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Bouygues SA v. Dataweb SA [2001] GENDND 1217 (25 June 2001)

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is Bouygues SA, a corporation organised under the laws of France, having its place of incorporation at 90 avenue des Champs-Elysées, F-75008 Paris, France.

The Respondent is Dataweb SA, a corporation organized under the laws of Switzerland, with its place of incorporation and principal place of business at 10 quai du Seujet, CH-1200 Geneva, Switzerland.

The domain name in dispute is <bouygues.org>.

The Registrar with which the domain name is registered is Network Solutions, Inc.

The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on March 30, 2001, by e-mail and on April 4, 2001, in hardcopy. The Center had acknowledged receipt thereof on April 3, 2001.

On April 4, 2001, the Center sent the corresponding Request for Registrar Verification in connection with this case to Network Solutions. On April 9, 2001, the Registrar's verification response confirmed that the Registrant was Dataweb SA and that the domain name <bouygues.org> was in "active" status.

On April 11, 2001, after having verified whether the Complaint was satisfying the formal requirements, the Center notified by e-mail, facsimile and post the Commencement of Administrative Proceeding to the Respondent, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").

On May 3, 2001, the Center issued by e-mail the Notification of Default to the Respondent for having failed to submit a response to the Complaint within the deadline granted.

On June 12, 2001, the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of the undersigned as sole panelist in accordance with Paragraph 6(f) of said Rules, after the latter had signed and forwarded to the Center on June 8, 2001, a statement of acceptance and declared his impartiality and independence in this matter.

Transmission of the file to the Sole Panelist was made on June 8, 2001, by e-mail and registered post, hard copy of which was received by the undersigned a few days later.

The Sole Panelist forwarded his decision to the Center within the time limit fixed.

Bouygues SA was founded in 1952 by Francis Bouygues as a building contractor in the Paris region. The company gradually expanded its activities to include property development, civil works and civil engineering, both in France and in other countries and has since branched out into new lines of business. Bouygues SA has become the group’s holding company. It owns the group’s subsidiaries, the most important ones being Bouygues Telecom, TF1, Saur, Bouygues Construction, Bouygues Immobilier and Colas. Except for TF1, where it holds a 40% interest, Bouygues SA is a majority shareholder in all of the above-mentioned companies.

This Complaint is principally based upon the verbal trade and service mark "BOUYGUES" (hereinafter "the Mark") which the Complainant had first registered in France on May 4, 1972. By means of an international registration within the priority period starting on May 4, 1972, the Complainant had the Mark’s protection extended, under the international registration number 390770, to a number of countries, including Switzerland (Complainant's Annex 17). This international registration was renewed for the first time on September 1, 1982 (Complainant's Annex 18), and for the second time on September 1, 1992, which second extension being valid until September 1, 2012 (Complainant's Annex 19). The verbal mark "BOUYGUES" is presently registered in Switzerland, France, Germany, Austria, the Benelux, Spain, Italy, Liechtenstein, Monaco, Portugal, San Marino. It is registered and used for international classes 6 (metal goods), 19 (non-metallic building materials), 37 (construction and repair services) and 42 (miscellaneous services).

This Complaint is also based on the graphic mark "BOUYGUES" and the verbal marks "BOUYGUES CONSTRUCTION" and "BOUYGUES TÉLÉCOM" (hereinafter "the Other Marks"). The graphic mark "BOUYGUES" is registered for international classes 6 (metal goods), 19 (non-metallic building materials), 37 (construction and repair services), 42 (miscellaneous services), while the mark "BOUYGUES CONSTRUCTION" is registered for international class 37 (construction and repair services) and the mark "BOUYGUES TÉLÉCOM" is registered for international classes 9 (electrical and scientific apparatus), 37 (construction and repair services) and 38 (communications services). The Other Marks are presently registered internationally, and in particular in Switzerland (Complainant's Annex 20).

Furthermore, the Complainant completed the legal protection of the name "BOUYGUES" by registering it as a SLD, namely <bouygues.com>, <bouygues.net>, <bouygues.fr> and <bouygues.ch> (Complainant's Annex 9).

The Complainant submits the following:

(i) The domain name <bouygues.org> (hereinafter referred to sometimes as "the Domain Name") is identical or confusingly similar to the verbal mark "bouygues" and/or with the Other Marks.

As regards the verbal mark "bouygues", it appears that it is identical with the SLD "bouygues", that was registered by the Respondent under the TLD ".org". The TLD as well as the use of small or capitalised letters should not be taken into account when appreciating the question whether there is identity within the meaning of the Rules (WIPO Case No. D2000-0003, Telstra Corp. Ltd. v. Nuclear Marshmallows, para. 7.1; WIPO Case No. D2000-0001, Ellenbogen v. Pearson, Discussion and Findings, A.).

