Bouygues SA v jean Henry

WIPO Case No. D2025-0012

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bouygues SA v. jean Henry

Case No. D2025-0012

1. The Parties

The Complainant is Bouygues SA, France, represented by ADVANT Altana, France.

The Respondent is jean Henry, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bouyguesfrance.com> is registered with Hostinger Operations, UAB (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2025. On January 3, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2025, 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 (redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 6, 2025, 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 January 7, 2025.

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 January 9, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 29, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 9, 2025.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on February 12, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is the French Company Bouygues SA, founded by Mr. Francis Bouygues in 1952, that gradually expanded its activities to construction, telecommunications and medias, both in France and in other countries and has since branched out into new lines of business. Recently, on October 4, 2022, the

Complainant acquired a new big subsidiary in the sector of energies and services, Equans, and added not less than 75,000 new employees to its group. The Complainant has become the group’s holding Company and is established in more than 80 countries throughout five continents.

The Complainant owns various trademark registrations for BOUYGUES or containing BOUYGUES in several jurisdictions, including the following.

French Trademark Registration No. 1197243 BOUYGUES, registered on March 4, 1982, in classes 6, 16,
19, 28, 35, 37, 40, 41, 42, 43, 44 and 45;

United States of America Trademark Registration No. 2970089 BOUYGUES, registered on July 19, 2005, in classes 37 and 28.

International Trademark Registration No. 949188 BOUYGUES, registered on September 27, 2007,
designating Australia, Denmark, Estonia, Finland, Greece, Ireland, Japan, Lithuania, Sweden, China,
Cyprus, Latvia, Poland, Slovenia and Russian Federation.

The Complainant also owns various domain names which include BOUYGUES, such as <bouygues.biz> registered on November 15, 2001, <bouygues.ca>, registered on June 10, 2003, <bouygues.info>, registered on August 1, 2001, and many more.

The disputed domain name <bouyguesfrance.com> was registered on October 24, 2024 and does not resolve to an active website. According to the evidence submitted by the Complainant, the disputed domain name has been used to send fraudulent emails to Complainant’s business partners impersonating the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:

First, it shall be reminded that the Respondent cannot have any intellectual property right on the sign the Complainant itself. Moreover, the Complainant has not licensed or otherwise permitted the Respondent – who is unknown – to use any of its trademarks or to apply for any domain name incorporating any of its trademarks.

Therefore, in the absence of authorization from the Complainant to use such widely known trademarks, no actual or contemplated bona fide or legitimate use could be reasonably claimed by the Respondent.

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The Respondent has the clear intent for commercial gain misleadingly to divert clients and business partners or to tarnish the trademarks or services marks at issue.

Moreover, the Respondent has no interest in respect of the disputed domain name since the website under the disputed domain name is neither secured nor active.

Above all, the disputed domain name has been used to send and to sign emails from the email box
“[…]@bouyguesfrance.com” to Complainant’s potential business partners falsely signed on behalf of the
Managing Director of the Complainant.

By doing so, the Respondent impersonated the Complainant. The Respondent contacted by this mean a company on October 29, 31 and November 6, 2024, specifying that the Complainant was interested in purchasing products from them.

Thus, when this company contacted it got in touch with the Complainant to make sure of the origin of the order, the Complainant informed them that it was a false commercial request.

The Complainant has also dedicated a page on its corporate website in order to warn third parties of the existence of said frauds (“ so that the potential victims contacted by the Respondent can be informed of the fact that the disputed domain name has been registered fraudulently (see Annex 13 to the Complaint).

Concurrently, the Complainant also filed a complaint before the competent French criminal courts on charges of identity theft, counterfeiting of the Complainant’s trademark and fraud and attempted fraud.

The Complainant has requested the Panel to issue a decision ordering the transfer or the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “france” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegitimate activity here, as applicable to this case, sending fraudulent emails impersonating the Complainant, or other types of fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Panel is satisfied that the Respondent must have been aware of the Complainant’s name and trademark BOUYGUES mentioned in Section 4 above (“Factual Background”) when it registered the disputed domain name on October 24, 2024, many years after the Complainant had registered and used the BOUYGUES trademark.

The Respondent, when registering the disputed domain name, has targeted the Complainant’s name and trademark BOUYGUES and added the term “france” to further confuse Internet users and lead them to believe that the disputed domain name belongs to or is endorsed by the Complainant, and thereby capitalize on the fame of the Complainant’s trademark.

The clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the disputed domain name and the nature of the disputed domain name, are indicative of bad faith (as stated in section 3.2.1 of the WIPO Overview 3.0).

Additionally, panels have held that the use of a domain name for illegitimate activity, here, the Respondent’s use of the disputed domain name to send fraudulent emails, constitutes bad faith. WIPO Overview 3.0, section 3.4.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <bouyguesfrance.com> be transferred to the Complainant.

/Miguel B. O'Farrell/
Miguel B. O'Farrell
Sole Panelist
Date: February 17, 2025