WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bechtel Group, Inc. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Norman Giles
Case No. D2021-1974
1. The Parties
Complainant is Bechtel Group, Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Norman Giles, United States.
2. The Domain Name and Registrar
The disputed domain name <bechtelconstruction-jobs.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 June 23, 2021. On June 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 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 Complainant on June 27, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on Jun 29, 2021.
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 Respondent of the Complaint, and the proceedings commenced on July 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 9, 2021.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 13, 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
Complainant is the owner of registrations for the word trademark BECHTEL on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 1047369, registration dated August 31, 1976, in international classes (ICs) 37 and 42, covering construction and repair of installations, and engineering and design services, as further specified; registration number 1086326, registration dated February 28, 1978, in IC 16, covering printed publications dealing with topics of engineering and/or construction, as further specified, and; registration number 1196429, registration dated May 25, 1982, in IC 36, covering financing of engineering and/or construction installations, as further specified. Complainant is also holder of registration for the word trademark BECHTEL on the trademark register of the European Union Intellectual Property Office (EUIPO), registration number 003514809, registration dated July 7, 2005, in ICs 37 and 42.
Complainant is parent company for a large group of international construction, procurement and engineering companies with headquarters in the United States. Complainant was founded in 1898 and in 2019 employed approximately 38,000 people around the world. Complainant operates a commercial website at “www.bechtel.com”, which website receives substantial traffic.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification the disputed domain name was registered by Respondent on February 3, 2021.
Complainant used the disputed domain name to direct Internet users to a website with an appearance substantially similar to that used by Complainant on its commercial website, including replication of Complainant’s distinctive red, gray and black logo. Respondent’s homepage included reference to “BECHTEL CAREERS”. Respondent’s website included telephone and email address for contacting Respondent. Following notice and takedown demand from Complainant, the disputed domain name is no longer associated with an active website.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark BECHTEL and that the disputed domain name is confusingly similar to that trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not sponsored by or affiliated with Complainant in any way, nor has Complainant given Respondent license, authorization or permission to use Complainant’s trademark in any manner, including in the disputed domain name; (2) Respondent is not commonly known by the disputed domain name; (3) Respondent is not making a bona fide offering of goods or services, or legitimate noncommercial or fair use of the disputed domain name; (4) Respondent’s attempt to pass itself off as Complainant is evidence of lack of rights or legitimate interests, and; (5) Respondent’s current passive holding of the disputed domain name does not establish rights or legitimate interests.
Complainant argues that Respondent registered and is using the disputed domain in bad faith because: (1) Complainant acquired rights in its trademark long before Respondent registered the disputed domain name; (2) Respondent through the design of its website and use of the term “construction-jobs” has demonstrated awareness of Complainant and its trademark; (3) Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark in an effort to perpetrate a fraud on Internet users; (4) Respondent’s current passive holding of the disputed domain name under the circumstances here is evidence of bad faith, and; (5) the overall context in this case indicates that Respondent deliberately targeted Complainant and its trademark by registration and use of the disputed domain name in association with a website intended to falsely convey an affiliation with Complainant.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier delivery to Respondent was completed successfully. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the trademark BECHTEL including by registration at the USPTO and EUIPO, and by use in commerce. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant holds rights in the trademark BECHTEL.
The disputed domain name fully incorporates Complainant’s distinctive BECHTEL trademark, adding the terms “construction-jobs”. The incorporation of Complainant’s trademark readily identifiable in the disputed domain name is sufficient for a finding of confusing similarity within the meaning of the Policy. The addition of the terms “construction-jobs”, including because these terms would commonly be associated with the commercial activity of Complainant, does not preclude a finding of confusing similarity. The Panel determines that the disputed domain name is confusingly similar to Complainant’s BECHTEL trademark.
The Panel determines that Complainant holds rights in the trademark BECHTEL and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain name to direct Internet users to a website that replicates the appearance of Complainant’s commercial website, including Complainant’s distinctive logo and color combination does not constitute a bona fide offering of goods or services, nor does it constitute legitimate noncommercial or fair use of Complainant’s trademark.
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests in the disputed domain name.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iv) by using the 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”.
Respondent registered the disputed domain name that incorporates Complainant’s distinctive trademark. Respondent associated that disputed domain name with a website that copies the appearance of Complainant’s commercial website. Respondent was manifestly aware of Complainant’s trademark when it registered the disputed domain name, and has used it in a manner intended to deceive Internet users. Respondent has included contact information on its deceptive website, and presumably intends to obtain information from Internet users for purposes of Respondent’s commercial gain. The fact that Respondent removed its deceptive website content following notice from Complainant does not preclude a finding of bad faith registration and use. Respondent continues to hold the disputed domain name in circumstances in which it has demonstrated its intention to unfairly take advantage of Complainant’s rights in its trademark, and places Complainant in a situation of continuing risk of abuse.
Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s BECHTEL trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website by Complainant. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) 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, <bechtelconstruction-jobs.com>, be transferred to Complainant.
Frederick M. Abbott
Date: August 20, 2021