In addition, as the distinctive element in each of the Other Marks is also "BOUYGUES", the domain name <bouygues.org> appears to be confusingly similar with each of the Other Marks. This is true despite the graphic element in the graphic mark "BOUYGUES" (cf. WIPO Case No. D2000-0018, Banco Español de Crédito S.A. v. Duarte Perry Vidal Taveira, para. 6.2.1) or the verbal, descriptive elements "Telecom" respectively "Construction" contained in the Other Marks.

(ii) The Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint, nor can he claim any of the exceptions mentioned under Paragraph 4(c) of the Policy.

The Complainant is the rightful owner of the verbal mark "BOUYGUES" and of the Other Marks as well as of the company name "BOUYGUES". As such, he has an exclusive right to use these marks and the company name and any use by a third party, including the Respondent, would need to be authorised by the Complainant. However, the Complainant has not granted the Respondent any license or any other right to use the above marks and/or the company name in any way, and in particular, to apply for or use any domain name incorporating any of its marks containing the element "BOUYGUES" and/or the company name "BOUYGUES".

The Complainant had invited the Respondent to assert any such rights or legitimate interests, which invitation had never been answered (Complainant's Annex 16). This is an additional indication that the Respondent has no such rights or interest. In this context, it should also be noted that BOUYGUES is a name which the Respondent could not legitimately choose unless seeking to create an impression of an association with the Complainant.

Furthermore, the Respondent does not operate any web site nor does he have any other on-line presence under the domain name <bouygues.org> (Complainant's Annex 21).

Thus, there is no indication neither (i) for any use by the Respondent of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services, nor (ii) has the Respondent been commonly known by the Domain Name, nor (iii) is the Respondent making a legitimate non-commercial or fair use of the Domain Name.

(iii) The domain name should be considered as having been registered and used in bad faith.

(a) Bad faith registration

The Respondent registered the domain name <bouygues.org> on March 22, 1999, while the verbal as well as the graphic mark "BOUYGUES" are internationally registered since 1972, and the mark BOUYGUES TELECOM was registered in 1997. These registrations were published (Complainant's Annex 20). Moreover, the company name and verbal mark "BOUYGUES" as well as the graphic mark "BOUYGUES" are both widely reputed and are very intensively used by the Complainant and its group companies. Due to the above and due to the fact that BOUYGUES is not a name that could have been created independently by the Respondent without previous knowledge of the company name and the verbal and graphic marks BOUYGUES, it appears to be clear that the Respondent knew about the Complainant’s marks and company name and that he registered the Domain Name at issue in bad faith.

In this context it should be mentioned that the Respondent's place of business is Geneva and that the city of Geneva is located only a few kilometres from the French boarder. The official language in Geneva is French, and, very naturally, Geneva has close economic, social, cultural, etc. contacts with France. The Complainant and his marks therefore reach a degree of notoriety and reputation in Geneva equal to that in France itself. The Complainant and his marks being also well known in other European countries which are not French-speaking, such as Spain, Germany or Italy, if not worldwide, it appears therefore to be almost impossible that the Respondent was not aware of the Complainant’s company name and trade and/or service marks when registering the Domain. This is the case all the more that the Complainant, at the time of registration of the Domain Name, had already registered bouygues.fr and bouygues.ch, whereby the first one resolved to the Bouygues group’s main web site.

Even in the hypothetical case where one would consider that the Respondent did not know the company name BOUYGUES and the corresponding marks when registering the Domain Name, he at the very least should have known them because they are well known and intensely used (constructive knowledge). In both cases, the registration of the domain name <bouygues.org> was made in bad faith within the meaning of paragraph 4(a) of the Policy.

Another indication for bad faith registration is the fact that since the registration of the Domain Name on March 22, 1999, the Respondent has not actively used the Domain Name.

(b) Bad faith use

In his letter dated July 26, 2000 (Complainant's Annex 13), the Respondent offered to transfer the Domain Name to the Complainant against a consideration of USD 5,000. This amount clearly exceeds the out-of-pocket costs of the registration of a domain name, which realistically may be estimated at USD 300 as a maximum. Thus, the Respondent had the intention to sell the Domain Name to the Complainant for an excessive price which makes that the requirement of bad faith use is met. Furthermore, the Respondent himself admitted indirectly his bad faith by basing the requested price on the comparative cost of litigation rather than on the effective cost of registration (Complainant's Annex 15). Its objective was clearly to draw an undue benefit from registration and sale of the Domain Name.

