Bouygues v John Henry

WIPO Case No. D2025-0606

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BOUYGUES v. John Henry

Case No. D2025-0606

1. The Parties

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

The Respondent is John Henry, United Kingdom (“UK”).

2. The Domain Name and Registrar

The disputed domain name <bouyguesuklimited.com> is registered with IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14,
2025. On February 17, 2025, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On February 18, 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 February 21,
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

February 21, 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 February 24, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2025.

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The Center appointed Peter Burgstaller as the sole panelist in this matter on March 26, 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 diversified group of industrial companies which operates its worldwide business under the mark BOUYGUES in the sectors of construction, energies and services, media and telecoms. Its subsidiary Bouygues UK Limited operates in the UK in the field of construction and property development (Annex 3-5 to the Complaint).

The Complainant has rights in figurative trademark registrations containing the mark BOUYGUES, inter alia:

- International Trademark registration No. 390771, registered September 1, 1972, designating several

jurisdictions;

- French trademark registration No. 1197244, registered July 30, 1982 (Annex 6 to the Complaint).

It provides its main business website under the domain name <bouygues.com> (Annex 3 to the Complaint),
for its construction business under the domain name <bouygues-construction.com> (Annex 4 to the
Complaint) and for its business in the UK, it operates the domain name <bouygues-uk.com>, registered on
January 24, 2002 (Annexes 5 and 7 to the Complaint).

The disputed domain name was registered February 12, 2025 (Annex 1 to the Complaint). At the time of filing of this Complaint the disputed domain name referred to a parking site of the Registrar showing that the domain name is already registered but not yet connected to a website (Annex 8 to the Complaint). The

disputed domain name had an active Mail Exchange (“MX”) record (Annex 9 to the Complaint).

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 is confusingly similar to the distinctive BOUYGUES mark in which the Complainant has rights. The only difference to the BOUYGUES mark is the descriptive term “uklimited” (short for United Kingdom and a corporate form). This addition does not prevent a finding of confusing similarity with the Complainant’s BOUYGUES mark. In fact, the Complainant alleges that the terms “uklimited”, associated with the BOUYGUES mark rather increase the risk of confusion in the mind of a consumer, who would expect to find the Complainant or its subsidiary in the UK, when seeing the disputed domain name.

Furthermore, the Complainant notes that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not linked to the Complainant in any way whatsoever and has never been authorized by the Complainant to register domain names that are similar to its trademark. The Respondent is moreover not commonly known by or associated with the disputed domain name and did not make any use of the disputed domain name since its registration and has no demonstrable plan to use the disputed domain name.

Moreover, the Complainant alleges that the disputed domain name was registered and is used in bad faith by the Respondent. The disputed domain name was registered decades after the Complainant has established rights in the mark BOUYGUES and this mark is distinctive and well known; hence, the Respondent must

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have been aware of the Complainant and its rights in the mark BOUYGUES when registering the disputed
domain name.

Further, the Complainant contends that the disputed domain name resolves to an inactive website, which is also in the concept of bad faith use under the Policy and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate.

Finally, the disputed domain name has been set up with MX records which suggests that it may be actively used for email purposes. This is also indicative of bad faith registration and use because any email emanating from the disputed domain name could not be used for any good faith purpose.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(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 with respect to the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

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.

Based on the available record, the Panel finds the Complainant has shown rights in respect of the mark
BOUYGUES for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The disputed domain name is confusingly similar to the trademark of the Complainant since the textual element of the Complainant’s mark BOUYGUES is included in the disputed domain name in its entirety. WIPO Overview 3.0, section 1.7. Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element.

WIPO Overview 3.0, section 1.10.

Moreover, it has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name, the mere addition of other terms (here, “uklimited”) does not prevent a finding of confusing similarity under the first element of the Policy. This is the case here. WIPO Overview 3.0, section 1.8.

Finally, it has also long been held that generic Top-level Domains (“gTLDs”) (in this case “.com”) are generally disregarded when evaluating the identity or confusing similarity of a disputed domain name. WIPO Overview 3.0, section 1.11.1.

Based on the available record, 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.

While 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 often impossible 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. 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 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, since it has never licensed or in any way authorized the Respondent to register the disputed domain name incorporating the BOUYGUES trademark.

The Respondent is not commonly known under the disputed domain name and the disputed domain name is not being used for a bona fide offering of goods or services; rather the inherently misleading disputed domain name is passively held by the Respondent. In this regard the Panel notes that the composition of the disputed domain name incorporating the Complainant’s BOUYGUES trademark together with the terms “uk limited” corresponding to the name of the Complainant’s subsidiary in the UK, carries a risk of implied affiliation.

The Respondent did not provide any evidence showing its rights or legitimate interests in the disputed domain name. It did not reply and hence has not rebutted the Complainant’s contentions.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy, both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:

- the disputed domain name was registered by the Respondent in bad faith; and

- the disputed domain name is being used by the Respondent in bad faith.

(i) The Complainant has established rights in the mark BOUYGUES years before the registration of the
disputed domain name.

Because of the distinctiveness of the BOUYGUES mark and the added terms “uklimited”, it is inconceivable for this Panel that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights. The addition of the terms “uklimited” to the BOUYGUES mark in the disputed domain name rather strengthens the finding that the Respondent must have been aware of the Complainant and its mark when registering the disputed domain name since it clearly falsely suggests connection to the Complainant’s operation and presence in the UK.

Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the
Respondent.

(ii) The disputed domain name is also being used in bad faith. The disputed domain name resolves to the Registrar’s parking page with no active content. Panels have found that the non-use of a domain name

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(including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of
passive holding. WIPO Overview 3.0, section 3.3.

The distinctiveness of the Complainant’s trademark, and the nature of the disputed domain name support the finding that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Furthermore, this Panel concludes that the disputed domain name is being used in bad faith, putting emphasis on the following:

- the Complainant’s trademark BOUYGUES is distinctive;

- the Respondent has failed to present any evidence of any active or contemplated good faith use with

regard to the disputed domain name;
- the disputed domain name is inherently misleading, and is thus suited to divert or mislead Internet
users trying to visit the Complainant’s site and gives the false impression that the Respondent may be in
some way related to the Complainant, which is not the case; and

- the disputed domain name has active MX records, as shown in the MX records lookup provided by the Complainant, which indicates a possible use for email services.

The evidence and documents produced and put forward by the Complainant together with the fact that the disputed domain name support the finding of bad faith.

Based on the available record, the Panel finds that the Complainant has established the third element 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 <bouyguesuklimited.com> be transferred to the Complainant.

/Peter Burgstaller/
Peter Burgstaller
Sole Panelist
Date: April 9, 2025