WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bouygues SA v. Contact Privacy Inc. Customer 0152709727 / Jacky Durand, Name Redacted
Case No. D2019-1337
1. The Parties
The Complainant is Bouygues SA, France, represented by Altana, France.
The Respondent is Contact Privacy Inc. Customer 0152709727, Canada / Jacky Durand, Name Redacted1 , France.
2. The Domain Name and Registrar
The disputed domain name <bouyguesgroupe-sa.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2019. On June 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2019, 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 June 13, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 17, 2019.
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 June 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2019.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on August 1, 2019. 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 Complainant in this case is Bouygues SA, a major French industrial group with activities in France and abroad. The Complainant operates in the fields of building, telecommunication and media. According to the information available in the file, the Complainant was incorporated more than sixty years ago, generates revenues in excess of 35 billion euros, and employs around 130,000 employees who are active in over 90 countries.
The Complainant claims numerous trade mark rights and domain names as a basis for its case. As France is the key territory here, in view of the Respondent’s alleged location, it is sufficient to mention here a few trade mark rights with effect in this country:
- French trade mark BOUYGUES (word) No. 92408370 of March 3, 1992 in classes 6, 7, 9, 16, 29, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45;
- French trade mark BOUYGUES (word) No. 1197243 of March 4, 1982 in classes 6, 16, 19, 28, 35, 37, 40, 41, 42, 43, 44, 45.
The Complainant also owns numerous BOUYGUES formative domain names, including <bouyguesgroupe.com>, <bouyguesgroup.com>, <bouyguesgroupe.fr>.
The disputed domain name <bouyguesgroupe-sa.com> was registered on September 17, 2018 through a privacy service, identified as “Contact Privacy Inc. Customer 0152709727”. Once the Complaint was filed, the Registrar disclosed the identity of the Respondent, with an alleged address in Paris, France.
The domain name was used to create email addresses, such as “[...]@bouguesgroupe-sa.com”, or “[...]@bouyguesgroupe-sa.com”. These email addresses were used to send messages on behalf of so-called Mr “J[…] B[…]”, allegedly a purchase director, to several companies in view of conducting business. The initial emails sent to these companies contained the following texts:
“BOUYGUES GROUPE SA
BOUYGUES, 32 AV HOCHE 75008 PARIS
SIREN 572 015 246
SIRET (siege) 57201524600216
TVA INTRACOMMUNAUTAIRE:FR 29 572015246
EORI: FR57201524600216 (Operateur: BOUYGUES)
Capital social: 365 104 531,00 €
Created in 1952 by Francis Bouygues, Bouygues is a diversified group, structured by a strong corporate culture and whose businesses are organized around three activities: Construction with Bouygues Construction (BTP and Energies & Services), Bouygues Immobilier and Colas (Routes), Telecom and Multimedia with Bouygues Telecom and TFl.
We are looking for partners for the supply of equipment and materials for our various subsidiaries:
-BOUYGUES CONSTRUCTION (Building & Public Works, Energy & Services, Construction equipment, Security equipment, Electrical equipment)
-BOUYGUES REAL ESTATE
-TFl (Television, Video projector; Home theaters,Video equipement, Multimedia equipment)
-BOUYGUES Telecom (Smartphones, telephones mobiles and all communication equipment and electronics equipment)
We would like to establish a sincere and lasting collaboration with any company evolving in the fields of activities mentioned above.
For your information, we wish to obtain a line of credit with a 30 day payment delay for our first purchase with your company.
lf you are interested in our partnership request, please contact us with your product catalog only at below email address:
Mr J[…] B[…]
BOUYGUES GROUPE SA
Direct line: +XXXXXXXXXXX […]
Mobile: XXXXXXXXXXXXX […]
Fax: XXXXXXXXXXXXX […]
As evidenced in the case file, contacts were initiated with potential business partners, who did believe that these emails were originating from the Bouygues group.
