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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Colas, Société Anonyme v. Tim Keller

Case No. D2021-2399

1. The Parties

The Complainant is Colas, Société Anonyme, France, represented internally.

The Respondent is Tim Keller, the Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <colasconstructionc.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021. On July 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 24, 2021 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 August 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2021.

The Center appointed Michael D. Cover as the sole panelist in this matter on September 20, 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 leading global French company specialized in construction and maintenance of transportation infrastructure, established in 1929. The Complainant designs, promotes and builds infrastructure solutions, provides civil engineering services and operates in the construction sector. These services are offered as projects and products worldwide under the Complainant’s trademark COLAS. The Complainant employs approximately 57,000 people worldwide and undertakes about 72,000 projects every year through a network of 800 construction units and 3,000 material production and recycling sites in 5 different continents. In 2020, the Complainant’s consolidated revenues totaled EUR12.29 billion

The Complainant’s COLAS trademark has been registered by the Complainant in many countries worldwide, with the first registrations going back to 1924. The Complainant is the proprietor of a considerable number of trademark registrations around the world for its trademark COLAS and variations and these registrations cover countries in Africa, Asia, Europe, North America and South America. This trademark was registered in the Russian Federation under No. 60311 by the Complainant as early as 1977 and the Russian trademark registrations and the entire trademark portfolio are set out in Annexes 5.4, 5.5 and 5.6 to the Complaint. The Russian Federation is the country address for the Respondent. The Complainant owns a company called Colas Construction USA, Inc., which is registered in the United States of America (the “United States”).

The Complainant operates its main website at “www.colas.com” and this website offers information about the Complainant’s business in both the French and English languages. The Complainant’s primary domain name <colas.com> was registered on March 10, 1997.

All that is known about the Respondent is set out in the Complaint.

The Disputed Domain Name was registered on June 21, 2021.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant notes that its COLAS trademark was created years before by concocting parts of the terms “Cold” And “Asphalt”. The Complainant also notes that the Disputed Domain Name reproduces in full the Complainant’s distinctive trademark COLAS and submits that the additional term “construction” is immaterial due to its generic and descriptive nature. The Complainant also submits that this term is therefore insufficient to differentiate the Disputed Domain Name from the Complainant’s trademark COLAS and that this term refers directly to the Complainant’s field of activity. The Complainant continues that use of this term was intentionally chosen to make the link with the Complainant.

The Complainant also submits that the final letter “c” that has been added at the end of the word “construction” does not change the overall perception of the Disputed Domain Name and will likely go unnoticed by any visitors to any website to which the Disputed Domain Name might resolve. The Complainant further submits that this type of misspelling amounts to the practice known as typosquatting, whereby Internet users who unwittingly make common typing errors would enter the Disputed Domain Name instead of the correct trademark. The Complainant also states that it is a settled principle that the addition of gTLDs has no capacity to differentiate a disputed domain name from a trademark. Finally, the Complainant draws the Panel’s attention to the fact that the Complainant owns a company called Colas Construction USA, Inc. based in the United States and submits that the Disputed Domain Name is not only confusingly similar to the Complainant’s COLAS trademark but also nearly identical to the name of one of the Complainant’s establishments.

The Complainant concludes that the Disputed Domain Name should be considered as confusingly similar to the Complainant’s trademark COLAS.

Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights to or legitimate interest in the registration and use of the Disputed Domain Name.

In support of its contention, the Complainant states that, to the Complainant’ knowledge, the Respondent has never been operating any genuine business activity under the names COLAS or COLA CONSTRUCTION and that the Respondent has no prior registered rights to the names COLAS or COLAS CONSTRUCTION. The Complainant then states that the Respondent has not been authorized by the Complainant to use the name COLAS or COLAS CONSTRUCTION in the course of the Respondent’s activities and there exists no business relationship and no link of any nature between the Complainant and the Respondent.

The Complainant also notes that the Disputed Domain Name is neither used in connection with a bona fide offering of goods/ services nor does it constitute a legitimate noncommercial or fair use, as the website associated with the Disputed Domain Name has no active content and is just a blank page and refers the Panel to Annex 8 to the Complaint.

The Complainant concludes that the Respondent has no right nor legitimate interest to the Disputed Domain Name.

Registered and Used in Bad Faith

The Complainant submits that the Disputed Domain Name should be considered as having been registered and used in bad faith.

