WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bureau Veritas v. Whois Protection / Hulmiho Ukolen, Poste Restante

Case No. D2017-1557

1. The Parties

The Complainant is Bureau Veritas of Neuilly-sur-Seine, France, represented by Nameshield, France.

The Respondent is Whois Protection of Prague, Czech Republic / Hulmiho Ukolen, Poste Rrestante of Helsinki, Finland.

2. The Domain Name and Registrar

The disputed domain name <bureaveritas.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 10, 2017. On August 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 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 August 16, 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 August 17, 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 August 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 12, 2017.

The Center appointed David Perkins as the sole panelist in this matter on September 22, 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

4.A Complainant

4.A.1. The Complainant, which was created in 1828, is a global leader in Testing, Inspection and Certification (TIC). Annex 3 to the Amended Complaint provides information relating to the Complainant's global TIC businesses. The Annex further records that the Complainant has 69,000 employees, 1,400 offices and laboratories in 140 countries, some 400,000 clients and that its 2016 revenue was EUR 4.55 billion. The Complainant is listed on the Euronext Paris Stock Exchange.

4.A.2 The Complainant's BUREAU VERITAS trade marks.

The Amended Complaint provides the following particulars of trade marks of which the Complainant is the registered proprietor:

4.A.3. The Complainant's domain names.

The Amended Complaint states that the Complainant has "various domain names" and exhibits in Annex 5 evidence of the domain name <bureauveritas.com>, which it describes as its main domain name. The <bureauveritas.com> domain name was registered on June 20,1996.

4.B. Respondent

4.B.1. In the absence of a Response, what is known of the Respondent is derived from the Amended Complaint and its Annexes.

4.B.2. The disputed domain name was registered on November 8, 2007. The extract from the website to which that domain name resolves, which is annexed to the Amended Complaint, provides links to online games and various job opportunities/vacancies. The Amended Complaint asserts as follows:

"The website in relation with the disputed domain name <bureaveritas.com> is in parking page with pay per click links in relation with the Complainant's activity since its registration."

Since the Panel was unclear what was meant by that sentence, he accessed himself the website to which the disputed domain name resolves. Under "Bureau Veritas " that website also links to <csagroup.org>, where CSA Group, which describes itself as a standards organisation, offers Product Safety Testing and Product Certification. It is now clear that the above quoted sentence from the Amended Complaint refers to the disputed domain name linking to services which compete with those offered by the Complainant.

4.B.3. Annexed to the Amended Complaint is a shot from the website to which the disputed domain name resolves offering to sell that domain name for USD 5,150.00.

5. Parties' Contentions.

5.A. Complainant

Identical or Confusingly Similar

5.A.1. The Complainant's case is that the disputed domain name is confusingly similar to its BUREAU VERITAS trade mark, since only the letter "u" is missing from the disputed domain name.

Rights or Legitimate Interests

5.A.2. The Complainant's case is as follows. First, the Respondent is neither licensed nor otherwise authorised to use the BUREAU VERITAS trade mark.

5.A.3. Second, that the use to which the Respondent has put the disputed domain name — which use is described in paragraph 4.B.2 above — is not a legitimate noncommercial or fair use but is used "with the sole aim of attracting Internet users and to divert Internet traffic initially destined to the Complainant into its proper website by creating a likelihood of confusion and by trading on the fame of the Complainant's trademark."

5.A.4. Third, that the offer for sale of the disputed domain name (see, paragraph 4.B.3 above) at a price far in excess of the normal out-of-pocket costs directly related to registering the disputed domain name is a violation of the Policy.

Registered and Used in Bad Faith

5.A.5 Here the Complainant asserts the following. First, that because the disputed domain name is confusingly similar to its BUREAU VERITAS trade mark, registration of the disputed domain name is indicative of bad faith. Second, the practise of typosquatting — as in this case by eliminating the letter "u" from "bureau" — is another indicator of bad faith. Third, that the use of the disputed domain name described in paragraph 4.B.2 above constitutes bad faith use under paragraph 4(b) (iv) of the Policy. Fourth, that the offer to sell the disputed domain name (see, 4.B.3 above) in combination with both the Respondent's lack of rights or legitimate interests in the disputed domain name and its use of the disputed domain name constitutes further evidence of bad faith registration and use. Fifth, that the Respondent's registration of the disputed domain name falls under paragraph 4(b)(ii) of the Policy.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding

(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5. The Complainant clearly has rights in the well-known BUREAU VERITAS trade mark.

6.6. Eliminating the second letter "u" of that trade mark in the disputed domain name does not avoid a finding of confusing similarity. It constitutes a clear case of typosquatting. See, in this respect section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

6.7. Accordingly, the Complaint meets the requirements of paragraph 4 (a)(i) of the Policy.

Rights or Legitimate Interests

6.8. The Complainant's case summarised in paragraphs 5.A.2 to 5.A.4 above is well made out and, consequently the Complaint succeeds under paragraph 4(a)(ii) the Policy.

Registered and Used in Bad Faith

6.9. The Complainant's case asserted under paragraph 4(b)(ii) of the Policy fails for want of evidence of "a pattern of conduct" required under that ground.

6.10. However, in the light of the facts summarised in paragraph 4.B.2 above, the Complainant's case under paragraph 4(b)(iv) of the Policy is well made out and, accordingly, the Complaint satisfies paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <bureaveritas.com> be transferred to the Complainant.

David Perkins
Sole Panelist
Date: September 25, 2017