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On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No.	102793
Time of Filing	2019-12-02 09:04:59
Disputed domain name	BOUYGUES-CONSTRUCTIONSTP.COM

Case Administrator
Name	Iveta Špiclová

Complainant
Organization	BOUYGUES
Authorized Representative
Organization	Nameshield (Laurent Becker)

Respondent
Organization	Rafael Vivier

Other Legal Proceedings
The Panel is not cognizant of any other pending or decided legal proceedings relating to the disputed domain name.

Identification of rights
The Complainant is the owner of trademark “BOUYGUES CONSTRUCTION”®, under registration n°732339 registered since April 13, 2000.

Factual Background
The following facts have been asserted by the Complainant and have not been contested by the Respondent: Founded by Francis Bouygues in 1952, BOUYGUES S.A. (the Complainant) is a diversified group of industrial companies structured by a strong corporate culture. Its businesses are centered on two hubs: construction, with Bouygues Construction, Bouygues Immobilier, and Colas; and telecoms and media, with French TV channel TF1 and Bouygues Telecom. Operating in 93 countries, the Complainant’s net profit attributable to the Group amounted to €1311 million. Its subsidiary BOUYGUES CONSTRUCTION is a world player in the fields of building, public works, energy, and services. As a global player in construction and services, BOUYGUES CONSTRUCTION designs, builds and operates buildings and structures which improve the quality of people's living and working environment: public and private buildings, transport infrastructures and energy and communications networks. As leader in sustainable construction, the Group and its 56,980 employees have a long-term commitment to helping their customers shape a better life. The Complainant owns, through its subsidiary, a number of domain names including the same distinctive wording BOUYGUES CONSTRUCTION® such as <bouygues-construction.com>, registered since May 9, 1999, and <bouygues-tp.com> registered since January 30, 2013. The disputed domain name <bouygues-constructionstp.com> was registered on September 26, 2019. The disputed domain name <bouygues-constructionstp.com> is inactive.

Factual Background

The following facts have been asserted by the Complainant and have not been contested by the Respondent:

Founded by Francis Bouygues in 1952, BOUYGUES S.A. (the Complainant) is a diversified group of industrial companies structured by a strong corporate culture. Its businesses are centered on two hubs: construction, with Bouygues Construction, Bouygues Immobilier, and Colas; and telecoms and media, with French TV channel TF1 and Bouygues Telecom. Operating in 93 countries, the Complainant’s net profit attributable to the Group amounted to €1311 million.

Its subsidiary BOUYGUES CONSTRUCTION is a world player in the fields of building, public works, energy, and services.

As a global player in construction and services, BOUYGUES CONSTRUCTION designs, builds and operates buildings and structures which improve the quality of people's living and working environment: public and private buildings, transport infrastructures and energy and communications networks.

As leader in sustainable construction, the Group and its 56,980 employees have a long-term commitment to helping their customers shape a better life.

The Complainant owns, through its subsidiary, a number of domain names including the same distinctive wording BOUYGUES CONSTRUCTION® such as <bouygues-construction.com>, registered since May 9, 1999, and <bouygues-tp.com> registered since January 30, 2013.

The disputed domain name <bouygues-constructionstp.com> was registered on September 26, 2019. The disputed domain name <bouygues-constructionstp.com> is inactive.


