Westmore · UDRP DecisionBureauveritas2018.com
The Panel ordered transfer of <bureauveritas2018.com>. It found the domain confusingly similar to the BUREAU VERITAS mark because it incorporated the mark with the descriptive term “2018.” The calendar and music-download website was found pretextual rather than a bona fide use. Bad faith was established from the Respondent’s use of the Complainant’s figurative mark, knowledge of the Complainant’s prior rights, misleading use, continued use after notice, failure to explain its conduct, and the circumstances surrounding its use of a privacy service.
The timeline behind bureauveritas2018.com
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The case illustrates how nominally unrelated website content may fail to establish legitimacy when the domain reproduces a complainant’s mark and the site also displays the complainant’s distinctive figurative branding. The result rested not merely on the appended year or the Respondent’s default, but on the combination of prior rights, direct trademark use, pretextual content, continued use after notice, and the absence of a credible explanation.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bureau Veritas v. Perfect Privacy, LLC / Nikolai Timchenko Case No. D2018-0751 1. The Parties The Complainant is Bureau Veritas of Neuilly-Sur-Seine, France, represented by Novagraaf France, France. The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Nikolai Timchenko of Moscow, Russian Federation. 2. The Domain Name and Registrar The disputed domain name <bureauveritas2018.com> is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2018. On April 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2018, 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 April 13, 2018 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 amended Complaint on April 18, 2018. 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 the Respondent of the Complaint, and the proceedings commenced on April 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2018. The Center appointed Taras Kyslyy as the sole panelist in this matter on May 25, 2018. 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 Bureau Veritas registered in 1985, recognized and accredited by French and international organization as a trusted partner in testing, inspection and quality control services. The Complainant owns various BUREAU VERITAS trademarks in various jurisdictions, in particular: - International registration No. 763643 registered on March 29, 2001, class 38; - European Union Trade Mark No. 004518544 registered on June 1, 2006, classes 38, 42; - European Union Trade Mark No. 005927711 registered on February 6, 2008, class 42; - European Union Trade Mark No. 007282651 registered on April 16, 2009, classes 9, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45; - International registration No. 1218030 registered on April 30, 2014, class 42; - International registration No. 1289458 registered on December 23, 2015, class 42; - International registration No. 1074420 registered on March 21, 2011, classes 41, 42; - International registration No. 1291135 registered on December 23, 2015, class 42. The above trademarks are used in relation with audit and quality control services provided by the Complainant. Specific image elements of some of the above trademarks is used on the websites of companies authorized by the Complainant, as a label insuring specific services meet relevant standards. The Complainant owns the domain names created prior to the disputed domain name as follows: <bureauveritas.com> <bureauveritas.eu> <bureauveritas.net> <bureauveritas.org> The disputed domain name <bureauveritas2018.com> was registered on November 7, 2017 and is used for a website containing the Complainant’s trademark together with the specific image element and suggesting calendar for 2018 with various image and music options. A privacy service was used for registration of the disputed domain name. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or at least confusingly similar to the Complainant’s trademarks. Account should be taken only of the sequence “bureauveritas”. Descriptive elements “2018” and “.com” and the lack of space between words “bureau” and “veritas” cannot avoid a likelihood of confusion. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name is not related to any prior trademark or business/commercial name owned by the Respondent. Also, the Respondent is not related to the Complainant and has absolutely no link with the Complainant’s activity. In addition, the Respondent is not authorized by the Complainant. The disputed domain name was registered and is being used in bad faith. The Respondent had intention to take advantage of the Complainant’s reputation using the Complainant’s specific image trademark on its website and in the disputed domain name. It is very likely that the content of the respective Respondent’s website is just for show, because there is no apparent purpose other than offering the disputed domain name for sale, even if it is not stated openly. The Respondent also ignored the Complainant’s cease and desist letter informing on the Complainant’s prior rights and further continued use of the disputed domain name and the Complainant’s trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel notes that the Complainant has registered trademark rights in the BUREAU VERITAS mark, as detailed above. The generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name is viewed as a standard registration requirement and is disregarded for the purposes of the confusing similarity test (see, e.g. , Rexel Developpements SAS v. Zhan Yequn , WIPO Case No. D2017-0275 ). The disputed domain name captures the Complainant’s trademark adding the descriptive term “2018” dropping space between “bureau” and “veritas” words, which still makes the trademark recognizable and does not prevent confusing similarity (see, e.g. , eBay Inc. v. ebayMoving / Izik Apo , WIPO Case No. D2006-1307 ). According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. Considering the above the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. There is no relationship whatsoever between the Parties. The Panel accepts the Complainant’s submission that the use to which the disputed domain name has been put, i.e. , to display a calendar with music downloads, is pretextual, and does not amount to a bona fide use of the disputed domain name. Furthermore, the Respondent provided no evidence that it holds a right or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g. , World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe , WIPO Case No. D2008-0642 ). The Complainant did not authorize the Respondent to use its BUREAU VERITAS trademark. Considering the above the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Respondent uses the Complainant’s figurative trademark on its website at the disputed domain name as established to be confusingly similar to the Complainant’s word trademark, which is also the Complainant’s company name. At the time of the registration of the disputed domain name the Respondent knew about the existence of the Complainant’s prior registered and well-known trademarks (see, e.g. , The Gap, Inc. v. Deng Youqian , WIPO Case No. D2009-0113 ). The Panel believes that the Respondent’s actions on registration of the disputed domain name confirm its intention to take advantage of the Complainant’s reputation using Complainant’s figurative trademark on its website and its trademark and company name in the disputed domain name and to mislead the public as to the source of the disputed domain name, which is bad faith. The Respondent continued use of the disputed domain name and the Complainant’s figurative trademark on its website after being notified by the Complainant of the existence of the Complainant’s relevant prior rights. The Respondent ignored its possibility to provide any good explanations of its good faith while registering and using the disputed domain name. Moreover, the Respondent used a privacy service to register the disputed domain name. According to section 3.6 of the WIPO Overview 3.0 , the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference. However, no such response was provided by the Respondent. The Panel finds that such use of the privacy service here also supports the Panel’s finding that the registration of the disputed domain name was in bad faith. Considering the above the Panel believes the disputed domain name was registered and is being used in bad faith, therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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 <bureauveritas2018.com> be transferred to the Complainant. Taras Kyslyy Sole Panelist Date: June 8, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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