WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bureau Veritas v. Pat Honey Salt, Honey Salt Ltd
Case No. D2021-0769
1. The Parties
The Complainant is Bureau Veritas, France, represented by Novagraaf France, France.
The Respondent is Pat Honey Salt, Honey Salt Ltd, Turks & Caicos Islands, Overseas Territory of the United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <bureauveritas.sucks> is registered with Rebel Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 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 the same day 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 the same day.
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 March 25, 2021. Delivery of the written notice of the Complaint was accepted at the Respondent’s contact address. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on April 22, 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 provides testing, inspection, and verification services. Founded in 1828, it primarily caters to businesses in marine and offshore; agrifood and commodities; industry; buildings and infrastructure; certification; and consumer products. The Complainant’s group has over 77,000 employees and over 1,500 offices and laboratories in 140 countries.
The Complainant owns multiple trademark registrations, including:
- European Union trademark (“EUTM”) registration number 004518544 for BUREAU VERITAS, registered on June 1, 2006, and specifying services in classes 38 and 42;
- EUTM registration number 005927711 for BUREAU VERITAS 1828 and device, registered on February 6, 2008, and specifying services in class 42;
- International trademark registration number 1289458 for BUREAU VERITAS, registered on December 23, 2015, designating multiple jurisdictions and specifying services in class 42; and
- International trademark registration number 1291135 for BUREAU VERITAS 1828 and device, registered on December 23, 2015, designating multiple jurisdictions and specifying services in class 42.
Those trademark registrations remain current. The Complainant has also registered multiple domain names, including <bureauveritas.com>, registered on June 20, 1996, which redirects to <groupbureauveritas.com>, which is used in connection with a website in English and French providing information about the Complainant’s corporate group.
The Respondent is an individual and a company. According to evidence provided by the Complainant, the Respondent company was formed on or around February 12, 2020 to register and hold domain names for the benefit of an organization named Everything.Sucks, Inc.
The Respondent registered the disputed domain name on August 27, 2020. It resolves to a webpage on the “Everything.Sucks” platform that prominently displays a yellow speech bubble containing the elements of the disputed domain name above the tagline “Tell the World” alongside a search engine with the words “Search Everything.Sucks”. A sidebar displays links to “Popular Pages” and “Recent Updates” on the platform regarding other topics, including companies and brands. A heading on the webpage repeats the elements of the disputed domain name with the words “Customer Reviews and Feedback” above a two-sentence introduction of the Complainant’s activities and a brief employee review that refers to the Complainant by name, alongside the Complainant’s BUREAU VERITAS 1828 and device mark and basic data about the Complainant. The webpage appears to invite Internet users to post customer reviews and feedback about the Complainant, below which there appears a list of brief reviews that are all anonymous, undated and negative. Lower down, under the heading “Social Media”, four tweets from different accounts linked to the Complainant are displayed as retweets. The webpage does not offer the disputed domain name for sale, nor does it display advertising or sponsored links.
5. Parties’ Contentions
The disputed domain name entirely and identically reproduces the Complainant’s trade name, domain names, and trademarks. The addition of “.sucks” is clearly not sufficient to avoid a likelihood of confusion with the Complainant’s prior rights as the relevant signs remain identical and/or similar to a very high degree.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered by the Respondent without the Complainant’s consent and is operated to publish automatically-generated fake pejorative comments about the Complainant. The comments included on the website at the disputed domain name are anonymous and undated, and do not directly address the Complainant, which makes them appear automatically generated. Furthermore, the Respondent’s website contains many links to other webpages about third parties and other brands with similar content. The inclusion of these links seems to be intended to increase the traffic to the respective domain names and websites, which would increase their attractiveness and price in case they are offered for sale. This automatically-generated content is solely used as a pretext to create the impression that the domain name is operated in a legitimate way and not in bad faith.
The disputed domain name was registered and is being used in bad faith. Considering the notoriety of the Complainant and the fields in which it is active, the Respondent could not have been unaware of the existence of the Complainant’s numerous trademarks, company name, and domain names when registering the disputed domain name. The content of the website associated with the disputed domain name appears to have been automatically generated rather than created by independent persons making genuine comments directed specifically at the Complainant. It seems more likely that the Respondent’s website has been set up as a pretext seeking to legitimize the conduct of the Respondent, and that its aim was to take unfair advantage of the Complainant’s BUREAU VERITAS trademark by increasing Internet traffic to the associated website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence presented, the Panel finds that the Complainant has rights in the BUREAU VERITAS mark.
