Decision for dispute CAC-UDRP-107829

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the Disputed Domain Name .

The evidence has established that the Complainant is the owner of a large portfolio of registered trademarks including:

(a) the International trademark registration for BOUYGUES CONSTRUCTION No. 732339, registered on April 13, 2000; and

(b) the European Union trademark registration for BOUYGUES CONSTRUCTION  No. 001589159, registered on May 16, 2001;

(collectively "the BOUYGUES CONSTRUCTION trademark").

The Complainant is a prominent French company which has been engaged since its foundation in 1952 in a diversified range of activities in over 80 countries, namely in construction, energies and services, media and telecoms. One of its subsidiaries, Bouygues Construction, is a prominent world player in the construction industry.

As well as its registered trademarks referred to above, the Complainant also owns a portfolio of domain names including <bouygues-construction.com> that it uses in its business and which contain the BOUYGUES CONSTRUCTION trademark and resolve to websites that also include its well-known trademark.

It has recently come to the notice of the Complainant that on August 4, 2025, many years after the Complainant acquired its aforesaid trademark rights, the Respondent registered the domain name <bouyguesconstrucstionsuk.com> ("the Disputed Domain Name") which includes the BOUYGUES CONSTRUCTION trademark in its entirety, to which has been added the letter "s" twice, and which the Respondent has caused to resolve to a parking page which contains nothing other than a promotion for hosting by Hostinger. This domain name and the parking page to which it resolves pose a very concerning threat to the Complainant’s business and the BOUYGUES CONSTRUCTION trademark and brand. That is so because it would give rise to a likelihood of confusion in the minds of internet users between the BOUYGUES CONSTRUCTION trademark and the contents of the resolving webpage and any future use that might be made of them. In particular, the Complainant is concerned that the inclusion of the letters "uk" in the Disputed Domain name reinforces the risk of confusion, as it refers to the Complainant's subsidiary's activities in the United Kingdom.

Such a use cannot give rise to a right or legitimate interest on the part of the Respondent in the Disputed Domain Name.

The Disputed Domain Name has also been registered and used in bad faith.

The Complainant has therefore brought this proceeding to obtain a transfer of the Disputed Domain Name and thus the cessation of the improper use to which the Respondent has put it.

COMPLAINANT:

The Complainant made the following contentions.

(i) The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant owns the trademarks for BOUYGUES CONSTRUCTION set out above and which were registered several years before the Respondent registered the Disputed Domain Name, which was on August 4, 2025.

The Disputed Domain Name <bouyguesconstrucstionsuk.com> incorporates the Complainant’s BOUYGUES CONSTRUCTION trademark in its entirety and merely adds the letter "s" twice and the letters "uk" signifying the United Kingdom.

The generic Top-Level Domain “.com” is a standard registration requirement which is disregarded when assessing whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

Accordingly, the Disputed Domain Name has the effect of invoking the Complainant's BOUYGUES CONSTRUCTION trademark and the goods and services provided under it in the United Kingdom.

The Disputed Domain Name is therefore confusingly similar to the Complainant’s BOUYGUES CONSTRUCTION trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As is universally accepted, the Complainant is first required to make out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and, if such a prima facie case is made out, the onus of proof is then transferred to the Respondent to rebut any such prima facie case that has been established. The Complainant submits that for the following reasons it can make out its prima facie case.

First, the Disputed Domain Name was registered on August 4, 2025 which was several years after the first registration of the Complainant’s aforesaid BOUYGUES CONSTRUCTION trademark.

Secondly, the Complainant has not licensed or authorized the Respondent to register or use the Disputed Domain Name, the Respondent is not affiliated with the Complainant in any manner and nor has the Complainant endorsed or sponsored the Respondent or the contents of the webpage to which it resolves.

Thirdly, there is no evidence that the Respondent is commonly known by the Disputed Domain Name or that it owns any corresponding registered trademark that includes the term <bouyguesconstrucstionsuk.com>.

Fourthly, the Respondent has not made any legitimate use of the Disputed Domain Name and has not shown that it has any demonstrable plan to use it for such a purpose but, rather, it has merely caused it to resolve to a parking page that promotes hosting by Hostinger.

Accordingly, the Complainant submits that it has made out a prima facie case that the Respondent has no such rights or legitimate interests in the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant submits on the following grounds that the Respondent registered and is using the Disputed Domain Name in bad faith.

First, the Respondent has constructed and registeredthe  Disputed Domain Name that incorporates the Complainant's aforesaid well-known trademark and which is thus confusingly similar to that trademark.

