{ "case_number": "CAC-UDRP-104627", "time_of_filling": "2022-06-09 09:58:51", "domain_names": [ "bouyguesconstruct.com" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "BOUYGUES" ], "complainant_representative": "NAMESHIELD S.A.S.", "respondent": [ "Charles Smith" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant is a diversified group of companies operating in the fields of construction, telecoms and media and is the owner of a portfolio of trademark registrations including those listed above.\r\n\r\nThe Complainant has an established Internet presence, and its subsidiary BOUYGUES CONSTRUCTION maintains a website at presenting its services in the fields of building and construction including public works, and energy.\r\n\r\nThe disputed domain name was registered on May 27, 2022 and redirects Internet traffic to the official website of one of the companies within the Complainant’s group, BOUYGUES CONSTRUCTION AUSTRALIA at .\r\n\r\nThere is no information available about the Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the enquiry made by the Centre requesting verification of the registration details of the disputed domain name in the course of this proceeding. \r\n\r\nThe Respondent availed of a proxy service to conceal his name on the published WhoIs and the Registrar has confirmed that the Respondent is the registrant of the disputed domain name. \r\n", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant claims rights in the BOUYGUES and BOUYES CONSTRUCTION trademarks established by its ownership of the trademark and service mark registrations described above and extensive use of the marks by itself and other companies within its group, in their international business, which includes the construction sector. \r\n\r\nThe Complainant contends that the disputed domain name is confusingly similar to its BOUYGUES trademark and service mark as it includes the BOUYGUES mark in its entirety. \r\n\r\nIt is submitted that it is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”. See, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin. WIPO Case No. D2003-0888.\r\n\r\nThe Complainant further contends that the additional term “construct”, and the generic Top Level Domain extension <.com>, in the disputed domain name are not sufficient to change the overall impression of the designation as being connected to the Complainant’s BOUYGUES trademark, nor do these additional elements prevent the likelihood of confusion between the disputed domain name and the Complainant and its BOUYGUES trademark.\r\n\r\nOn the contrary, the Complainant argues, that the addition of the term “construct” refers to the Complainant’s trademark BOUYGUES CONSTRUCTION and the Complainant’s subsidiary company BOUYGUES CONSTRUCTION. \r\n\r\nThe Complainant next alleges that the Respondent has no rights or legitimate interests in the disputed domain name arguing that the Respondent is not identified as the disputed domain name in the WhoIs database. 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. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston \/ Elite Media Group, Forum Case No. FA 1781783, (“Here, the WHOIS information of record identifies Respondent as “Chad Moston \/ Elite Media Group.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”)\r\n\r\nThe Complainant asserts that the Respondent is neither affiliated with nor authorized by the Complainant in any way; nor does the Complainant carry out any activity for or have any business with the Respondent.\r\n\r\nThe Complainant adds that neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s BOUYGUES mark or apply for registration of the disputed domain name by the Complainant.\r\n\r\nThe Complainant then refers to a screen capture of the website to which the disputed domain name resolves which is submitted in an annex to the Complaint, to illustrate that the disputed domain name redirects Internet traffic to the official website of a company that is a member of the Complainant’s group, BOUYGUES CONSTRUCTION AUSTRALIA at . The Complainant contends that therefore the Respondent is not making a bona fide offering of goods or services by means of the disputed domain name, nor a legitimate non-commercial or fair use of it. See Better Existence with HIV v. AAA Forum Case No. FA 1363660, (“[E]ven though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii).”).\r\n\r\nThe Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that because the Complainant, its business and BOUYGES mark are so well known, the registrant must have been aware of the Complainant and its rights in the mark at the time the disputed domain name was chosen and registered. \r\n\r\nFurthermore, the Complainant argues that the disputed domain name is being used in bad faith because, as submitted above, it redirects Internet traffic to the official website of one of the Complainant’s associated companies, BOUYGUES CONSTRUCTION AUSTRALIA at . Thus, the Complainant contends that the Respondent had knowledge of the Complainant’s rights prior to the registration of the disputed domain name, which is a hallmark of bad faith. See Forum Case No. FA 1382148, Verizon Trademark Servs. LLC v. Boyiko (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”).\r\n\r\nConsequently, it is submitted that the disputed domain name has been registered by the Respondent in an effort to take advantage of the good reputation Complainant had built up in its BOUYGUES trademarks, with the sole aim of creating confusion with the Complainant’s trademarks and domain names.\r\n\r\n\r\nRESPONDENT:\r\nNo administratively complaint Response has been filed.", "rights": "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).", "no_rights_or_legitimate_interests": "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).", "bad_faith": "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).", "procedural_factors": "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.", "decision": "Accepted", "panelists": [ "Mr James Jude Bridgeman" ], "date_of_panel_decision": "2022-07-06 00:00:00", "informal_english_translation": "The Complainant has rights in the BOUYGUES, trademark and service mark through its ownership of a portfolio of trademark and service mark registrations and extensive use of the mark in its international business including in the construction sector. The Complainant’s trademark and service mark registrations include:\r\n•\tinternational trademark BOUYGUES, registration number 390771 registered since September 1st, 1972 for goods and services in classes 6, 19, 37 and 42; \r\n•\tFrench trademark BOUYGUES, registration number 1197244 registered since March 4th, 1982; and\r\n•\tinternational trademark BOUYGUES CONSTRUCTION registration number 732339 registered since April 13th, 2000 for services in class 37.\r\n", "decision_domains": { "BOUYGUESCONSTRUCT.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }