WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BOUYGUES v. Chengzhang, Lu Ciagao
Case No. D2007-1325
1. The Parties
Complainant is BOUYGUES, Paris, France, represented by Cabinet Regimbeau, France.
Respondent is Chengzhang, Lu Ciagao, Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <bouygues.mobi> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2007. On September 10, 2007, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the domain name at issue. On September 12, 2007, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2007. The Response was filed with the Center on September 21, 2007.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on October 4, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
BOUYGUES is the name of Complainant which was founded by Mr. Francis BOUYGUES in 1952. Over the years, Complainant has grown in size and has diversified its business. Its business interests include construction; roadworks; telecommunications; and mobile phone services. Complainant is established in more than 80 countries including a number in Asia.
Complainant is the owner of the registered trademark BOUYGUES in numerous countries for products and services, inter alia, in classes 6, 19, 37 and 42. Specifically, it is the owner among others of the following trademarks:
BOUYGUES (semi figurative) French registration No. 1197244 filed March 4, 1982, and remains in force covering classes 6,7,9,16,19,28,35,36,37,38,39,40,41,42,43,44 and 45 which includes construction and telecommunication services.
BOUYGUES French trademark registration No. 1197243 filed March 4, 1982, and remains in force covering classes 6,7,9,16,19,28,35,36,37,38,39,40,41,42,43,44 and 45 which includes construction and telecommunication services.
BOUYGUES international registration No. 390770 files September 1, 1972, in classes 6, 19, 37 and 42 covering construction services and designating various countries such as Austria, Benelux, Spain, Italy etc.
BOUYGUES CONSTRUCTION international trademark registration No. 732339 filed April 13, 2000, in class 37 designating inter alia China.
BOUYGUES BATIMENT international trademark registration No. 723515 filed November22, 1999, in class 37 designating inter alia China.
BOUYGUES TELECOM international trademark registration No. 675530 filed June 27, 1997, in classes 9, 37 and 38 designating China.
Complainant has registered several domain names which include the word “bouygues” such as <bouygues.fr>; <bouygues.com>; <bouygues.org>; <bouygues.net>; <bouygues.info>; <bouygues.biz>; and <bouygues.cn>. The website of BOUYGUES at “www.bouygues.com” has been in operation since August 1, 1996.
The disputed domain name <bouygues.mobi> was registered by Respondent on September 26, 2006. Since then, the disputed domain name is not directed to any website and the main page features on the upper left side the following words – “welcome, under construction coming soon, please wait”.
On December 8, 2006, Complainant sent a demand letter via email informing Respondent that the registration of the disputed domain name was in violation of Complainant’s trademark rights, Complainant’s company name and trade name rights. Complainant was ready to purchase the disputed domain name for a reasonable consideration not exceeding out of pocket costs directly related to the domain name registration. A reply was received by Complainant on December 14, 2006 via email from an email address firstname.lastname@example.org stating that he was ready to sell the disputed domain name for USD90,000. On January 2, 2007, Complainant replied that he would be prepared to pay the sum of USD50 for the purchase of the disputed domain name and on January 16, 2007, Respondent declined Complainant’s offer stating that he would not transfer the domain name.
5. Parties’ Contentions
Identical or Confusingly Similar
Complainant has adduced evidence to show that it has registered rights in the trademark BOUYGUES, and continues to have such rights, in France and in numerous countries all over the world in relation to construction services; real estate; telecommunications and mobile phone services. Complainant contends that due to intensive use of the trademark BOUYGUES, in particular for construction and real estate services, the mark BOUYGUES is well known in France and in many countries all over the world. Complainant further contends that Respondent’s domain name <bouygues.mobi> is identical to Complainant’s well known mark BOUYGUES as it reproduces Complainant’s trademark.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the domain name <bouygues.mobi> for the following reasons:
1. Respondent has not registered the trademark BOUYGUES anywhere in the world.
2. Respondent is not a licensee of Complainant and has connections with Complainant.
3. Respondent has registered the disputed domain name for the purpose of selling it to Complainant which is the owner of the name of its founder and Respondent has responded that he was ready to sell it for a consideration of USD 90, 000 which is largely in excess of Respondent’s out of pocket costs directly related to the domain name.
