WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Demathieu Bard Construction v. Marcil Eric

Case No. D2021-0214

1. The Parties

The Complainant is Demathieu Bard Construction, France, represented by Cabinet Boettcher, France.

The Respondent is Marcil Eric, France.

2. The Domain Name and Registrar

The disputed domain name <demathius-bard-immobilier.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2021. On January 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 26, 2021, 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 January 29, 2021 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 amendment to the Complaint on February 2, 2021.

The Center verified that the Complaint together with the amendment to 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 February 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2021.

The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on March 8, 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.

4. Factual Background

The Complainant is a French company, part of a group founded in 1861, which is active in road and rail infrastructure, industrial civil engineering (including large scale urban development projects), and the building industry and real estate sectors. In 2019, the Complainant’s group had a turnover of EUR 1.6 billion. Outside France, it completed projects in Luxembourg, Germany, and North America.

The Complainant owns registered trademarks containing the terms “demathieu” and “bard”, including, inter alia, French trademark DEMATHIEU BARD no. 4259306 registered on March 23, 2016 and International trademark DEMATHIEU BARD no.1327027 registered on September 14, 2016 (together referred to hereinafter as: “the Mark”).

The domain name <demathieu-bard.fr>, owned by the Complainant’s group, resolves to its official website.

The disputed domain name <demathius-bard-immobilier.com> was registered on February 27, 2020.

The disputed domain name was initially registered in the name of a proxy service. The identity of the Respondent was disclosed by the Registrar in response to the Center’s request for registrar verification in connection with the disputed domain name.

The Complainant has submitted evidence that the disputed domain name resolved to an error page and is inactive.

5. Parties’ Contentions

A. Complainant

(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, <demathius-bard-immobilier.com>, contains a typosquatted version of the distinctive element “demathieu”, a hyphen and the distinctive element “bard” in its entirety, followed by another hyphen and the descriptive term “immobilier” (which means “real estate” in French), such addition not being capable of dispelling the confusing similarity, given the Complainant’s field of activity.

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never authorized the Respondent to use the Mark in any manner and that the Respondent has never had any affiliation with the Complainant.

(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent had knowledge of the Mark when registering the disputed domain name.

(iv) The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Procedural Aspects: Failure to respond

Under the Rules, paragraphs 5(f) and 14(a), the effect of a failure to submit a formal response by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the absence of a formal response.

Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s failure to file a formal response as it considers appropriate under the circumstances.

In this case, the Panel finds that the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant.

In particular, by failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.

Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.

6.2. Requirements of paragraph 4(a) of the Policy

A. Identical or Confusingly Similar

In comparing the Mark with the disputed domain name <demathius-bard-immobilier.com>, it is evident that the “demathius” element is a typosquatted version of the Mark’s distinctive element “demathieu”, that the distinctive element “bard” is contained in its entirety in the disputed domain name, preceded and followed by hyphens and followed by the descriptive term “immobilier” and the generic Top-Level Domain (“gTLD”) “.com”.

The addition of the descriptive term “immobilier” (which means “real estate” in French) is not capable of dispelling the confusing similarity, the Mark being used by the Complainant also in the real estate sector.

It is also well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.

The Panel finds that the disputed domain name <demathius-bard-immobilier.com> is confusingly similar to the Mark, despite being followed by a hyphen and the descriptive term “immobilier”, and that the addition of that term and the typosquatted element “demathius” do not avoid a finding of confusing similarity, because the Mark remains sufficiently recognizable within the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.9.

Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent.

Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel finds the Complainant has made in this case, based on the facts and arguments set out above. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and WIPO Overview 3.0, section 2.1.

As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name or uses (or has made bona fide preparations to use) the disputed domain name in a business or otherwise.

No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.

To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no affiliation with the Complainant, (ii) received no authorization from the Complainant to register or use the disputed domain name and (iii) used the disputed domain name for opportunistic passive holding.

In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.

C. Registered and Used in Bad Faith

As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant in registering a domain name confusingly similar to the Mark, which can be considered as “typosquatting”.

First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be, depending on the circumstances, evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Second, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000‑0004; and Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000‑1260.

Third, in this case, the Complainant has submitted no evidence of any good faith use of the disputed domain name. Prior UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible, considering the specificity of the activity (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148). The Panel finds it is indeed not possible to imagine any plausible future active use of the disputed domain name that would not be illegitimate, considering the specificity of the Complainant’s activity.

Furthermore, prior UDRP panels have also held that deliberate concealment of identity and contact information may in certain circumstances be indicative of bad faith (see TTT Moneycorp Limited v. Diverse Communications, WIPO Case No. D2001-0725, and Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729). In this case, the Respondent has taken active steps to hide its identity and has submitted no evidence of any good faith use of the disputed domain name. The Panel also notes that although using a proxy service to hide the identity of the registrant is not per se conclusive of bad faith registration and use (see Trinity Mirror Plc and MGN Ltd. v. Piranha Holdings, WIPO Case No. D2008-0004), the fact that the Respondent used a proxy service to hide its identity and contact details prevented the Complainant from contacting it.

Finally, prior UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name, which is either identical or confusingly similar to a prior trademark held by others, and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.

7. Decision

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, <demathius-bard-immobilier.com>, be transferred to the Complainant.

Louis-Bernard Buchman
Sole Panelist
Date: March 12, 2021