WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Balfour Beatty plc v. Chance Ray, Batfour
Case No. D2020-3455
1. The Parties
The Complainant is Balfour Beatty plc, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Chance Ray, Batfour, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name, <balfour-beatty.com> (the “Domain Name”), is registered with NETIM SARL (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2020. On December 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 26, 2020 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 December 29, 2020.
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 January 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2021. The Center received an email communication from the Respondent on January 5, 2021 to which reference is made in section 4 below. Noting that the Respondent had not filed a Response, the Center notified the commencement of the Panel appointment process on January 25, 2021.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 1, 2021. 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.
The invitation to the Complainant to file an amended Complaint stemmed from the fact that the registrant details of the Domain Name were redacted and not available in the public WhoIs at the time of the submission of the Complaint. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name is currently registered. The amended Complaint names the underlying registrant as the Respondent.
4. Factual Background
The Complainant is a London-based engineering and construction company. It was incorporated in 1945 to take over a business founded in 1909 by George Balfour and Andrew Beatty. The Complainant has numerous trade mark registrations protecting its name and logo including by way of example United Kingdom Trade Mark Registration No.1289212 BALFOUR BEATTY (words) registered April 5, 1991 (application filed October 1, 1986) in class 37 for a variety of construction related services. The Complainant operates its principal website connected to its domain name, <balfourbeatty.com>, a domain name registered in 1998.
The Domain Name was created on October 2, 2020 and is connected to a webpage hosted by the Registrar and promoting the services of the Registrar.
On November 17, 2020 the Respondent issued an email addressed “Dear Suppliers” and headed “B2B Partnership Offer – Kind Reminder” to an individual whose name was redacted for reasons of privacy. In the body of the email the Respondent represented himself to be the Complainant and sought product information from the addressee. The email featured the Complainant’s logo and its address along with other contact details including an email address featuring the Domain Name and the Complainant’s web address.
On January 5, 2021 the Center received an email from the Respondent in response to the Center’s notification of the dispute and purporting to come from the Complainant. The text of the email read: “Hello, We received this [the Center’s email of January 4, 2021, which was attached] in stamp can you please send the detail of the person who are is complaining and what is the subject of complain (sic)?”
The Domain Name has featured previously in another complaint under the Policy, namely Balfour Beatty plc v. Domains By Proxy, LLC / Karam Police WIPO Case No. D2018-1150. The Complainant was successful in that complaint. Transfer of the Domain Name to the Complainant was ordered, but for reasons not clear to the Panel the Domain Name was not transferred. In that case too the Domain Name had been used to impersonate the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s BALFOUR BEATTY trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith for the purpose of phishing.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s registered trade mark BALFOUR BEATTY (albeit in hyphenated form) and the generic “.com” Top-Level Domain (“gTLD”) identifier.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant recites the circumstances set out in paragraph 4(c) of the Policy, any of which if found by the Panel to be present shall demonstrate rights or legitimate interests for the purposes of this element of the Policy, and contends that none of them is applicable. As is clear from section 4 above, the Complainant has also produced evidence to demonstrate that the Respondent has been using the Domain Name to impersonate the Complainant.
There is nothing before the Panel to suggest that the Complainant’s evidence is not to be relied upon. On the basis of that evidence the Complainant contends that the Respondent has been using the Domain Name for the purposes of impersonating the Complainant; specifically, using the Domain Name for an email address and sending emails expressly identifying the sender as the Complainant. The Panel finds that the Complainant’s contentions are soundly based.
The Panel finds that the Respondent has been using the Domain Name for a fraudulent purpose, namely to impersonate the Complainant. On no basis can such a use give rise to rights or legitimate interests in respect of the Domain Name in the hands of the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The nature of the Domain Name (identical to the Complainant’s domain name apart from the presence of a hyphen) and the use to which it has been put, namely for phishing, satisfies the Panel that the Domain Name was registered for the bad faith purpose for which it has been used.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning 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 Domain Name, <balfour-beatty.com>, be transferred to the Complainant.
Date: February 5, 2021