The UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN) (the “Policy”) provides that complainant must prove each of the following to obtain transfer or cancellation of the domain name:
1. that respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
2. that respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
1) The disputed domain name is confusingly similar to a trademark in which the Complainant has rights
The Complainant has provided evidence and proved to be the owner of a trademark BOUYGUES BATIMENT.
The Panel finds that the disputed domain name <fr-bouyguesbatiment.com> fully incorporates the Complainant’s BOUYGUES BATIMENT trademark. Essentially, the Respondent has appropriated the trademark BOUYGUES BATIMENT by adding a hyphen and the abbreviation "FR" (for France) to presumably lead consumers to believe that it is affiliated with the Complainant. Previous UDRP panels have found that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for the purposes of the Policy (see, e.g., Oki Data Americas Inc. v ASD, Inc., WIPO Case No. D2001-0903).
Additionally, the disputed domain name not only fully incorporates the BOUYGUES BATIMENT trademark but also includes a purely generic top-level domain (“gTLD”) “com”. Previous UDRP panels have also held that the gTLD “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark. See e.g., Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016). Moreover, the “use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark."
The Panel finds that the disputed domain name <fr-bouyguesbatiment.com> shows a clear visual, phonetic and conceptual resemblance to the Complainant’s BOUYGUES BATIMENT mark, and could confuse Internet users into thinking that the disputed domain name is associated with the Complainant or its trademarks.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark BOUYGUES BATIMENT.
2) The Respondent lacks rights or legitimate interests in the disputed domain name
Under the Policy, a complainant is required to make out a prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see WIPO Overview 2.0, paragraph 2.1).
The Panel finds that the Respondent does not have a legal right to use the BOUYGUES BATIMENT mark as part of its domain name. The disputed domain name resolves to a parking page. The Respondent is not in any way affiliated with the Complainant, nor is it authorized to register the disputed domain name. Past panels have found it is not a bona fide offering of goods or services or legitimate non-commercial or fair use.
In a present case, the Respondent failed to file a Response in which it could have provided evidence in support of its rights or legitimate interests. Therefore, all these circumstances are sufficient to establish a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name.
The Panel thus takes the view that the Respondent lacks rights or legitimate interests in the disputed domain name.
3) The disputed domain name has been registered and is being used in bad faith
The Panel agrees with the Complainant that its trademark BOUYGUES BATIMENT is distinctive and well-known globally. The registration of the Complainant’s well-known trademark BOUYGUES BATIMENT predates the registration of the disputed domain name. Given the distinctiveness of the Complainant's trademark and reputation, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant's trademark. Since the Complainant is present in France, as well as the Respondent, the addition of the abbreviation “FR” worsens the likelihood of confusion between the disputed domain name and the Complainant’s trademark. The Panel finds that such actions constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy, which provides: "by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's web site or location or of a product or service on respondent's web site or location."
The fact that the Respondent has registered the disputed domain name that is confusingly similar to them indicates and in the absence of any evidence contrary (or any administratively compliant response at all) being put forward by the Respondent, that the Respondent, according to this Panel, had knowledge of the Complainant’s trademark and that it had such knowledge before the registration and use of the disputed domain name.
Further, the disputed domain name resolves to a parking page. The Panel thus takes the view that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or location by creating a likelihood of confusion with the Complainant’s mark. This further suggests that the Respondent’s sole intention in registering the disputed domain name was to take unfair advantage of the Complainant’s BOUYGUES BATIMENT mark and reputation, and suggests registration and use in bad faith.
Accordingly, the Panel concludes that the Complainant has satisfied the third element of the Policy, that is that the Respondent's registration and use of the disputed domain name in bad faith.
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