The Complainant is Davey Bickford, France, represented by Tmark Conseils, France.
The Respondent is Greg Victor, Nigeria and Russian Federation.
The disputed domain name <daveybickfordaneax.com> is registered with GoDaddy.com, LLC.
The disputed domain name <daveybickfordneax.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu.
Together the disputed domain names are hereinafter referred to as the “Domain Names” and GoDaddy.com, LLC and Hosting Concepts B.V. d/b/a Registrar.eu are referred to as the “Registrars”.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2021. On September 10, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Domain Names. On September 10 and 13, 2021, the Registrars respectively transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 20, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 24, 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 September 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2021.
The Center appointed Jeremy Speres as the sole panelist in this matter on November 5, 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 a French company that operates a demolition goods business with around 650 employees worldwide, dating back to 1831. Following the 2015 acquisition of the Complainant by a Chilean company, Enaex, the Complainant changed its trade name from “Davey Bickford” to “Davey Bickford Enaex”.
The Complainant owns trade mark registrations for its DAVEY BICKFORD mark in many jurisdictions. Most relevant for this matter is International Trademark Registration no. 436083 designating the Russian Federation (one of the Respondent’s territories) for a DAVEY BICKFORD device mark in classes 1, 6, 9, 13, 28 and 34 with a registration date in 1978.
The Complainant, through its affiliated company, owns the domain name <daveybickfordenaex.com> created on April 20, 2018, and the Complainant provides information related to its products and services on the website at the domain name <daveybickfordenaex.com>.
The Domain Names were registered on June 17 and June 22, 2021 respectively. As at the drafting of this Decision, the Domain Names resolved to parked pages displaying pay-per-click (“PPC”) advertisements for goods and services unrelated to the Complainant while at the time of filing of the Complaint, the Domain Name <daveybickfordneax.com> resolved to an inactive website.
The Complainant contends that the Domain Names are confusingly similar to its DAVEY BICKFORD mark, that the Respondent has no rights or legitimate interests in the Domain Names, and the Domain Names were registered and used in bad faith given that the Respondent previously lost a UDRP case involving the Complainant’s marks prior to registration of the Domain Names and thus must have had the Complainant in mind when registering and using the Domain Names in this case.
The Respondent did not reply to the Complainant’s contentions.
It is well established that where the trade mark is recognisable in the domain name, as in this case, the addition of other terms does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8. The Complainant has presented sufficient evidence to establish its rights in the DAVEY BICKFORD mark through registration and use. The Domain Names wholly incorporate the Complainant’s registered DAVEY BICKFORD mark and exhibit only minor typographical variants of the Enaex element of the Complainant’s Davey Bickford Enaex trade name, which does not prevent a finding of confusing similarity because the DAVEY BICKFORD mark remains recognisable.
The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant’s DAVEY BICKFORD mark was registered (including in one of the Respondent’s territories) and well known in many territories long prior to registration of the Domain Names. As a result of its use globally since 2015, the Complainant’s Davey Bickford Enaex trade name would also appear to have been widely known prior to registration of the Domain Names.
The Domain Names are confusingly similar to the Complainant’s DAVEY BICKFORD mark, the Complainant has certified that the Domain Names are unauthorised by it, the Respondent did not file a Response, and there is no evidence that any of the circumstances set out in paragraphs 4(c)(ii) and (iii) of the Policy pertain.
Regarding paragraph 4(c)(i) of the Policy, the Domain Names are currently used for PPC advertising. The DAVEY BICKFORD mark is well known and highly specific to the Complainant and has no semantic value which the Respondent might, in good faith, have sought to adopt. Thus, the choice of the Domain Names seems entirely incongruous with the content of the websites to which they have resolved. Without any explanation as to why there could be any legitimate reason to register the Domain Names it is likely that the Domain Names were registered in order to take unfair advantage of the reputation of the Complainant’s mark (Boursorama S.A. v. Pencreach Jacques, WIPO Case No. D2021-1195). This cannot represent a bona fide offering conferring rights or legitimate interests onto the Respondent (WIPO Overview 3.0 at section 2.9). The Panel further notes that the Domain Name <daveybickfordneax.com> previously did not resolve to any active website.
The Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Respondent was previously found to have registered and used another domain name in bad faith, also consisting of the Complainant’s DAVEY BICKFORD mark plus a typographical variant of the Enaex element of the Complainant’s DAVEY BICKFORD ENAEX trade name, in Davey Bickford v. greg victor, WIPO Case No. D2021-1012. That case was decided in May 2021, prior to registration of the Domain Names. The Respondent was therefore clearly aware of the Complainant’s mark prior to registration and use of the Domain Names. Taken together with the facts that the Complainant’s mark is well known and highly specific to the Complainant and has no semantic value which the Respondent might, in good faith, have sought to adopt, it is clear that the Respondent had the Complainant in mind when registering and using the Domain Names for websites with PPC links for its own commercial benefit. Paragraph 4(b)(iv) of the Policy is therefore eminently applicable. Although the Domain Name <daveybickfordneax.com>, at the time of filing of the Complaint, did not resolve to any active website, this does not prevent a finding of bad faith under the doctrine of passive holding in this case (WIPO Overview 3.0 at section 3.3).
Further, the Panel also finds that the Respondent’s pattern of bad faith conduct has satisfied paragraph 4(b)(ii) of the Policy (WIPO Overview 3.0 at section 3.1.2).
The Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <daveybickfordaneax.com> and <daveybickfordneax.com>, be transferred to the Complainant.
Jeremy Speres
Sole Panelist
Date: November 19, 2021
1 According to the Registrars’ Verification Responses, the registrant for the disputed domain names is the same. While the registrant has used the same email address to register the disputed domain names, he has used two different physical addresses.