Decision for dispute CAC-UDRP-108966

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is, inter alia, a registered owner of the following trademarks containing a word element " BOUYGUESCONSTRUCTION”:

(i)           BOUYGUES CONSTRUCTION (word), International (WIPO) trademark, registration date 13 April 2000, trademark no. 732339, registered for services in the int. class 37;

(ii)          BOUYGUES CONSTRUCTION (word), EU trademark, filing (priority) date 4 April 2000, registration date 16 May 2001, trademark no. 001589159, registered for services in the int. class 37;

besides other national, EU and International (WIPO) trademarks consisting of the "BOUYGUES" or “BOUYGUES CONSTRUCTION” denomination.

(collectively referred to as "Complainant's trademarks").

The word element "BOUYGUES " is also a part of Complainant's registered company name BOUYGUES S.A. and various other companies affiliated with the Complainant.

The Complainant has also registered through its subsidiary, a number of domain names including the same distinctive denomination BOUYGUES CONSTRUCTION such as <bouygues-construction.com>, registered since 10 May 1999.

The Complainant (BOUYGUES S.A.) was founded by Francis Bouygues in 1952 and it is a diversified group of industrial companies structured by a strong corporate culture. Its businesses are centred on three sectors of activity: construction (Bouygues Construction, Bouygues Immobilier), telecoms (Bouygues Telecom) and media (French TV channel TF1 and Bouygues Telecom). Operating in over 80 countries, the Complainant’s net profit attributable to the group amounted to 1,125 million euros. 

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

The disputed domain name <bouygues-constructionco.com> was registered on 25 August 2026 and is held by the Respondent.

The domain name website (i.e. website to which the disputed domain name resolves) is merely parked, has no content and it is inactive. However, based on the DNS query it is apparent that the MX servers have been configured for the disputed domain name. This indicates that he disputed domain name is capable of being used for e-mail purposes.

The Complainant seeks transfer of the disputed domain name to Complainant.

COMPLAINANT:

A) CONFUSING SIMILARITY

The Complainant states that:

• The disputed domain name contains the distinctive “BOUYGUES CONSTRUCTION” word elements, and it is thus confusingly similar to Complainant’s trademarks.

• The addition of the letters “CO” is not sufficient to escape the finding that the disputed domain name is confusingly similar to Complainant's trademarks, as it does not prevent the likelihood of confusion between the disputed domain name and the Complainant, Complainant's trademarks and its business.

• Thus, according to the Complainant the confusing similarity between Complainant’s trademarks and the disputed domain name is clearly established.

B) NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant states that:

• The Respondent has not been commonly known by the disputed domain name.

• The Complainant has not authorized, permitted or licensed the Respondent to use Complainant’s trademarks in any manner

• Furthermore, the domain name website has been inactive, which implies that there is no Respondent’s intention to use the disputed domain name for legitimate purposes.
  
  

 C) BAD FAITH REGISTRATION AND USE

The Complainant states that:

• Complainant’s trademarks pre-dates the registration of the disputed domain name and the Respondent has never been authorized by the Complainant to register it.
  
  
• Complainant’s trademarks enjoy status of well-known trademarks and the Respondent must have been aware of their existence while registering the disputed domain name.
  
  
• The purpose of the use and registration of the disputed domain has been, inter alia, an intentional attempt to attract, for commercial gain, companies by creating a likelihood of confusion with the Complainant’s trademarks and its company name.
  
  
• The disputed domain name does not resolve to any genuine content, which constitutes passive holding. Registration and passive holding of a domain name, which has no other legitimate use and clearly refers to the Complainant's trademark, may constitute registration and use in bad faith.

• Finally, the disputed domain name has been set up with MX records which suggests that it may be actively used for e-mail purposes. This is also indicative of bad faith registration and use because any e-mail emanating from the disputed domain name could not be used for any good faith purpose.

RESPONDENT:

The Respondent has not provided any response to the complaint.

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.

A) RIGHTS

The first UDRP element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name(s).

This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the trademark is recognizable within the disputed domain name. 

In cases where a disputed domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in such domain name, the disputed domain name will normally be considered confusingly similar to that trademark for purposes of UDRP standing.

Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

Applying the principles described above, the Panel finds that incorporation of a dominant “BOUYGUES CONSTRUCTION” element of Complainant’s trademarks into the disputed domain name constitutes confusing similarity between Complainant’s trademarks and the disputed domain name.

Addition of non-distinctive elements – generic abbreviation “co” - cannot prevent the confusing similarity in the eyes of internet consumers between the disputed domain name and the Complainant’s trademarks.

For the sake of completeness, the Panel asserts that the top-level suffix in the disputed domain name (i.e. the “.com”) must be disregarded under the identity and confusing similarity tests as it is a necessary technical requirement of registration.

Consequently, the disputed domain names are 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).

B) NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant’s assertions that the Respondent is not commonly known by the disputed domain name and is neither affiliated with nor authorized by the Complainant are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

In addition, given that (i) the disputed domain name has not been used in connection with any genuine offering and (ii) the Respondent has not submitted any response, the Panel finds no indication that the disputed domain name was intended to be used for a bona fide offering of goods or services, as required by the Policy.

Consequently, the evidentiary burden shifts to the Respondent to demonstrate - by way of concrete evidence - that it possesses rights or legitimate interests in the disputed domain name. However, the Respondent has failed to provide any information or evidence regarding such rights or legitimate interests as required under paragraph 4(a)(ii) of the Policy.

C) BAD FAITH

The Panel finds it grounded that the Respondent registered and used the disputed domain name in bad faith.

The Complainant’s trademark rights predate the registration of the disputed domain name. The disputed domain name reproduces the distinctive expression BOUYGUES CONSTRUCTION, with a hyphen replacing the space and the addition of “co”, a commonly used abbreviation for “company”.

In light of the composition of the disputed domain name and the evidence of the Complainant’s trademark’s reputation, the Panel finds, on the balance of probabilities, that the Respondent was aware of the Complainant and its mark and registered the disputed domain name with the Complainant in mind.

The disputed domain name does not resolve to an active website. The absence of active website use does not prevent a finding of bad faith under the doctrine of passive holding. Such a finding requires consideration of the totality of the circumstances, rather than the application of a fixed two-factor test.

In this case, the Panel takes into account the distinctiveness and reputation of the Complainant’s mark, the composition of the disputed domain name, the absence of any evidence of actual or contemplated good-faith use, and the Respondent’s failure to rebut the Complainant’s allegations. Taken together, these circumstances support the conclusion that a good-faith use of the disputed domain name by the Respondent is implausible.

The configured MX records indicate that the disputed domain name may be capable of use for e-mail. They do not establish that any e-mail has been sent, and the Panel makes no finding that phishing or other fraudulent e-mail activity has occurred. The finding of bad faith does, however, not depend on proof of such activity.

Having considered the totality of the circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.