The Complainant rehearses the details of its business and reputation, which have already been set out in this Decision. The Complainant submits that the attractiveness and reputation of the corporate COLAS makes it a target of fraudulent activity, as in this case, says the Complainant, the one conducted by the Respondent, and that the Respondent registered the Disputed Domain Name to carry out phishing activity. The Complainant states that it is evident that the combination of the distinctive trademark COLAS with the term “construction”, which directly describes the Complainant’s activity, is not a coincidence but a deliberate attempt to take unfair advantage of the Complainant’s name and trademark. The Complainant concludes that it is very unlikely and implausible that the Respondent was unaware of the Complainant’s activity at the time of the registration of the Disputed Domain Name. Lastly, the Complainant states that there is no genuine business activity conducted on the website associated with the Disputed Domain Name, which further reinforces the finding, says the Complainant, that the Disputed Domain Name was registered in bad faith, with the intent to confuse online visitors, divert the traffic from the Complainant’s official website and potentially conduct fraudulent activity.

The Complainant requests the Panel to decide that the Disputed Domain Name should be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Complainant must establish on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has established rights in its trademark COLAS. The Complainant has registered rights, through trademark registrations in various jurisdictions, the earliest of which was filed in 1924. That is sufficient for the purposes of the Policy. The Panel notes that the Complainant’s COLAS trademark was registered in Russia in 1977, Russia being the address of the Respondent.

The Panel also accepts that the Disputed Domain Name is confusingly similar to the Complainant’s COLAS trademark, in which it has established rights. The Disputed Domain Name incorporates the Complainant’s COLAS trademark in its entirety and, in assessing confusing similarity, it is well established that the incorporation of a descriptive term such as “construction” does not avoid a finding of confusing similarity. Finally, under this heading, it is well established that the incorporation of a generic Top Level Domain (gTLD), such as “.com”, does not avoid a finding of confusing similarity nor does the incorporation of the letter “c”.

The Panel therefore decides that the Disputed Domain Name is confusingly similar to the Complainant’s trademark COLAS, in which the Complainant has rights, and the provisions of the Policy, paragraph 4(a)(i) have been met.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel accepts the submission of the Complainant, which, of course, has not been challenged by the Respondent, that the Respondent has not been licensed by the Complainant to use its COLAS trademark and that that the Respondent has not been commonly known by the Disputed Domain Name.

No use has taken place of the Disputed Domain Name, although the misspelling of the Disputed Domain Name with the addition of the letter “c” points towards typosquatting.

In addition, the Panel finds that the Respondent, before any notice of the dispute, has made no demonstrable preparations to use the Disputed Domain Name (or a name corresponding to the Dispute Domain Name) in connection with a bona fide offering of goods or services, that the Respondent has not been commonly-known by the Disputed Domain Name and that the Respondent has made no legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Respondent’s COLAS trademarks.

The Panel accordingly finds that the provisions of the Policy, paragraph 4(a)(ii) have been met.

C. Registered and Used in Bad Faith

The Panel accepts that the Disputed Domain Name has been registered and is being used in bad faith.

The Panel infers from the material before it that the Respondent was aware or should have been aware of the Complainant’s trademark COLAS, which was both used and registered significantly before the registration of the Disputed Domain Name in June 2021. The Complainant has not licensed or authorized the Respondent use its COLAS trademark.

In fact, in this case, the incorporation of the term “construction” affirms the targeting of the Respondent to the Complainant’s trademark. Such addition of the term “construction only serves to increase the likelihood of confusion between the Complainant’s trademark and the Disputed Domain Name, because of the incorporation of the word “construction”, which is the principal sector of business activity of the Complainant (also noting that the Complainant owns a company named Colas Construction USA, Inc).

The Panel decides that the Respondent has registered the Disputed Domain Name probably for the purpose of disrupting the business of the Complainant, and that by registering the Disputed Domain Name, the Respondent is likely attempting to take advantage of the similarity between the Complainant’s trademark, and the Disputed Domain Name. The likelihood of typosquatting adds to this conclusion. The fact that the Disputed Domain Name does not resolve to an active website does not prevent a finding of bad faith.

The Panel therefore decides that the provisions of the Policy, paragraph 4 (a)(iii) have been met and the Disputed Domain Name has been registered and is being used in bad faith.

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 <colasconstructionc.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: October 4, 2021

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