Decision for dispute CAC-UDRP-104617

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is, inter alia, a registered owner of the following trademarks containing a word element “BOUYGUES”:

(i) BOUYGUES (figurative), International (WIPO) trademark, priority date 1 September 1972, registration date 1 September 1972, trademark registration no. 390771, registered for goods and services in int. classes 6, 19, 37, and 42; and

(ii) BOUYGUES (figurative), French national trademark, priority date 4 March 1982, trademark application and registration no. 1197244, registered for goods and services in int. classes 06, 16, 19, 28, 35, 37, 40, 41, 42, 43, 44, and 45.

besides other national, EU and International (WIPO) trademarks consisting of the "BOUYGUES" denomination.
(collectively referred to as "Complainant's trademarks").

The word element "BOUYGUES " is also a part of Complainant's registered company name BOUYGUES S.A. and various other companies affiliated with the Complainant.

The Complainant has also registered a number of domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the term “BOUYGUES”.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant (BOUYGUES S.A.) was founded by Francis Bouygues in 1952 and it is a diversified group of industrial companies structured by a strong corporate culture. Its businesses are centred on three sectors of activity: construction (Bouygues Construction, Bouygues Immobilier), telecoms (Bouygues Telecom) and media (French TV channel TF1 and Bouygues Telecom). Operating in over 80 countries, the Complainant’s net profit attributable to the group amounted to 1,125 million euros.

The disputed domain name <bouyguesbelgium.buzz> was registered on 21 May 2022 and is held by the Respondent.

The domain name website (i.e. website to which the disputed domain name resolves) has no content and it is inactive.

The Complainant seeks transfer of the disputed domain name to Complainant.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

PARTIES' CONTENTIONS:

COMPLAINANT:

CONFUSING SIMILARITY

The Complainant states that:

The disputed domain name contains the distinctive “BOUYGUES” word element, and it is thus confusingly similar to Complainant’s trademarks.

The addition of the term “BELGIUM” is not sufficient to escape the finding that the disputed domain name is confusingly similar to Complainant's trademarks, as it does not prevent the likelihood of confusion between the disputed domain name and the Complainant, Complainant's trademarks and its business. On the contrary, such geographical indication may further mislead the consumers because the Complainant also has business activities in Belgium.

Thus, according to the Complainant the confusing similarity between Complainant’s trademarks and the disputed domain name is clearly established.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant states that:

The Respondent has not been commonly known by the disputed domain name.

The Complainant has not authorized, permitted or licensed the Respondent to use Complainant’s trademarks in any manner.

Furthermore, the domain name website has been inactive, which implies that there is no Respondent’s intention to use the disputed domain name for legitimate purposes.

BAD FAITH REGISTRATION AND USE

The Complainant states that:

Complainant’s trademarks pre-dates the registration of the disputed domain name and the Respondent has never been authorized by the Complainant to register it.

Complainant’s trademarks enjoy status of well-known trademarks and the Respondent must have been aware of their existence while registering the disputed domain name.

The purpose of the use and registration of the disputed domain has been, inter alia, an intentional attempt to attract, for commercial gain, companies by creating a likelihood of confusion with the Complainant’s trademarks and its company name.

The disputed domain name does not resolve to any genuine content, which constitutes passive holding. Registration and passive holding of a domain name, which has no other legitimate use and clearly refers to the Complainant's trademark, may constitute registration and use in bad faith.

RESPONDENT:

The Respondent has not provided any response to the Complaint.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

RIGHTS

The disputed domain name and the Complainant’s trademarks are nearly identical since both fully incorporate the word element “BOUYGUES”.

Since the disputed domain name and the Complainant’s trademarks are not fully identical, the key element investigated and considered by the Panel is whether the disputed domain name consisting also of a term “BELGIUM” is confusingly similar to the Complainant’s trademarks.

The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name. An addition of common, dictionary, generic, or other descriptive terms is typically insufficient to prevent threshold Internet user confusion. Confusing similarity test under the UDRP typically involves a straightforward visual and aural comparison of the trademark with the domain name in question.

Applying the principles described above, the Panel contends that incorporation of a dominant “BOUYGUES” element of Complainant’s trademarks (which standalone enjoys high level of distinctiveness) into the disputed domain name constitutes confusing similarity between Complainant’s trademark and the disputed domain name.

Adding of a non-distinctive element – geographical suffix “BELGIUM” - cannot prevent the association in the eyes of internet consumers between the disputed domain name and the Complainant’s trademarks and thus the likelihood of confusion still exists. On the contrary, it may mislead the internet users that the disputed domain name is somehow related to Complainant's business in Belgium.

For sake of completeness, the Panel asserts that the top-level suffix in the disputed domain name (i.e. the “.BUZZ”) must be disregarded under the identity and confusing similarity tests, as it is a necessary technical requirement of registration.

Therefore, the Panel has decided that there is identity in this case, it also concludes that the Complainant has satisfied paragraph 4(a)(i) of the Policy.


NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant’s assertions that the Respondent is not commonly known by the disputed domain name and is not affiliated with nor authorised by the Complainant are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent.

In addition, given the fact that (i) the disputed domain name has not been genuinely used and (ii) in the absence of the Respondent's response, the Panel concludes that there is no indication that the disputed domain name was intended to be used in connection with a bona fide offering of goods or services as required by UDRP.

Consequently, the evidentiary burden shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. However, the Respondent failed to provide any information and evidence that it has relevant rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a) (ii) of Policy).


BAD FAITH

The Panel finds it grounded that the Respondent registered and used the disputed domain name in bad faith.

The Respondent has not used the disputed domain name in any genuine manner, however, the Panel concludes (as it has been ruled in many similar cases, as for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, <jupiterscasino.com>, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, <ladbrokespoker.com>) that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name(s) without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.

Examples of what may be cumulative circumstances found to be indicative of bad faith include cases in which (i) the Complainant has a well-known trademark and (ii) there is no genuine use (e.g. a mere "parking") of the disputed domain name by the Respondent.

The respondent has not been using the disputed domain name and it remains merely "parked"; also the Panel concludes that Complainant's Trademarks enjoy status of well-known trademarks. Consequently, both conditions for finding of the bad faith under the case law above are duly met.

Based upon the concepts above, which the Panel finds satisfied in this case, even though there is no real use of the dispute domain name, the Panel contends, on the balance of probabilities, that the disputed domain name has been registered and is being used (held) by the Respondent in bad faith.

Thus, the Panel has taken a view that the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy.