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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bureau Veritas v. Wolfgang Robert

Case No. D2021-2376

1. The Parties

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

The Respondent is Wolfgang Robert, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <bureauveiritas.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2021. On July 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on July 23, 2021 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 July 27, 2021.

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 July 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2021.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on August 25, 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.

4. Factual Background

The Complainant was founded in 1828, and it is mainly involved in the businesses of testing, inspection and certification. It offers inter alia tracking information about ships, and equipment to underwriters. In 2018, the Complainant’s revenue amounted to 4.8 billion Euros. The Complainant has more than 400,000 clients, over 77,000 employees at some 1,500 offices and laboratories in 140 countries.

The Complainant owns several trademarks incorporating the words “BUREAU VERITAS”, such as European trademark registration No. 004518544, registered on June 1, 2006, and European trademark registration No. 005927711, registered on February 6, 2008.

The Complainant owns several domain names, such as <bureauveritas.com> and <bureauveritas.fr>.

The Domain Name was registered on June 28, 2021. At the time of drafting the Decision, the Domain Name resolved to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant documents trademark rights in BUREAU VERITAS, and argues that the Domain Name is almost identical to the Complainant’s trademarks, only adding a typo in the form of an additional letter “i”. The addition is clearly not sufficient to avoid a likelihood of confusion.

The Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant argues that the Respondent cannot establish rights in the Domain Name, as the Respondent has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The intentional misspelling of the Complainant’s prior rights cannot constitute legitimate noncommercial or fair use.

Finally, the Complainant submits that, considering the notoriety of the Complainant, the Respondent could not have been unaware of the Complainant’s prior rights. The Domain Name is a confusingly similar mistype of the Complainant’s trademark. The practice of typosquatting is in itself evidence of bad faith. Moreover, the Respondent’s bad faith is further supported by it utilizing a privacy service.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in its trademark BUREAU VERITAS. The test for confusing similarity involves a comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark in its entirety, with the addition of the letter “i”. The addition does not prevent a finding of confusing similarity. For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant. There is no evidence suggesting that the Respondent has any rights or legitimate interests in the Domain Name. There is no evidence of bona fide offering of goods or services nor legitimate noncommercial or fair use in the case file. The Domain Name appears to be a misspelling of the Complainant’s trademark, and the Domain Name resolves to an inactive website.

The Panel finds that the Complainant has made out a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name, which has been unrebutted by the Respondent. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s trademarks were registered long before the registration of the Domain Name. The Complainant’s trademark has been and is widely recognized. The Domain Name is a confusingly similar mistype of the Complainant’s trademark. It is likely that the Respondent knew of the Complainant’s trademark and its business when the Respondent registered the Domain Name.

UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4.

The Panel notes that the Domain Name does not resolve to an active website. Under the circumstances of this case, the Panel finds that the non-use of the Domain Name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.

The Respondent’s use of a privacy service to hide its identity is under the circumstances of this case further evidence of bad faith.

The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) of the Policy.

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 Domain Name <bureauveiritas.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: September 6, 2021

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