The disputed domain name incorporates the BUREAU VERITAS mark, omitting only the space between the words for technical reasons.
The only additional element in the disputed domain name is the generic Top-Level Domain (“gTLD”) extension “.sucks”, which is a pejorative term. The incorporation of a pejorative term – whether in the operative element itself or the gTLD – does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark for the purposes of the standing requirement in the first element of paragraph 4(a) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.13 and, for example, Tetra Laval Holdings & Finance S.A. v. Privacy Hero Inc / Pat Honeysalt, Honey Salt Ltd., WIPO Case No. D2020-3398.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant submits that the disputed domain name was registered by the Respondent without the Complainant’s consent.
As regards the first circumstance set out above, the disputed domain name resolves to a webpage that neither offers for sale nor advertises any goods or services. This is not a use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
As regards the second circumstance set out above, the Respondent is identified in the Registrar’s private WhoIs database by the personal name “Pat Honey Salt” and the company name “Honey Salt Ltd”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a webpage that purports to be a noncommercial criticism site and appears to invite Internet users to post customer reviews and feedback. The Complainant does not challenge the freedom to express legitimate criticism; rather, it alleges that this webpage is not a genuine criticism site. The Panel has examined the evidence and notes that the Respondent has made some effort to relate the webpage to the Complainant. The two-sentence introduction, the featured review, the trademark, the basic company data and the retweets refer directly to the Complainant. On the other hand, a basic Google search reveals that the content of the reviews seems to have been extracted from reviews on an employment site. No independent user appears to have posted any of the reviews on the Respondent’s webpage and the content appears to have been extracted selectively and out of context. In these circumstances, the Panel finds the webpage misleading. Accordingly, there is no basis on the record for the Panel to find that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, but it does not contain an exhaustive list of such circumstances.
The disputed domain name was registered in 2020, years after the Complainant obtained its trademark registrations for BUREAU VERITAS. The disputed domain name incorporates the BUREAU VERITAS mark, combining it only with a gTLD extension. The Respondent’s website displays the Complainant’s BUREAU VERITAS mark, its BUREAU VERITAS 1828 and device mark, a brief introduction to the Complainant, and basic data about the Complainant. These circumstances give the Panel reason to find that the Respondent knew of the Complainant and its marks at the time that it registered the disputed domain name.
The Respondent uses the disputed domain name in connection with a webpage that purports to be a noncommercial criticism site and appears to invite Internet users to post customer reviews and feedback. However, for the reasons set out in section 6B above, the Panel does not consider that the webpage is used in such manner. This raises the question as to what is the actual purpose of the disputed domain name and the associated webpage, and why the Respondent has made the effort to relate both to the Complainant. There is no evidence that the disputed domain name has been offered for sale. While the webpage is misleading, the Panel does not consider that it could mislead Internet users that its content is in any way approved by the Complainant.
The Complainant argues that the aim of the disputed domain name is to take unfair advantage of the Complainant’s BUREAU VERITAS trademark by increasing Internet traffic to the associated webpage and linked webpages on the “Everything.Sucks” platform, which would increase their attractiveness and price if they were offered for sale. The Panel notes that the associated webpage prominently displays the platform’s search engine and invites Internet users to search for other pages on that platform, each of which is associated with a different domain name in the “.sucks” gTLD. The sidebars also display dozens of direct links to other such webpages on the platform. This all shows that the webpage is designed to generate traffic for the rest of the platform. Further, the evidence provided by the Complainant shows that the Respondent has placed offers for sale of domain names in the “.sucks” gTLD on a domain name broker’s website. See Sanofi v. Privacy Hero Inc. / Honey Salt ltd, pat honey salt, WIPO Case No. 2020-2836 and two other proceedings against the Respondent cited therein. Accordingly, in the circumstances of this case, the Panel considers that the Complainant has presented the most plausible explanation of the purpose behind the registration and use of the disputed domain name.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <bureauveritas.sucks> be transferred to the Complainant.
Date: May 5, 2021