Bouygues v Ananda Rachel

WIPO Case No. D2025-1036

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bouygues v. Ananda Rachel

Case No. D2025-1036

1. The Parties

The Complainant is Bouygues, France, represented by Nameshield, France.

The Respondent is Ananda Rachel, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bouygues-uklimited.com> is registered with Combell NV (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2025. On March 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 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 March 17, 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 March 17, 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 March 18, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 7, 2025. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 8, 2025.

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The Center appointed Daniel Peña as the sole panelist in this matter on April 14, 2025. 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 group of industrial companies that operates in the construction, energies and services; and telecom and media sectors.  The Complainant’s subsidiary Bouygues UK Limited is operating in the United Kingdom. The Complainant owns, through its subsidiary, a number of domain names including <bouygues-uk.com>.

The Complainant is the owner of the following trademarks:

- BOUYGUES, international figurative mark No. 390771, registered on September 1, 1972, in classes 6, 19,

37 and 42;

- BOUYGUES, French figurative mark No. 1197244, registered on July 30, 1982, in classes 6, 16, 19, 28, 35,

37, 40, 41, 42, 43, 44 and 45:

The disputed domain name was registered on March 9, 2025.  At the time of filing the Complaint, the

disputed domain name resolved to a parking page.

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 disputed domain name consists of the Complainant’s trademark with an additional term, which does nothing to avoid confusing similarity so the term “bouygues” will be thus easily identified and will be the first word a consumer will perceive of the disputed domain name.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for any domain name incorporating any of its trademarks, and that the Respondent is not making a fair use, a noncommercial use, as well as no actual or contemplated bona fide or legitimate use of the disputed domain name.

The Complainant contends that the Respondent registered and used the disputed domain name in bad faith, that the Respondent was fully aware of the existence of the Complainant when it acquired the disputed domain name as the disputed domain name refers to the Complainant’s subsidiary company, and the Respondent has been redirecting the disputed domain to a parking page.

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

B. Respondent

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

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6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Considering these requirements, the Panel rules as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided evidence of its rights in the trademarks BOUYGUES, on the basis of its multiple trademark

registrations, including international and French trademark registrations.

A trademark registration provides a clear indication that the rights in the trademark belong to the
Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
“WIPO Overview 3.0”, section 1.2.1). It has also been established by prior UDRP panels that incorporating a
trademark in its entirety into a domain name is normally sufficient to establish that the domain name is
confusingly similar to a trademark. Such findings were confirmed, for example, within section 1.7 of
WIPO Overview 3.0. The Panel finds that the disputed domain name is confusingly similar to the
Complainant’s BOUYGUES marks. The Respondent’s incorporation of the Complainant’s mark in full in the
disputed domain name is evidence that the disputed domain name is confusingly similar to the
Complainant’s marks.

The mere addition of a hyphen and the terms “uk limited” to the Complainant’s trademark BOUYGUES does not prevent a finding of confusing similarity with the Complainant’s marks. Furthermore, the addition of the generic Top-Level Domain “(gTLD”) “.com” is not sufficient to prevent a finding of confusing similarity either.

The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent, will lead to this ground being set forth.

The Complainant claims that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. Furthermore, the disputed domain name directs to an inactive website.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

The Panel also finds that the nature of the disputed domain name, reproducing the Complainant’s trademark
and the name of the Complainant’s subsidiary carries a risk of implied affiliation with the Complainant (see
WIPO Overview 3.0., section 2.5.1).

The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

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C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

With regard to the bad faith at the time of registration, the Panel notes that BOUYGUES is not a common or descriptive term, but a renowned trademark in and to which the Complainant has demonstrated rights. The Panel has reviewed the list of registered trademarks submitted with the Complaint confirming the

registrations of the BOUYGUES trademark predate the date of registration of the disputed domain name.

The disputed domain name reproduces, without any authorization or approval, the Complainant’s registered trademarks. Moreover, the disputed domain name is inherently misleading as it reproduces the Complainant’s BOUYGUES trademark together with the terms “uk limited”, which refers to the Complainant’s subsidiary in the United Kingdom. Therefore, the Panel finds that the Respondent, when registering the disputed domain name, had knowledge of the Complainant’s earlier rights to the BOUYGUES trademark.

WIPO Overview 3.0).

The bad faith registration and use of the disputed domain name are also affirmed by the fact that the section 3.3 of the
Respondent has not denied, or even responded to, the assertions of bad faith made by the Complainant in
this proceeding. Furthermore, the Panel finds that the passive holding of the disputed domain name in the
circumstances of the case does not prevent a finding of bad faith registration and use. On the contrary, this
Panel agrees with the Complainant’s assertion that in this case the disputed domain name containing the
Complainant’s well-known earlier mark, constitutes an indication of bad faith. Here the Panel finds that the

The Panel concludes that the disputed domain name was registered and is being used in bad faith and that consequently, the Complainant has satisfied the requirement 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 <bouygues-uklimited.com> be transferred to the Complainant.

/Daniel Peña/ Daniel Peña Sole Panelist Date: April 28, 2025