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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bechtel Group, Inc. v. Registration Private, Domains By Proxy, LLC / I S, ICS INC

Case No. D2017-1127

1. The Parties

The Complainant is Bechtel Group, Inc.of San Francisco, California, United States of America ("USA" or "United States"), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, USA / I S, ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <bechteltrustandthrift.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 8, 2017. On June 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2017, 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 June 14, 2017 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 June 19, 2017.

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 June 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 11, 2017.

The Center appointed Charles Gielen as the sole panelist in this matter on July 17, 2017. 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 owns several registrations for the trademark BECHTEL. The Complainant refers in particular to United States trademark registrations No. 1047369, registered on August 31, 1976 for services in classes 37 and 42 and No. 1047370, registered on August 31, 1976 for the same services as well as No. 1086326, registered on February 28, 1978 for goods in class 16. Furthermore the Complainant refers to Canadian trademark registration No. 231160, registered on December 8, 1978 for goods in class 16 and services in classes 37 and 42. The Complainant has a registration of and uses the domain name <bechtel.com>

The disputed domain name <bechteltrustandthrift.com> was registered on May 22, 2017.

5. Parties' Contentions

A. Complainant

The Complainant is the holding company for a large group of international construction, procurement and engineering companies based in the United States, in this decision collectively referred to as "the Complainant". The Complainant contends it has established itself as one of the most respected global engineering, construction, and project management companies in the world. Founded in 1898, the Complainant has completed more than 25,000 projects across 160 countries on all continents and in 2015 employed approximately 55,000 people. The Complainant runs an employee retirement plan which is known under the name "Bechtel Trust and Thrift Plan". This plan has approximately 18,000 participants and holds approximately USD 5 billion in participant assets. The participants have access to their accounts via the website "www.trustandthrift.empower-retirement.com".

The disputed domain name resolves in a website that reproduces the disputed domain name <bechteltrustandthrift.com> on top of the first page and features links to unrelated third-party websites. The Complainant argues that presumably the Respondent receives pay-per-click fees from the linked websites that are listed at the disputed domain name's website. Furthermore, on the website of the Respondent, the disputed domain name is being offered for sale.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's trademark BECHTEL. The disputed domain name takes the whole of the trademark BECHTEL and the only added words ("trustandthrift") directly relate to and describe the Complainant's employee retirement plan. According to the Complainant, the fact that this term is closely linked and associated with the Complainant's trademark only serves to underscore and increase the confusing similarity between the disputed domain name and the Complainant's trademark.

Furthermore, the Complainant argues that the Respondent does not have any rights or legitimate interests in the disputed domain name which was registered long after the Complainant established rights in the trademark. Also, the Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not given the Respondent permission to use the Complainant's trademark in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name, which, according to the Complainant, evidences a lack of rights or legitimate interests. Finally, the disputed domain name is being offered for sale in an amount that exceeds the Respondent's out of pocket expenses in registering the disputed domain name and this serves as further evidence of the Respondent's lack of rights and legitimate interests.

Finally the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. First of all, the Complainant has marketed and sold its goods and services using the trademark BECHTEL long before the Respondent's registration of the disputed domain name. By registering a domain name that incorporates the Complainant's trademark in its entirety, and incorporates the name of the Complainant's employee retirement plan ("trust and thrift"), the Respondent has created a domain name that is confusingly similar to the Complainant's trademark and services, by which the Respondent has demonstrated a knowledge of and familiarity with the Complainant's trademark and businesses. Furthermore, the Complainant argues that the Respondent creates a likelihood of confusion with the Complainant and its trademark by registering a domain name that incorporates the Complainant's trademark in its entirety and the name of the Complainant's retirement services for its employees. Such actions demonstrate that the Respondent is using the disputed domain name to mislead Internet users as to the source of the disputed domain name and website and confuse unsuspecting Internet users looking for the Complainant's services. By creating a likelihood of confusion between the trademark of the Complainant and the disputed domain name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, the Respondent has demonstrated an intent to capitalize on the fame and goodwill of the Complainant's trademark in order to increase traffic to website under the disputed domain name for the Respondent's own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted on the Respondent's website. Also, the Complainant argues that by registering the disputed domain name the Respondent prevents the Complainant from reflecting its business under a corresponding domain name and points out that the Respondent engages in a pattern of such conduct. The Complainant refers to 195 cases in which the Respondent was ordered to transfer registered domain names. Furthermore, the Complainant refers to registrations for several other domain names of the Respondent that misappropriate well-known trademarks. Finally, the Complainant contends that the Respondent is offering to sell the disputed domain name, which constitutes bad faith under the Policy because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out of pocket expenses.

B. Respondent

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

6. Discussion and Findings

The Panel is of the opinion that the Complainant's contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy. The Panel gives the following reasons for its decision.

A. Identical or Confusingly Similar

The Complainant proves that it has rights in the trademark BECHTEL. The term "bechtel" in the disputed domain name is identical to this trademark. The fact that the disputed domain name contains the term "trustandthrift" does not alter the conclusion that the disputed domain name is confusingly similar to the trademark BECHTEL. The reason is twofold. First of all, the term "trustandthrift" is descriptive and is used by the Complainant for its employee retirement plan in conjunction with its trademark BECHTEL. Secondly the term "bechtel" in the disputed domain name is the first word and therefore the dominant element. The added suffix ".com" does not change the finding that the disputed domain name is confusingly similar, since the ".com" is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the generic Top-Level Domain ("gTLD") ".com" is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the Complainant's trademark BECHTEL.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant's trademark is not a term one would choose as a domain name without having specific reasons to choose such a term and this word certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore, the disputed domain name was registered long after the Complainant started to use the trademark BECHTEL. The Panel is convinced that the term "bechtel" in the disputed domain name has no other meaning except to refer to the Complainant and its business, in particular because this term is followed by the words "trustandthrift" that are used by the Complainant in connection with its employee retirement plan. Furthermore, the Panel finds a clear indication of lack of rights or legitimate interest in the fact that the Respondent offers the disputed domain name for sale. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.

In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.

The Panel agrees with the Complainant that by registering a domain name that incorporates the Complainant's trademark in its entirety, and incorporates the name of the Complainant's employee retirement plan ("trust and thrift"), the Respondent has created a domain name that is confusingly similar to the Complainant's trademark and services, by which the Respondent has demonstrated a knowledge of and familiarity with the Complainant's trademark and businesses. In doing so, the Respondent creates a likelihood of confusion with the Complainant and its trademark. The Panel is of the opinion that the Respondent is using the disputed domain name to mislead Internet users as to the source of the disputed domain name and website and confuse Internet users looking for the Complainant's services. Furthermore, the Complainant made it clear that the Respondent engages is a pattern of conduct of cybersquatting not only by offering for sale the disputed domain name for more than its associated out-of-pocket expenses but also by having registered domain names in which well-known trademarks are being used.

The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.

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 <bechteltrustandthrift.com> be transferred to the Complainant.

Charles Gielen
Sole Panelist
Date: July 21, 2017

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