Secondly, the evidence will show that the Complainant is very prominent in the construction work which is invoked by the Disputed Domain Name.

Thirdly, it must therefore be concluded that the Respondent had full knowledge of the Complainant's famous BOUYGUES CONSTRUCTION trademark when it registered the Disputed Domain Name and that the presence of such a famous trademark in a domain name indicates that the Disputed Domain Name was registered in bad faith.

Fourthly, the evidence will show that the Disputed Domain Name has been set up with MX records that indicate it will not be used for a good faith use.

Accordingly, the Complainant submits that the Respondent has registered and used the Disputed Domain Name in bad faith.

The Complainant thus submits that it is entitled to the relief that it seeks.

RESPONDENT

The Respondent is in default and has not filed a Response in this proceeding.

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, 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).

The Complainant has, to the satisfaction of the Panel, 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).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

This is a mandatory administrative proceeding pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) of the Internet Corporation for Assigned Names and Numbers (“ICANN”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the CAC Supplemental Rules.

Administrative deficiency

By notification dated August 7, 2025 and in accordance with paragraph 4 (b) of the Rules, the CAC notified the Complainant that the Complaint was administratively deficient in that it had not sufficiently identified the Respondent. The Complainant was invited to see the Registrar’s verification available in the online case file in the form of a non-standard communication regarding the appropriate identification of the domain name holder.

On August 7, 2025 the Complainant filed an Amended Complaint and the CAC determined that the Complaint should be admitted to proceed further in the Administrative Proceeding.

The Panel has reviewed all of the above matters and makes a finding that within the meaning of paragraph 4(b) of the Rules, the administrative deficiencies have been corrected and that this matter has proceeded properly to the Panel in accordance with the Policy and the Rules.


B. Substantive matters

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In that regard, the Panel also notes that the onus is on the complainant to make out its case and past UDRP panels have consistently said that a complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

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


The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar.

The first issue that arises is whether the Complainant has a trademark that it may rely on in this proceeding. In that regard, the Panel finds that Complainant has adduced evidence that the Panel accepts that it is the registered owner of the BOUYGUES CONSTRUCTION trademark, particulars of which have been set out earlier in this decision. That evidence is indocumentary form that the Panel has examined and finds to be in order. The Panel therefore finds thatthe Complainant has established its trademark rights and hence its standing to bring this proceeding.

The Panel next finds that the Disputed Domain Name is confusingly similar to the BOUYGUES CONSTRUCTION trademark for the following reasons.

First, the Disputed Domain Name includes the entirety of the BOUYGUES CONSTRUCTION trademark and that word is by far the dominant portion of the Disputed Domain Name.  Accordingly, the attention of the internet user would naturally be drawn to the use of the words BOUYGUES CONSTRUCTION in the Disputed Domain Name which would inculcate in the mind of the reader the idea that it was an official domain name of the Complainant, which it is not.

Secondly, although the Respondent has added the letter "s" to the trademark on two occasions, it is well-established that such minor additions to a trademark cannot negate a confusing similarity that is otherwise present, as the trademark will still have its dominant effect. In any event, the additions of the letter "s" in the present case, indicating plural construction services, will merely have the effect that the Disputed Domain Name is invoking the Complainant, its trademark and the provision of its pluralized construction services provided under the trademark.

Likewise, the presence of the letters "uk" has only the effect that the Disputed Domain Name is invoking the goods and services of the Complainant offered under its trademark in the United Kingdom.

Thirdly, it is well-established that in assessing confusing similarity between a trademark and a domain name, the relevant Top Level Domain, such as ".com" in the present case, is ignored because all domain names require such an extension and the Top Level Domain does not show one way or the other whether a domain name is confusingly similar to a trademark. Thus, the Top Level Domain must be ignored in the present case as it is in most cases. 

Accordingly, the Disputed Domain Name is confusingly similar to the Complainant’s trademark; it is similar to the trademark because its main element is the Complainant's trademark and it is confusingly so because internet users would naturally wonder whether it was an official and genuine domain name of the Complainant or not.

The Complainant has therefore established the first element that it must show under paragraph 4(a)(i) of the Policy.


B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Thus, if a respondent proves any of these elements or indeed anything else that shows that it has a right or legitimate interest in the Disputed Domain name, the complainant will have failed to discharge its onus and the complaint will fail.

It is also well-established that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests and that when such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent cannot do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel, after considering all of the evidence in the Complaint, finds that the Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The case is made stronger by the Complainant's adducing relevant documentary evidence which the Panel accepts, and by the Complainant's citation and discussion of previously decided UDRP cases which verify its contentions.

