WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bechtel Group, Inc. v. Manjeet Singh, Nalan
Case No. D2020-0497
1. The Parties
The Complainant is Bechtel Group, Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Manjeet Singh, Nalan, India.
2. The Domain Name and Registrar
The disputed domain name <bechteldubai.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2020. On March 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 3, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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” 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 March 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2020.
The Center appointed Nicholas Weston as the sole panelist in this matter on April 17, 2020. 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 operates a global engineering, construction and project management business that has completed more than 25,000 projects in 160 countries. The Complainant holds a global portfolio of registrations for the trademark BECHTEL, and variations of it, including United States Trademark Registration No. 1047369, for example, was registered on August 31, 1976.
The Complainant owns numerous domain names that comprise or contain the trademark BECHTEL, including the domain name <bechtel.com> registered on June 19, 1994.
The Respondent registered the Disputed Domain Name <bechteldubai.com> on October 23, 2019. The Disputed Domain Name resolved to an unauthorized webpage advertising BECHTEL branded services then later a pay-per-click (“PPC”) parking page including links that provide competing services.
5. Parties’ Contentions
The Complainant cites, amongst others, United States trademark registration No. 1047369 registered on August 31, 1976 and numerous other registrations around the world including in the United Arab Emirates (“U.A.E.”), for the mark BECHTEL as prima facie evidence of ownership.
The Complainant submits that the mark BECHTEL is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <bechteldubai.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the BECHTEL trademark and that the similarity is not removed by the additional geographical name “dubai”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “Respondent is currently using the Disputed Domain Name to redirect internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. For instance, the website at which the Disputed Domain Name resolves features multiple third-party links for “civil engineering jobs”, “civil engineering companies”, “procurement services” and “project management”. Further, Respondent’s website also features a link that directly references Complainant and its business”, and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name were, and currently are, in bad faith, contrary to the Policy and Rules having regard to the prior use, fame and secondary meaning of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark 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 Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BECHTEL in numerous countries including the U.A.E.. U.A.E. registration No. 46208, for example, was registered on March 30, 2004. In any event, the requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the BECHTEL trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark BECHTEL; (b) followed by the geographical name “dubai”; (c) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “bechteldubai”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the name of the U.A.E. city of “dubai”. (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. v. Martin Mir, WIPO Case No. D2013-1806; Accor SA, Swissôtel Management GmbH v. Haseeb Rahman, WIPO Case No. D2018-1736 (“The addition of the geographical term ‘dubai’ to the Disputed Domain Name does not prevent a finding of confusing similarity of the Disputed Domain Name with the Complainants’ trademark”); Ralph Anderl v. guoren xie, renyuan / Hidden by Privacy Protection of Registrar, WIPO Case No. D2015-1114 (“the addition of a hyphen and the name of the city Dubai is insufficient to distinguish the disputed domain name from the Complainant’s mark”)).
This Panel accepts the Complainant’s contention that the addition of the geographical name “dubai” after the Complainant’s registered trademark does not serve to distinguish the Disputed Domain Name from the Complainant’s trademark (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has not given the Respondent permission to use the Complainant’s trademarks in any manner, the Respondent is not commonly known by the Disputed Domain Name, and the Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the Disputed Domain Name.
The Complainant’s evidence is that “prior to the takedown action mentioned, Respondent’s inclusion of the Complainant’s BECHTEL trademark and logo on the Disputed Domain Name’s website was a direct effort to take advantage of the fame and goodwill that Complainant has built in its brand” and that following notification of the dispute, the Respondent continued to misleadingly direct Internet users to a PPC landing web page dominated by links advertising third-party websites, some of which directly compete with the Complainant’s business. For instance, the website at which the Disputed Domain Name resolves features multiple third-party links for ‘civil engineering jobs’, ‘civil engineering companies’, ‘procurement services’ and ‘project management’”, thereby illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that, in the absence of a response from the Respondent, the Complainant is deemed to have satisfied the burden of proof on this element (see: WIPO Overview 3.0, section 2.1). Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark BECHTEL is such a famous mark for engineering, construction, and project management services that it would be inconceivable that the Respondent might have registered the mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Bechtel Group, Inc. v. Up!, Paul Hallelujah, WIPO Case No. D2017-1389 (“The well-known trademark BECHTEL”); Bechtel Group, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Arban Mas, WIPO Case No. D2018-2202 (“It is well-known that the Complainant is a United States company with a group of subsidiaries throughout the world. Anyone seeing the Disputed Domain Name would assume that it had been registered and was being used by the Complainant.”)).
This Panel accepts the Complainant’s uncontested evidence that it is “currently working in Dubai on the design, construction and completion of the Dubai International Airport”. (See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 which held that the domain name in question was “so obviously connected with the Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith”). This Panel also accepts, as the basis of a finding of bad faith, that the evidence is that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s trademark and businesses (see: Bechtel Group, Inc. v. Registration Private, Domains By Proxy, LLC / I S, ICS INC, WIPO Case No. D2017-1127; Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765 “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”).
Further, a gap of years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name some 15 years after the Complainant established trademark rights in the BECHTEL mark in the U.A.E.
On the issue of use, the evidence is that the “Respondent had used the Disputed Domain Name in an attempt to pass itself off as Complainant by using Complainant’s BECHTEL trademark and logo on a website promoting the design, construction and implementation of engineering projects” and later resolved to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to exploit the reputation of the BECHTEL trademark to disrupt the Complainant’s business and, following notification of the dispute, to obtain click-through commissions from the diversion of Internet users. This conduct is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Accenture Global Services Limited v. Tulip Trading Company, WIPO Case No. D2015-1520; National Grid Electricity Transmission Plc and NGrid Intellectual Property Limited v. Tulip Trading Company, WIPO Case No. D2016-0036; WIPO Overview 3.0, section 3.5.
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. supra, and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark BECHTEL and incorporated it into the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <bechteldubai.com> be transferred to the Complainant.
Date: April 28, 2020