4. Respondent has not used the disputed domain name in connection with a legitimate fair use pursuant to Policy, paragraph 4(c)(iii) because he has no website at “www.bouygues.mobi” and previous UDRP cases have held that a “Respondent’s passive holding of the domain name demonstrates a lack of rights and legitimate interest” (DLJ long term Investment Corporation v. Dina Khuball a/k/a Jeana Khuball, NAF Case No. FA104598)
Registered and Used in Bad Faith
Complainant contends that Respondent has registered and used the disputed domain name in bad faith for the following reasons:
1. Respondent has registered and used the disputed domain name with the intension of selling it to Complainant as Respondent has offered to sell the domain name to Complainant for the sum of USD 90, 000 which is largely in excess of out of pocket costs related to the registration of the domain name. Complainant contends that Respondent’s behaviour should be considered bad faith and Complainant cites Pacific Investment Management Company LLC v. Alex Szabo, NAF Case No. FA95614; Bouygues v. Belkowiche. Co, Patrice Belkowiche, WIPO Case No. D2002-1166; and GA Modefine SA v. Watchstore / Paul Ouzounian, WIPO Case No. D2006-0613 in support of its contentions.
2. Respondent knows or should have known about the worldwide fame of Complainant’s mark BOUYGUES especially as Complainant has recorded sales of 735 million euros in 2005 in Asia. Furthermore, Complainant has joined the consortium for the construction of the two tunnels under the Yangtze River which was to be completed in 2010 in time for the Shanghai World Expo. Consequently, Complainant contends that the choice of the domain name <bouygues.mobi> which corresponds to the family name of the founder of Complainant cannot result from a mere coincidence and Complainant cites a previous UDRP case GA Modefine SA v. Watchstore / Paul Ouzounian, WIPO Case No. D2006-0613 in support of its contention that registration of a domain name obviously connected with well known trademarks by someone without connection to these trademarks suggests opportunistic bad faith.
3. Respondent has apparently registered the disputed domain name under a false identity because there is no complete address stated on the WHOIS page of the disputed domain name.
Respondent makes the following responses in Chinese to Complainant’s claims and allegations:
1. Respondent’s registration of the disputed domain name <bouygues.mobi> last year in 2006 which is identical to Complainant’s trademark BOUYGUES was a mere coincidence. Respondent contends that he wanted to use the name BOUYGUES to construct a personal Blog website and that at the time of registration, he was unaware that BOUYGUES was also a registered trademark belonging to Complainant.
2. Respondent contends that as he is always out of town because of work and consequently does not have a permanent residential address he did not provide a complete contact address in the WHOIS page of the domain name registration. However, Respondent contends that the email address and the telephone numbers provided in the WHOIS page are contacts which can reach Respondent. Respondent denies that the provision of an incomplete contact address is indication of bad faith on this part.
3. Respondent denies that he has made an offer to sell the disputed domain name for USD90,000. Respondent states that he has received Complainant’s email in his email@example.com email address but he did not reply to this email since by the time Respondent has sight of Complainant’s email in February 2007, the deadline to reply to Complainant has already expired. Respondent further argues that as two months has lapsed since Complainant’s email was first sent on December 9, 2006, and that Respondent’s command of the English language is not very good, Respondent has decided not to respond to Complainant’s letter of demand. Respondent argues that he has not sent any email offering to sell the disputed domain name and he is not the owner of the email address firstname.lastname@example.org from which the offer to sell the domain name at USD90,000 was made to Complainant.
4. Respondent contends that although the disputed domain name does not direct to any website at the present moment, this does not mean that Respondent has no intentions to use the domain name. Respondent argues that “.mobi” domains are targeted at mobile phone services websites and he contends that the relevant authorities of “.mobi” domains have emphasized that the contents of the websites constructed for “.mobi” domains must concern themselves with mobile phone services. Thus, Respondent is taking time to build his website as he did not wish to risk building a website that did not conform to the requirements of “.mobi” domain and he contends that in so doing he has not registered and used the domain name in bad faith.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English. However, Complainant contends that the administrative proceedings should continue to be conducted in English for the reasons that Respondent understands English as it is shown by the correspondence between Complainant and Respondent. Consequently, Complainant who is French submits that the language of the proceedings be English, a language which is understood by both parties.
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language: the disputed domain name <bouygues.mobi>; and all email correspondences to date between Complainant and Respondent. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker but the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. In particular, the Panel notes that Respondent was able to rebut the allegations and claims in the Complaint even though the Complaint was written in English. Furthermore, Respondent has also been notified of the administrative proceeding in both English and Chinese by the Center. Respondent was able to file his Response within the time limit stipulated for submission of the Response. Although the Response was filed in Chinese, the Panel who is conversant in English and Chinese was able to consider the Response filed and the strength of Respondent’s arguments. The Panel notes that although Complainant is French, it has requested a neutral language English as the language of proceedings. In this regard, the Panel considers Complainant’s request to be fair and reasonable. Considering all the circumstances of the present case, the Panel is of the view that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision of the Administrative Panel will be rendered in English.