COMPLAINANT A. The Complainant contends that the disputed domain name <bouygues-constructionstp.com> is confusingly similar to its trademark “BOUYGUES CONSTRUCTION”®. Indeed, the trademark “BOUYGUES CONSTRUCTION”® is included in its entirety. The Complainant contends that the addition of a hyphen, the letter “S” at the end of the term “CONSTRUCTION”, which is a mark of the plural, and the abbreviation “TP” (which refers to the French expression “TRAVAUX PUBLICS”, one of the activities of BOUYGUES CONSTRUCTION) are not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark “BOUYGUES CONSTRUCTION”®. It does not change the overall impression of the designation as being connected to the Complainant’s trademark “BOUYGUES CONSTRUCTION”®. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and the domain names associated. All these elements are not sufficient to escape the finding that the disputed domain name is confusingly similar to the Complainant's trademarks and linked to the Complainant. Thus, the disputed domain name <bouygues-constructionstp.com> is confusingly similar to the Complainant’s trademark BOUYGUES CONSTRUCTION®. B. A Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy. The Respondent is not known as the disputed domain name in the Whois database, and has not acquired trademarks mark rights on this terms. Past Panels have held that a Respondent was not commonly known by a disputed domain name if the WHOIS information was not similar to the disputed domain name. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name and that he is not related in any way to the Complainant’s business. The Complainant contends that the Respondent is not affiliated with him nor authorized by him in any way to use the trademark “BOUYGUES CONSTRUCTION”®. The Complainant does not carry out any activity for, nor has any business with the Respondent. Besides, the Complainant asserts that Respondent uses the disputed domain name to pass itself off as a purchase manager employed by BOUGUES TRAVAUX PUBLICS, an affiliate of BOUYGUES CONSTRUCTION. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy 4 (c)(i), nor a non-commercial or fair use pursuant to Policy 4(c)(iii). Furthermore, the domain name is inactive. Therefore, the Complainant contends that Respondent did not make any use of disputed domain name since its registration, and it confirms that Respondent has no demonstrable plan to use the disputed domain name, except for the phishing scheme. It demonstrates a lack of legitimate interests in respect of the disputed domain name. Thus, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name has been registered and is being used in bad faith C. The Complainant states that the disputed domain name <bouygues-constructionstp.com> is confusingly similar to its trademark “BOUYGUES CONSTRUCTION”®. Indeed, the domain name contains the Complainant's trademark in its entirety. Prior UDRP panels have established that the trademark “BOUYGUES CONSTRUCTION”® is well-known. Besides, the Respondent has used the disputed domain name in a phishing scheme. Thus, the Respondent necessarily knew about the Complainant and its affiliates. Furthermore, the Complainant states that the Responded used the disputed domain name in bad faith. It is well-established that using a domain name for purposes of phishing or other fraudulent activity constitutes solid evidence of bad faith use. Finally, the disputed domain name is inactive. The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law. Finally, the Respondent has been involved in past UDRP proceedings with the same Complainant. This pattern of conduct evidences the Respondent's bad faith. Please see for instance WIPO Case No. D2019-1390, Bouygues S.A. v. Whois Privacy (enumDNS dba) / Rafael Vivier; WIPO Case No. D2019-1401, Bouygues S.A. v. Rafael Viver. On these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith. RESPONDENT No administratively compliant Response has been filed.

COMPLAINANT

A. The Complainant contends that the disputed domain name <bouygues-constructionstp.com> is confusingly similar to its trademark “BOUYGUES CONSTRUCTION”®. Indeed, the trademark “BOUYGUES CONSTRUCTION”® is included in its entirety.

The Complainant contends that the addition of a hyphen, the letter “S” at the end of the term “CONSTRUCTION”, which is a mark of the plural, and the abbreviation “TP” (which refers to the French expression “TRAVAUX PUBLICS”, one of the activities of BOUYGUES CONSTRUCTION) are not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark “BOUYGUES CONSTRUCTION”®. It does not change the overall impression of the designation as being connected to the Complainant’s trademark “BOUYGUES CONSTRUCTION”®. It does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and the domain names associated.

All these elements are not sufficient to escape the finding that the disputed domain name is confusingly similar to the Complainant's trademarks and linked to the Complainant.

Thus, the disputed domain name <bouygues-constructionstp.com> is confusingly similar to the Complainant’s trademark BOUYGUES CONSTRUCTION®.

B. A Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.

The Respondent is not known as the disputed domain name in the Whois database, and has not acquired trademarks mark rights on this terms. Past Panels have held that a Respondent was not commonly known by a disputed domain name if the WHOIS information was not similar to the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name and that he is not related in any way to the Complainant’s business. The Complainant contends that the Respondent is not affiliated with him nor authorized by him in any way to use the trademark “BOUYGUES CONSTRUCTION”®. The Complainant does not carry out any activity for, nor has any business with the Respondent.

Besides, the Complainant asserts that Respondent uses the disputed domain name to pass itself off as a purchase manager employed by BOUGUES TRAVAUX PUBLICS, an affiliate of BOUYGUES CONSTRUCTION. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy 4 (c)(i), nor a non-commercial or fair use pursuant to Policy 4(c)(iii).

Furthermore, the domain name is inactive. Therefore, the Complainant contends that Respondent did not make any use of disputed domain name since its registration, and it confirms that Respondent has no demonstrable plan to use the disputed domain name, except for the phishing scheme. It demonstrates a lack of legitimate interests in respect of the disputed domain name.

Thus, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The disputed domain name has been registered and is being used in bad faith

C. The Complainant states that the disputed domain name <bouygues-constructionstp.com> is confusingly similar to its trademark “BOUYGUES CONSTRUCTION”®. Indeed, the domain name contains the Complainant's trademark in its entirety.

