The Complainant is Bouygues, France, represented by Nameshield, France.
The Respondent is Eric Bouret, France.
The disputed domain name <bouygues-constructions-sa.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on December 15, 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 December 15, 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 December 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2021.
The Center appointed William Lobelson as the sole panelist in this matter on January 13, 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.
The Complainant is Bouygues, a French group of industrial companies devoted inter alia to construction, with its subsidiary Bouygues Construction.
The Complainant is the owner of numerous trademarks in BOUYGUES, including:
- International Trademark BOUYGUES No. 390770 registered since September 1, 1972;
- International Trademark BOUYGUES No. 390771 registered since September 1, 1972;
- International Trademark BOUYGUES No. 949188 registered since September 27, 2007.
The Complainant is also the owner of several trademarks in BOUYGUES CONSTRUCTION, such as the International Trademark BOUYGUES CONSTRUCTION No. 732339 registered since April 13, 2000.
The Complainant also owns, through its subsidiary, a number of domain names including the same distinctive trademark BOUYGUES CONSTRUCTION such as <bouygues-construction.com>, registered since May 10, 1999 (Annex 7 to the Complaint).
The disputed domain name <bouygues-constructions-sa.com> was registered on November 6, 2020, and resolves to a page displaying “[t]his page was generated for you new blank website” and “[a]ll access details are available in your account manager after login”.
The Complainant claims that the disputed domain name is confusingly similar to its earlier trademarks, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith. The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i));
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii)); and
(iii) the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
The Complainant is the owner of numerous BOUYGUES formative and word trademarks, including trademark registrations for BOUYGUES CONSTRUCTION, all registered and used in relation with construction services.
The disputed domain name <bouygues-constructions-sa.com> reproduces the Complainant’s trademark BOUYGUES in its entirety, and reproduces the Complainant’s trademarks BOUYGUES CONSTRUCTION.
The disputed domain name contains the terms “constructions” (also French for building or construction) and “sa” (French abbreviation for joint-stock company).
Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), in this case the dictionary English/French word “constructions” would not prevent a finding of confusing similarity under the first element; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The addition of the abbreviation “sa”, commonly used in France as a reference to the legal form of a joint stock company, and the generic Top-Level Domain (“gTLD”) “.com” does not either prevent a finding of confusing similarity.
From the standpoint of Internet users seeking or expecting the Complainant, the disputed domain name shall be considered as being owned by – or being registered with the consent of the Complainant.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP, paragraph 4(c) include the following:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable 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 and services;
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Respondent has not filed a response and thus did not deny the Complainant’s assertions, nor brought any information or evidence for demonstrating any 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 name, particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain name.
The Complainant further contends that the Respondent is not known under the disputed domain name, does not own any proprietary rights in the name Bouygues Constructions SA and does not make any bona fide use - neither commercial nor noncommercial, of the same, being emphasized that the disputed domain name does not resolve towards an active web page with substantive content (as reflected in the Annex 8 to the Complaint).
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 name.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Complainant claims that the Respondent has registered the disputed domain name and uses the same in bad faith. It is noted by the Panel that the Complainant contends that the Respondent directs the disputed domain name to a parking page, and refers in this respect to its Annex 8, but the said Annex 8 does in fact reflect that the disputed domain name is not being actively used by the Respondent, and does not route to an active web page with substantive content.
It is a consensus view among UDRP panels that, with comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, the apparent lack of so‑called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.
The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.
Examples of what may be cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark, no response to the Complaint having been filed, and the Respondent’s concealment of its identity. UDRP panels may draw inferences about whether a domain name is used in bad faith given the circumstances surrounding registration.
As stated in WIPO Overview 3.0, section 3.3, there is a consensus view about “passive holding”:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (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 respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Such passive holding is to be regarded as use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).
See also, Confédération Nationale du Crédit Mutuel v. Nicola Bazar, WIPO Case No. D2013-1572:
“Respondent knew or should have known that the Domain Name included Complainant’s CREDIT MUTUEL well-known trademark. […] However, passive holding of the website does not prevent the Panel from finding registration and use in bad faith. The Panel further notes that Respondent undeveloped use of the website at the Domain Name which incorporates Complainant’s trademark in its entirety indicates that Respondent possibly registered the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, as per paragraph 4(b)(iv) of the Policy.”
The Panel observes besides that the Respondent made the choice of associating the trademark BOUYGUES with the dictionary English/French word “constructions” which directly refers to the field of activity of the Complainant.
The fact that the Respondent added the word “constructions” to the trademark BOUYGUES cannot be a coincidence and for this Panel it is a clear indication that he necessarily had the Complainant’s trademark in mind when he registered the disputed domain name <bouygues-constructions-sa.com>. The Panel further finds that passive holding of the disputed domain name in this case constitutes bad faith.
Finally, the Complainant has established that an email server has also been configured on the disputed domain name (as per the Annex 9 to the Complaint), thus inducing a likelihood that the Respondent might have contemplated to use the disputed domain name for potential fraudulent use of an email address incorporating the Complainant’s trademark and / or phishing purposes (Statoil ASA v. Domain Admin, Privacy Protection Service Inc D/B/A PrivacyProtect.org /Nicolas Kerry, WIPO Case No. D2017-0046).
Consequently, in view of all the above circumstances, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are satisfied.
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-constructions-sa.com> be transferred to the Complainant.
William Lobelson
Sole Panelist
Date: January 18, 2021