There are further circumstances indicating that the Domain Name was registered and/or used in bad faith by the Respondent, namely the Respondent registered other company names and/or marks of third parties, (Complainant's Annex 22) such as "relais-entrecote.net" (there exists a corporation with the name Relais de l’Entrecôte SA, which is a gastronomy corporation with its principal place of business in Geneva, Switzerland; Complainant's Annex 23); "pilet-renaud.com" (Pilet Renaud SA is the company name of a real estate corporation with its principal place of business in Geneva, Switzerland owning a graphic mark "PILET & RENAUD"; Complainant's Annex 24); "hoffman-la-roche.com" (Hoffman - La Roche which was the name of one of the most important Swiss pharmaceutical groups; even though the group changed its name to Roche, there is still a number of subsidiaries bearing the name Hoffmann - La Roche; Complainant's Annex 25); "placette.net" (Placette is a trade name designating a very well known chain of supermarkets in the French part of Switzerland which is owned by Maus Frères SA, a corporation with its principal place of business in Geneva, Switzerland. It is most likely that, just like in the present case, the Respondent registered these domain names without any authorisation by the holders of the corresponding company or trade names / marks. It is likely that these registrations infringe Swiss domestic unfair competition and trademark protection laws.

The Complainant concludes that each of the elements specified in Paragraph 4(a) of the Policy are applicable to the present dispute. The conditions for granting the remedy requested are therefore met.

The Respondent has not submitted any response to the Complaint.

Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:

(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent's domain name has been registered and is being used in bad faith.

The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.

The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.

There is no doubt that there is identity or at least confusing similarity between the Complainant' trade, verbal and service marks "BOUYGUES", "BOUYGUES CONSTRUCTION" and "BOUYGUES TELECOM" and the Domain Name, i.e. <bouygues.org>.

The Complainant has also established its rights in the Mark and Other Marks, namely "BOUYGUES", "BOUYGUES CONSTRUCTION" and "BOUYGUES TELECOM" with various registrations for such a name (see Complainant's Annexes 17, 18, 19 and 20).

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14(b) of the Rules (see e.g. WIPO Cases Nos. D2000-0009, p.6 or D2000-0867, p.6).

It is the Sole Panelist’s finding that the Complainant has established that the Mark and Other Marks, that is "BOUYGUES", "BOUYGUES CONSTRUCTION" and "BOUYGUES TELECOM", have been known in various European countries for a while, especially in Switzerland and its French speaking part.

Furthermore, absent evidence to the contrary and as rightly pointed out by the Complainant, the latter has not granted any license or otherwise permitted the Respondent to use the Mark and the Other Marks or to apply for any domain name incorporating the said trade, verbal and service marks.

Under those particular circumstances, the Sole Panelist is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

As already pointed out, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance, which could demonstrate his good faith in the registration or use of the domain name in issue.

In addition, it is to be noted that the Respondent has not disputed the Complainant's contentions and various allegations mentioned above in respect of the "bad faith" registration and use the <bouygues.org> domain name.

As regards bad faith registration of the Domain Name, the Sole Panelist finds the Complainant's submissions convincing because, under the present circumstances, the Respondent could not ignore, at the time of registration of the Domain Name, the Complainant's Mark and Other Marks that had been registered and enjoy international protection, especially in Switzerland.

In respect of bad faith use of the Domain Name, the Respondent's e-mail dated April 11, 2001, to the Complainant (a copy of which was attached to the Complainant's counsel letter of April 24, 2001, to the Center; see also, in this context Complainant's Annex 15) is illustrative of the Respondent's conduct : the latter was willing to accept the transfer of the Domain Nave against payment of the amount of USD 5,000, as a guarantee against the use of said domain name by some ill disposed third parties, and also considering the costs that litigation may represent in this respect; the Respondent informed in that same communication that, failure of the Complainant to accept the transfer of the Domain Name under these conditions on or before April 20, 2000, it would not warrant the safe and proper use of the said domain name.

In the Sole Panelist view such behavior no doubt amounts to bad faith use of the Domain Name, within the meaning of Paragraph 4(a)(iii) of the Policy as a general rule, but also in accordance with Paragraph 4(b)(i) of the Policy in so far as the amount proposed exceeds the out-of-pocket costs directly related to the Domain Name, which, in any case, have not been substantiated by the Respondent.

The Respondent's conduct may even be considered under Paragraph 4(b)(ii) of the Policy in the present case, considering from the evidence submitted (see Complainant's Annex 22) that it might have similarly engaged on several occasions in preventing owners of trade or services marks from reflecting their mark in the corresponding domain name.

As a result, all requirements of Paragraph 4(a) of the Policy having been met in this case, transfer of the Domain Name in favor of the Complainant shall be ordered.

In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is identical or confusingly similar to the corresponding trademarks of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.

Accordingly, pursuant to Paragraph 4(a) of the Policy, the Sole Panelist requires that the registration of the domain name <bouygues.org> shall be transferred to the Complainant.

Christophe Imhoos
Sole Panelist

Dated: June 25, 2001