5. Parties’ Contentions
In its detailed submissions, the Complainant addresses all relevant criteria for the purpose of this case:
Regarding the first element of the Policy, it indicates that the domain name <bouyguesgroupe-sa.com> is confusingly similar with its prior trademarks BOUYGUES. “The litigious domain name <bouyguesgroupe-sa.com> wholly incorporates the Complainant’s trademarks BOUYGUES. This term is easily identified in the disputed domain name, regarding its attack position and it is the first word a consumer will perceive of the litigious domain name. Then, the domain name is necessarily confusingly similar to the Complainant’s trademarks.”
Regarding the second element of the Policy, the Complainant adduces in particular that “the Respondent cannot have any intellectual property right on the sign BOUYGUES, as the name ‘bouyguesgroupe-sa’ has no apparent association with any other person or entity than Bouygues itself. Moreover, the trademarks owner (Bouygues) has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks”. The Complainant also adds that the disputed domain name is not being used in connection with a bona fide offering of goods and services, as “the litigious domain name <bouyguesgroupe-sa.com> has been used in the body of several emails titled ‘Prospect b2b’ sent to several foreign companies (…) which are not usually doing business with Bouygues to offer them to initiate a business flow”.
Finally, on the third element of the Policy, the Complainant indicates that the Respondent acted in bad faith when registering and using the disputed domain name. Registration took place in bad faith as the Respondent necessarily knew and targeted the trade mark BOUYGUES when choosing its domain name. And use was also made in bad faith insofar the Respondent created and sent emails to impersonate a sales representative of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trade mark or a service mark in which it has rights.
The Complainant owns numerous trade mark rights over the sign BOUYGUES. This trademark is fully reproduced in the disputed domain name <bouyguesgroupe-sa.com>. The addition of the elements “groupe” and “sa” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview3.0”).
The disputed domain name <bouyguesgroupe-sa.com> is therefore confusingly similar to the trademarks of the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once 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 fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant has clearly satisfied its burden of evidence here: The Complainant has argued that it does not know the Respondent, is not linked to the Respondent, and that to its knowledge the Respondent has no rights or legitimate interests in the disputed domain name. Besides, the disputed domain name is not used in connection with a bona fide offering of goods or services. On the contrary, the operation by the Respondent of a phishing scheme demonstrates a lack of rights or legitimate interest.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.
In this matter, bad faith is everywhere:
First, the Respondent has registered the disputed domain name <bouyguesgroupe-sa.com> using a false identity and a false address. Indeed, this Panel finds it highly doubtful that the Respondent is linked in any way with [Name Redacted].
Second, the Respondent had necessarily the Complainant’s trade mark in mind when it configured the disputed domain name. Indeed, the domain name <bouyguesgroupe-sa.com> not only reproduces the mark BOUYGUES; it is also very similar overall to a number of domain names operated by the Complainant.
Third, the Respondent has operated a phishing scheme to the detriment of the Complainant and of the companies with which it established contacts. The use of a misleading email address, to impersonate the Complainant, lured a number of entities. It attracted them for the commercial gain of the Respondent. The scheme of the Respondent consisted in gaining the confidence of these entities and then order goods without paying for them. Some entities sent specimen, others refused to do business failing any advanced payment, and one even organized a meeting in Paris for a business discussion (which was of course cancelled at the very last minute by the Respondent).
Therefore, the Panel also finds that the disputed domain name <bouyguesgroupe-sa.com> was registered and is being used by the Respondent in bad faith.
Accordingly, the third criteria set out in paragraph 4(a) of the Policy is also satisfied.
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 <bouyguesgroupe-sa.com> be transferred to the Complainant.
Date: August 13, 2019
1 The Respondent appears to have used a false identity and a false address when registering the dispute domain name. Indeed, the Respondent has used the company name of a world leader in the retail field and an address at a well-known centric street of Paris where a number of fashion stores are located, as well as the seat of the French presidency. Therefore, the Panel has redacted the organization name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which included the name of the Respondent’s organization. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case.