WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Balfour Beatty plc v. Whoisguard Inc. / James Anderson
Case No. D2017-0727
1. The Parties
The Complainant is Balfour Beatty plc of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Stobbs IP Limited, UK.
The Respondent is Whoisguard Inc. of Panama / James Anderson of Cincinnati, Ohio, United States of America ("US").
2. The Domain Name and Registrar
The disputed domain name <balfourbeattyplc.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 18, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 10, 2017.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on May 18, 2017. 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
The disputed domain name was registered on November 14, 2016 (the relevant date). The disputed domain name redirects to a website of the Complainant.
The Complainant is the parent company of the Balfour Beatty group, an international infrastructure group providing leading worldwide engineering, construction and support services. Its revenue for the financial year ending December 31, 2016 was GBP 8.5 billion. It has traded on the London Stock Exchange since June 28, 1945, and has a market capitalization value of GBP 1.85 billion. The UK accounts for a significant portion of the Complainant's sales, with developing businesses in the US, Australia, Canada, the Middle East and South East Asia.
The Complainant is a publicly listed company (a "plc") and was incorporated in the UK on May 31, 1945. A related company, Balfour Beatty Group Ltd, was incorporated in the UK on January 12, 1909.
The Complainant formally changed its name to Balfour Beatty plc on May 10, 2000. The use of the "plc" acronym is mandatory under English law.
The Complainant owns trade mark registrations for BALFOUR BEATTY in classes 37 and 42 in Argentina, Australia, Brazil, India, Israel, Mexico, New Zealand, Republic of Korea and Viet Nam. It owns registrations in class 37 in Brunei Darussalam, Indonesia, Macau (China), Malaysia, Oman, Singapore and Thailand. In China, it owns registrations in classes 9, 35, 37 and 42. In Norway, its registration covers classes 6, 9, 37 and 42. In the Philippines it has registrations in classes 9, 37, 41, and 42. In South Africa its registration is in classes 9 and 42. In the UK its registration is in classes 36, 37, 39, 41 and 42. Finally, its registration in the US covers classes 35, 36, 37 and 42 (see US Reg. No. 2,951,510 registered on May 17, 2005).
The Complainant also owns the domain name <balfourbeatty.com>, registered on October 21, 1998. It also owns eight other domain names incorporating the BALFOUR BEATTY mark.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical to the Complainant's company name.
As to whether the Respondent has any rights or legitimate interests in respect of the disputed domain name, the Complainant contends that given "the massive reputation of the BALFOUR BEATTY brand and the Balfour Beatty group's operations in a wide range of goods and services since as early as 1909, there is no believable or realistic reason for registration or use of the disputed domain name other than to take advantage of the Complainant's rights." The Complainant contends that it is not possible for the Respondent to claim to have been unaware of it and its brand upon registering the disputed domain name. Therefore the Complainant contends that the Respondent cannot be said to have any rights or interests in the disputed domain name at the time of registration. The Complainant has not given the Respondent permission to use the BALFOUR BEATTY mark. To the best of the Complainant's knowledge, the Respondent has not been known by the disputed domain name.
The Complainant alleges that the disputed domain name resolves to a parked webpage that contains "a series of click-through advertising posts including sponsored links relating to the Complainant's BALFOUR BEATTY brand." It states that given the close similarity of the disputed domain name to the Complainant's trade marks, trading name and domain name, the disputed domain name is capable of being used "for surreptitious means such [as] phishing."
As to the third element of the Policy ("the domain name(s) was/were registered and is/are being used in bad faith"), the Complainant alleges that the activities of the Respondent "amount to evidence that this constitutes a bad faith registration."
The Complainant contends that the Respondent has failed to make good faith use of the disputed domain name and has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. It submits that as investors wishing to obtain shares in Balfour Beatty plc can obtain information about the Complainant's business from "www.balfourbeatty.com", it is highly conceivable that the disputed domain name could serve as a dedicated website for investors and potential investors. However, the existence of the disputed domain name registration would prevent the Complainant from using its brand in this form. The Complainant states that several attempts to access the website linked to the disputed domain name have resulted in redirection to legitimate websites offered by the Complainant.
The Complainant contends that it is apparent that the Respondent was acting in bad faith by registering a domain name which contains the identical BALFOUR BEATTY mark (with the descriptive and generic element "plc") suggesting a connection to the Complainant.
The Complainant further alleges that the disputed domain name has been registered for the purpose of disrupting the business of a competitor, as it has been registered for almost five months but has not been used to achieve monetized sales. The Complainant contends that the disputed domain name is being used to disrupt the business of the Complainant through inaction.
The Complainant also alleges that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark. It submits that, given the prevalence of the Complainant's brand, the Respondent would have been aware of it. It therefore submits that the Respondent has registered the disputed domain name to leverage the BALFOUR BEATTY established reputation to attract users. It says that in view of the distinctive nature of the BALFOUR BEATTY mark and the "colossal scope of the Complainant's business, there is no way in which the Respondent could use the Disputed Domain in question without falling foul of Paragraph 4(b) of the Policy."
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) That the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the trade mark BALFOUR BEATTY by virtue of its trade mark registrations in several countries for this mark, its use of that term as its trading name and its use of the term in its domain names.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's BALFOUR BEATTY trade mark. The Complainant's trade mark is entirely subsumed within the disputed domain name. The inclusion of "plc" is insufficient to prevent a finding that the disputed domain name is confusingly similar to the Complainant's trade mark. This may even increase the confusing similarity, given that "plc" is a mandatory part of the Complainant's trading name.
The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) That before notice of the dispute, the respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or
(ii) That the respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) That the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not given permission to the Respondent to use its trade mark.
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There appear to be no circumstances to give rise to rights or legitimate interests on the part of the Respondent within the meaning of paragraph 4(c) of the Policy or otherwise.
Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favour of the Complainant.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) That the respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) That the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online 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 respondent's website or location.
The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons:
(i) At the time of registering the disputed domain name, the Respondent must have been aware of the Complainant and its rights in the trade mark BALFOUR BEATTY. The Panel infers this from the adoption of the disputed domain name <balfourbeattyplc.com> in circumstances where the Complainant's business name is Balfour Beatty plc. It is inherently unlikely that the Respondent would think to combine these terms without any knowledge of the Complainant. Further, the Respondent resides in the US where the Complainant has trade mark registrations.
(ii) Paragraph 2 of the UDRP puts a burden on registrants where it states: "By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else's rights." The most cursory trade mark or other search or through any online search of existing domain names prior to the Respondent registering the disputed domain name would have instantly revealed the Complainant and its trade mark. See in this regard paragraph 3.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Despite the Complainant's submissions, the Panel declines to find that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name as there is no evidence of a pattern of such conduct.
In respect of use in bad faith, the Complainant has submitted that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark. However, the Complainant has provided evidence that shows that on a number of occasions the disputed domain name redirected to websites at the Complainant's own domain names. It would therefore be difficult for the Panel to conclude that the Respondent is attempting to attract Internet users to its own website for commercial gain, if this were the only evidence. However, one of the screenshots provided by the Complainant shows that at a particular point in time the disputed domain name resolved to a page with "related links" to competitors' websites. This is therefore evidence of an attempt to attract users to the disputed domain name for commercial gain through revenue earned from clicking through to the advertised websites.
The Panel is also entitled to draw a negative inference from the Respondent's failure to respond to the Complaint.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <balfourbeattyplc.com> be transferred to the Complainant.
Andrew Brown Q.C.
Date: May 29, 2017