on January 24, 2022.

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 January 25, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2022.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on February 21, 2022. 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 has submitted evidence that it is the owner of a large number of trademark registrations in numerous countries, including the following:

European Union Trade Mark registration BUREAU VERITAS number 004518544 filed on June 30, 2005, registered on June 1, 2006 and renewed on May 20, 2015 in classes 38 and 42.

European Union Trade Mark registration BUREAU VERITAS 1828 and device number 005927711 filed on May 11, 2007, registered on February 6, 2008 and renewed on April 24, 2017, in class 42.

International trademark registration BUREAU VERITAS number 1289458 filed on December 23, 2015 in class 24 designating the following jurisdictions: European Union, India, United States, Japan, Republic of Korea, Singapore and China.

International trademark registration BUREAU VERITAS 1828 and device number 1291135 filed on December 23, 2015 in class 24 designating the following jurisdictions: European Union, India, United States, Japan, Republic of Korea, Singapore and China.

Australian trademark registration BUREAU VERITAS number 1169634 filed on April 2, 2007 and renewed in 2017.

Australian trademark registration BUREAU VERITAS 1828 and device number 1180194 filed on June 5, 2007 and renewed in 2017.

New Zealand trademark registration BUREAU VERITAS number 769695 filed on June 5, 2007, registered on June 11, 2009 and renewed in 2017 in class 42.

New Zealand trademark registration BUREAU VERITAS 1828 and device number 769697 filed on June 5, 2007, registered on June 11, 2009 and renewed in 2017 in class 42.

United States trademark registration BUREAU VERITAS number 3214422 filed on March 30, 2001 and registered on March 6, 2007 and renewed in 2017 in class 38.

United States trademark registration BUREAU VERITAS number 2871545 filed on April 3, 2003, registered on August 10, 2004 and renewed in 2015 in classes 09, 16, 35, 37, 38, 41 and 42.

United States trademark registration BUREAU VERITAS 1828 and device number 3448092 filed on June 20, 2007, registered on June 17, 2008 and renewed in 2018 in classes 42 and 45.

United States trademark registration BUREAU VERITAS 1828 and device number 3425827 filed on July 24, 2007, registered on May 13, 2008, and renewed in 2018 in class 37.

United States trademark registration BUREAU VERITAS 1828 and device number 3425828 filed on July 24, 2007, registered on May 13, 2008, and renewed in 2018 in class 38.

United States trademark registration BUREAU VERITAS 1828 and device number 3425829 filed on July 24, 2007, registered on May 13, 2008, and renewed in 2018 in class 4.

Canadian trademark registration BUREAU VERITAS 1828 and device number 1351732 filed on June 14, 2007, registered on March 11, 2009 in class 42.

Canadian trademark registration BUREAU VERITAS number 1585427 filed on July 10, 2012, registered on June 26, 2013 in classes 35 and 42.

Canadian trademark registration BUREAU VERITAS number 1097707 filed on March 27, 2001, registered on April 21, 2004 and renewed on April 21, 2019 in classes 38 and 42.

The disputed domain name <bureauveritaseu.com> was registered on December 6, 2021. The Complainant has provided evidence that the disputed domain name redirects to an official website of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant, established in 1828, is a world leader in testing, inspection and certification within the areas Marine and Offshore, Agri-Food and Commodities, Industry, Buildings and Infrastructure, Certification and Consumer Products. The Complainant tests for compliance with applicable standards, regulations and specifications, performing laboratory and on-site testing for manufacturing and process industries. The Complainant has more than 400,000 clients, 77,000 employees, 1,500 offices and laboratories in 140 countries and in 2018, the Complainant’s revenue amounted to EUR 4.8 billion. The Complainant has been using the domain name <bureauveritas.com> since June 20, 1996 and the domain name <bureauveritas.fr> since February 12, 2001.

The disputed domain name is composed of (i) the term “bureauveritas”, which is the exact reproduction of the BUREAU VERITAS trademarks, (ii) the letters “eu”, (iii) and the generic Top-Level Domain (“gTLD”) “.com”. The addition of “eu” and of “.com” to “bureauveritas”, is clearly not sufficient to avoid a likelihood of confusion with the Complainant’s prior rights. The involved signs remain identical and/or similar to a very high degree. Furthermore, the letters “eu” will certainly be considered by the Internet users as the abbreviation for the European Union, and “.com” will be perceived as a descriptive element related to the applicable TLD.

The Respondent is using an anonymization-service in order not to disclose its true identity. Due to the complete reproduction of the Complainant’s company name, prior well-known trademarks and domain names, Internet users will obviously and wrongly think that the disputed domain name belongs to the Complainant or has been registered in its name or for its account. A likelihood of confusion is therefore undeniable and is reinforced by the high notoriety enjoyed by the Complainant in France and all over the world in relation to quality control and certification. The Respondent is taking unfair advantage of the Complainant’s BUREAU VERITAS trademarks.

The disputed domain name was registered by the Respondent without the Complainant’s consent and redirects to the website “group.bureauveritas.com” which is an official website of the Complainant. Consequently, the Respondent does not show any apparent legitimate interest in the disputed domain name.

The Respondent, who is not authorized by the Complainant and who has neither rights nor legitimate interests in respect of the disputed domain name could not have been unaware of the existence of the Complainant’s BUREAU VERITAS trademarks when registering the disputed domain name, especially since the disputed domain name redirects to the official website of the Complainant. Therefore, the Complainant is of the opinion that the Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the disputed 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 the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of a large number of registered BUREAU VERITAS trademarks. The disputed domain name incorporates the BUREAU VERITAS trademark in its entirety with the addition of the letters “eu” (presumably in reference to European Union”). In the Panel’s view, the mere addition of the geographical abbreviation “eu” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s BUREAU VERITAS trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark BUREAU VERITAS and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) the Respondent uses or has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) the Respondent is commonly known by the disputed domain name, even if the Respondent has not acquired any trademark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant’s trademark registrations for BUREAU VERITAS predate the Respondent’s registration of the disputed domain name. The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademark in the disputed domain name.

There is no evidence in the case file indicating that the Respondent has used or made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute. On the contrary, the Complainant has submitted evidence demonstrating that the Respondent is using the disputed domain name to redirect Internet users to the Complainant’s official website “group.bureauveritas.com”. Such use does not constitute a legitimate fair use and does not establish rights or legitimate interests in the disputed domain name.

Noting the Complainant’s trademark is incorporated in the disputed domain name together with the geographical abbreviation “eu”, the Panel finds that there is a risk of implied affiliation, see section 2.5.1 of WIPO Overview 3.0.

Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. It has not submitted any evidence indicating that the Respondent is the owner of any trademark or that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence indicating that the Respondent intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

As previously mentioned, the Complainant’s trademark registrations for BUREAU VERITAS predate the registration of the disputed domain name.

The evidence in the case record establishes that the Respondent is redirecting the disputed domain name to the Complainant’s official website. Thus, in the absence of any evidence to the contrary, it is clear that the Respondent has registered and used the disputed domain name with the Complainant’s trademark and business in mind. The Respondent’s failure to use the disputed domain name for any purpose but to redirect Internet users to the Complainant’s website is evidence of bad faith registration and use. See WIPO Overview 3.0, section 3.1.4. Consequently, the circumstances in the case indicate that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location. Internet users may be misled into believing that the disputed domain name belongs to or is in some way associated with or provided by the Complainant.

There is no evidence in the case file that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name has been registered and used in bad faith.

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 <bureauveritaseu.com> shall be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: March 7, 2022