6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. 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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall 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. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the BOUYGUES mark in France and in many countries throughout the world since it has first obtained registered trademark rights in 1982 in France and in 1972 internationally. More specifically, the Panel notes that Complainant has registered trademark rights in BOUYGUES and BOUYGUES associated marks in China since 1997 in relation to construction and telecommunication services.
The disputed domain name consists of Complainant’s mark BOUYGUES in its entirety and the suffix “.mobi”. It is an accepted principle that the addition of suffixes such as “.mobi” being the generic top-level domain is not a distinguishing factor and consequently, the Panel finds that the disputed domain name is identical to Complainant’s trademark.
The Panel finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
Based on the following reasons the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name:
1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “bouygues” in its business operations prior to notification of the present proceeding;
2. There was no evidence on the record to show that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;
3. There is no indication on the record that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the 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.”
Respondent has argued that he is taking his time to build his website on <bouygues.mobi> as he did not wish to risk building a website that did not conform to the requirements of “.mobi” domain. However, in his Response, Respondent did not provide further details of his plans for the website at “www.bouygues.mobi” and there was no provided evidence such as business plans indicating that Respondent intends to use <bouygues.mobi> for bona fide offering of goods or services over the Internet. Consequently, the Panel is not convinced by the evidence adduced and the arguments made by Respondent that the <bouygues.mobi> has been used or will be used by Respondent in a genuine offering of goods and services. The Panel is of the view that passive holding of disputed domain name, since registration, which incorporates in its entirety a famous or well known trademark without convincing and plausible explanations from Respondent strongly suggest Respondent does not have legitimate rights or interests in the domain name.
The Panel finds for Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the domain name in bad faith by Respondent in the appropriate cases.
One important consideration in the Panel’s assessment of whether Respondent has registered and used the domain name in bad faith is prior knowledge on the part of Respondent of Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Therefore, the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the domain name. In the present case, the argument that Respondent must have actual notice of Complainant’s trademark rights is further buttressed by evidence adduced before the Panel and evidence gathered by the Panel independently showing that Complainant is a global conglomerate which is listed on the Euronext N.V., a pan-European stock exchange based in Paris, and that it is one of the companies listed in the Fortune Global 500 2007. Complainant has also proved that it has a sizeable business operation in Asia including China, particularly in various prominent building projects including the ongoing construction of the tunnels in the Yangtze River scheduled to be completed in 2010. A quick search over the Internet would reveal domain names or websites which are identical or similar to Respondent’s choice of domain name. The majority of these websites returned after a search using “bouygues” as a keyword belong to Complainant or its associated companies. Consequently, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products.
Respondent has however argued that the choice of the domain name is purely coincidental and he denies any knowledge of Complainant and its trademark rights in BOUYGUES at the time of registration. In this regard, the Panel is not persuaded by Respondent’s explanations. Respondent must exercise due diligence in the selection of names or words for his domain name so as not to infringe the trademark rights of others. Furthermore, the Panel is of the view that the test to determine whether Respondent has knowledge of Complainant’s trademark BOUYGUES at the time of registration is an objective one. Considering the fact that BOUYGUES is a French family name of the founder of Complainant and that it has over many years of extensive use become a famous mark distinctive of Complainant and its goods and services and the further fact that Complainant has also established a considerable presence on the Internet since 1996, the Panel concludes that it is highly unlikely that a reasonable person who has exercised due diligence in the shoes of Respondent would not have had actual knowledge of Complainant and its mark BOUYGUES at the time of registration. In the absence of countervailing evidence adduced by Respondent (and there is none in the present case), the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products.
Respondent’s bad faith in the registration and use of the disputed domain name is further evidenced by the following:
(a) That the disputed domain name has not been used by Respondent since registration for any genuine purposes such as the bona fide offering of goods or services.
(b) That Respondent has not provided a complete address in the WHOIS page of the domain name registration. The Panel does not accept that Respondent’s argument that being frequently out of town and constantly shifting homes are good reasons not to provide a complete and true physical contact address in the WHOIS page of the domain name registration.
(c) That Respondent has purportedly offered to sell the disputed domain name for USD90,000 after receiving Complainant’s letter of demand and thereafter, sought to deny having done that by asserting no knowledge of the offer and denying ownership of the email address email@example.com when contents in the email correspondences strongly suggested otherwise, leads the Panel to conclude that Respondent may have registered the disputed domain name for less than honorable intentions. The Panel is of the view that the evidence presented in the present case strongly suggest that the primary purpose for Respondent’s registration and use of the disputed domain name is that of transferring the domain name to the trademark owner or to others with a business interest in the subsequent exploitation of the domain name instead of using the domain name in a genuine offering of goods or services on the Internet.
For the reasons cited above, the Panel finds for Complainant on the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <bouygues.mobi> be transferred to Complainant.
Susanna H.S. Leong
Dated: October 18, 2007