Prior UDRP panels have established that the trademark “BOUYGUES CONSTRUCTION”® is well-known.

Besides, the Respondent has used the disputed domain name in a phishing scheme. Thus, the Respondent necessarily knew about the Complainant and its affiliates.

Furthermore, the Complainant states that the Responded used the disputed domain name in bad faith. It is well-established that using a domain name for purposes of phishing or other fraudulent activity constitutes solid evidence of bad faith use.

Finally, the disputed domain name is inactive. The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

Finally, the Respondent has been involved in past UDRP proceedings with the same Complainant. This pattern of conduct evidences the Respondent's bad faith. Please see for instance WIPO Case No. D2019-1390, Bouygues S.A. v. Whois Privacy (enumDNS dba) / Rafael Vivier; WIPO Case No. D2019-1401, Bouygues S.A. v. Rafael Viver.

On these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.

RESPONDENT

No administratively compliant Response has been filed.

Rights
To the satisfaction of the Panel, the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

No rights or legitimate interests
To the satisfaction of the Panel, the Complainant has shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

Bad faith
To the satisfaction of the Panel, the Complainant has shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP have been met and there is no other reason why it would be unsuitable to provide the Decision.

Principal Reasons for the Decision
A. Identical or Confusingly Similar As per evidence on record, the Complainant is the owner of trademark “BOUYGUES CONSTRUCTION”® since April 2000. Based on this, the Panel is satisfied that the Complainant has shown it owns rights in the trademark “BOUYGUES CONSTRUCTION”®. Turning now to analyzing if there is confusing similarity between the disputed domain name and the trademark, the Panel notes that the disputed domain name reproduces the trademark in its entirety, with a couple of exceptions. The first of these exception relates to the addition of a hyphen between the two terms comprising the trademark. This addition is immaterial, since hyphens are commonly used in domain names comprising two or more terms. The second exception relates to the addition of the letter “S” at the end of the term “CONSTRUCTION”. Based on the available record and the balance of probability, it would appear that the letter “S” is meant to transform the term “CONSTRUCTION” into its plural form ie. “CONSTRUCTIONS”. The third exception relates to the letters “TP”, which again, based on the available record and the balance of probability it appears to refer to the abbreviation “TP”, which in the French language – that is the official language of the HQ of the Complainant – refers to the expression “TRAVAUX PUBLICS”; one of the activities of the Complainant. Based on the above analysis and for the purposes of the fist element, these small differences are immaterial and not substantive enough to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. Consequently, the Panel determines that the Complaint has satisfied the first element set under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that the Complainant requires only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by providing evidence substantiating rights or legitimate interests in the disputed domain name (see section 2.2.1 of the WIPO Overview 3.0). In the matter at hand, the uncontested facts imply that a) the Respondent is not known as the disputed domain name; b) the Respondent is not affiliated with it nor authorized by it in any way to use the trademark “BOUYGUES CONSTRUCTION”®, as contested by the Complainant; c) the Respondent has not acquired trademark rights on this term; d) the Respondent does not carry out any activity for, nor has any business with the Complainant; e) the website associated with the disputed domain name is inactive and f) the Respondent has used an e-mail associated with the disputed domain name with a deceptive intent in an attempt to trick someone into believing the source of the message is the Complainant. These facts persuade the Panel to conclude that the Respondent does not have rights or legitimate interests in the disputed domain name. As to the evidence of the e-mail associated to the disputed domain name being used with a deceptive intent, this matter is better dealt with under the third element, however, this kind of illegal activity by the Respondent can never confer rights or legitimate interests on a respondent, as it has been consistently and categorically held by Panels (see section 2.13.1 of the WIPO Overview 3.0). In conclusion, the uncontested facts on record and on the balance of probability, the Panel determines that the Respondent has no rights or legitimate interests in the disputed domain name and consequently the Complainant has fulfilled the second requirement set under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant provided evidence on record that shows a fraudulent use of the disputed domain name through an e-mail meant to deceptively appear as having originated from the Complainant, with a clear intention of deriving an unjust enrichment to the benefit of the Respondent. The Panel believes that this conduct falls squarely in the type of illegal conducts alluded to as per the summary of consensus panel views set forth under section 3.4 of the WIPO Overview 3.0. Additionally, as per the evidence on record, the Respondent appears to have previously and in a pattern-like conduct engaged in registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name — this appears to be the case since the Respondent has been subject of previous UDRP proceedings. This conduct is considered as evidence of Registration and Use in Bad Faith as per paragraph 4.b. of the UDRP. In light of the circumstances of the case, based on the available records, the Panel finds that the Complainant has proven that the disputed domain name was registered and is used in bad faith according to paragraph 4(a)(iii) of the Policy. D. Decision For the foregoing reasons and in concurrence with the provisions specified under Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders the transfer of the disputed domain name to the Complainant.

Principal Reasons for the Decision

A. Identical or Confusingly Similar

As per evidence on record, the Complainant is the owner of trademark “BOUYGUES CONSTRUCTION”® since April 2000. Based on this, the Panel is satisfied that the Complainant has shown it owns rights in the trademark “BOUYGUES CONSTRUCTION”®.

Turning now to analyzing if there is confusing similarity between the disputed domain name and the trademark, the Panel notes that the disputed domain name reproduces the trademark in its entirety, with a couple of exceptions. The first of these exception relates to the addition of a hyphen between the two terms comprising the trademark. This addition is immaterial, since hyphens are commonly used in domain names comprising two or more terms. The second exception relates to the addition of the letter “S” at the end of the term “CONSTRUCTION”. Based on the available record and the balance of probability, it would appear that the letter “S” is meant to transform the term “CONSTRUCTION” into its plural form ie. “CONSTRUCTIONS”. The third exception relates to the letters “TP”, which again, based on the available record and the balance of probability it appears to refer to the abbreviation “TP”, which in the French language – that is the official language of the HQ of the Complainant – refers to the expression “TRAVAUX PUBLICS”; one of the activities of the Complainant.

Based on the above analysis and for the purposes of the fist element, these small differences are immaterial and not substantive enough to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks.

Consequently, the Panel determines that the Complaint has satisfied the first element set under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that the Complainant requires only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by providing evidence substantiating rights or legitimate interests in the disputed domain name (see section 2.2.1 of the WIPO Overview 3.0).

In the matter at hand, the uncontested facts imply that a) the Respondent is not known as the disputed domain name; b) the Respondent is not affiliated with it nor authorized by it in any way to use the trademark “BOUYGUES CONSTRUCTION”®, as contested by the Complainant; c) the Respondent has not acquired trademark rights on this term; d) the Respondent does not carry out any activity for, nor has any business with the Complainant; e) the website associated with the disputed domain name is inactive and f) the Respondent has used an e-mail associated with the disputed domain name with a deceptive intent in an attempt to trick someone into believing the source of the message is the Complainant.

These facts persuade the Panel to conclude that the Respondent does not have rights or legitimate interests in the disputed domain name. As to the evidence of the e-mail associated to the disputed domain name being used with a deceptive intent, this matter is better dealt with under the third element, however, this kind of illegal activity by the Respondent can never confer rights or legitimate interests on a respondent, as it has been consistently and categorically held by Panels (see section 2.13.1 of the WIPO Overview 3.0).

In conclusion, the uncontested facts on record and on the balance of probability, the Panel determines that the Respondent has no rights or legitimate interests in the disputed domain name and consequently the Complainant has fulfilled the second requirement set under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant provided evidence on record that shows a fraudulent use of the disputed domain name through an e-mail meant to deceptively appear as having originated from the Complainant, with a clear intention of deriving an unjust enrichment to the benefit of the Respondent. The Panel believes that this conduct falls squarely in the type of illegal conducts alluded to as per the summary of consensus panel views set forth under section 3.4 of the WIPO Overview 3.0.

Additionally, as per the evidence on record, the Respondent appears to have previously and in a pattern-like conduct engaged in registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name — this appears to be the case since the Respondent has been subject of previous UDRP proceedings. This conduct is considered as evidence of Registration and Use in Bad Faith as per paragraph 4.b. of the UDRP.

In light of the circumstances of the case, based on the available records, the Panel finds that the Complainant has proven that the disputed domain name was registered and is used in bad faith according to paragraph 4(a)(iii) of the Policy.

D. Decision

For the foregoing reasons and in concurrence with the provisions specified under Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders the transfer of the disputed domain name to the Complainant.

Decision
For all the reasons stated above, the Complaint is	Accepted
and the disputed domain name(s) is (are) to be
BOUYGUES-CONSTRUCTIONSTP.COM	Transferred to the Complainant

Panellists
Name	Rodolfo Carlos Rivas Rea
Date of Panel Decision	2020-01-06

Publication of the Decision
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Dispute 102793

Panel Decision