The Panel will address each of the grounds relied on by the Complainant in the order in which they have been submitted by the Complainant.

First, the evidence shows that the Disputed Domain Name was registered on August 4, 2025 which was several years after the first registration of the Complainant’s aforesaid BOUYGUES CONSTRUCTION trademark. Thus, it must be concluded that the intention of the Respondent was to trade on the Complainant's trademark without permission and to use it for the Respondent's own benefit.

Secondly, the evidence shows that the Complainant has not licensed or authorized the Respondent to register or use the Disputed Domain Name, the Respondent is not affiliated with the Complainant in any manner and nor has the Complainant endorsed or sponsored the Respondent or the contents of the webpage to which it resolves. Thus, it could not be contended that the Disputed Domain Name was registered with any form of consent or permission from the Complainant to use its trademark. Accordingly the use of the Complainant's trademark without permission could not conceivably give rise to a right or legitimate interest in the Disputed Domain Name.

Thirdly, there is no evidence that the Respondent is commonly known by the Disputed Domain Name or that it owns any corresponding registered trademark including the term <bouyguesconstrucstionsuk.com>. Nor is there any evidence that the Respondent is known by any name other than its own, which is Alex Vare.

Fourthly, the evidence shows that the Respondent has not made any legitimate use of the Disputed Domain Name and has not shown that it has any demonstrable plan to use it for such a purpose but, rather, it has merely caused it to resolve to a parking page. The parking page is nothing more than a promotion for hosting through Hostinger and as the use of the Complainant's trademark was illegitimate and without consent, likewise the promotion of Hostinger under the guise of the Complainant's trademark is also illegitimate.

The Panel also notes that the Respondent could not bring itself within the provisions of paragraph 4(c)(i) of the Policy as there was nothing bona fide in its unauthorized use of the Complainant's trademark. Nor could the Respondent bring itself within the provisions of paragraph 4(c)(iii) of the Policy, as there was nothing legitimate, noncommercial or fair in the Complainant's conduct, all of which must be proved before the registrant of a domain name can bring itself within that provision. 

All of these factors show that the Respondent could not have had or acquired a right or legitimate interest in the Disputed Domain Name.

The Complainant has therefore made out the second of the three elements that it must establish.

C. Registered and Used in Bad Faith.

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Paragraph 4(b) of the Policy sets out four circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.

The Panel finds that the Complainant has shown that the Respondent registered and used the Disputed Domain Name in bad faith on all the grounds relied on by the Complainant.

The Panel will deal with each of those grounds in the order in which they have been raised by the Complainant.

First, the Respondent has constructed and registered a domain name that incorporates the Complainant's aforesaid well-known trademark and which is thus confusingly similar to that trademark. It has been held in the decision in Bouygues v. Laura Clare, CAC Case 101387 that the BOUYGUES CONSTRUCION trademark is "well known" and in any event the evidence is that it is and was at the time the Disputed Domain Name was registered well-known. Thus it must be concluded that the Respondent was in effect aiming at a trademark that it knew was not its property, that it did not have the consent of the trademark owner to include it in the Disputed Domain Name and also that the Disputed Domain Name would in all probability be mistakenly understood to be an offical domain name of the Complainant or one authorized by it, neiher of which was true, as the Respondent must have known.

Secondly, it must therefore be concluded that the Respondent had full knowledge of the Complainant's famous BOUYGUES CONSTRUCTION trademark when it registered the Disputed Domain Name and that the presence of such a famous trademark in a domain name indicates that the Disputed Domain Name was registered in bad faith. The Respondent must therefore be taken to have targeted the Complainant, which is regularly seen as a specific ground of bad faith registration.

Thirdly, the evidence has shown that the Disputed Domain Name was set up with MX records that indicate it will not be used for a good faith use if the Respondent is allowed to retain ownership of it.

Taking every consideration into account, it must be concluded, as the Panel concludes, that the registration of the Disputed Domain Name, incorporating a well-known trademark, without consent, without its being able to be used for a legitimate purpose, with the clear intention of misleading internet users and seeking to confuse them, must have been registered and used in bad faith.

Accordingly, the Panel finds that the Respondent has registered and used the Disputed Domain Name in bad faith within the meaning of paragraph 4 (a)(iii) of the Policy.

The Complainant has therefore made out all of the grounds it is required to prove and is thus entitled to the relief that it seeks, namely transfer of the Disputed Domain Name.