Bouygues v john philippe

WIPO Case No. D2025-0716

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bouygues v. john philippe

Case No. D2025-0716

1. The Parties

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

The Respondent is john philippe, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bouygueslimiteduk.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 February 21,
2025. On February 21, 2025, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On March 12, 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.

page 2

The Center appointed Zineb Naciri Bennani as the sole panelist in this matter on April 22, 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 group of industrial companies operating worldwide in over 80 countries since 1952 on
four sectors of activity: Construction, Energies and Services, Media and Telecoms. The group employs
201,500 employees worldwide and generated EUR 56 billion sales during 2023.

The group’s subsidiary BOUYGUES CONSTRUCTION is operating in the fields of construction, public works and concessions with a subsidiary, BOUYGUES UK LIMITED, operating in the United Kingdom in the same field.

The Complainant is the owner of several trademarks BOUYGUES, including the following:

- International figurative trademark BOUYGUES n° 390771 registered by its French subsidiary BOUYGUES,

since September 1, 1972, for classes 6, 19, 37 and 42.

- French combined trademark BOUYGUES n° 1197244 registered by its French subsidiary BOUYGUES,

since March 4, 1982, for various classes including classes 6, 19, 37 and 42.

The Complainant also owns, through its subsidiary, a number of domain names including
<bouygues-uk.com>, registered since January 24, 2002.

The disputed domain name <bouygueslimiteduk.com> was registered on February 18, 2025, and resolves 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 is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

According to the Complainant, the trademark is included in their entirety, and the addition of the geographical
term “UK” and the corporate form “limited” is not sufficient to change the overall impression of the
designation as being connected to the Complainant’s trademark BOUYGUES.

The Complainant contends that it is well established that generic Top-Level-Domains (“gTLDs”) may typically be disregarded.

The Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name as he is not known as the disputed domain name in the WhoIs database, and has not acquired trademark rights on these terms.

The Complainant asserts that the respondent has no rights or legitimate interests in respect of the disputed domain name and that he is not related in any way to the Complainant’s business.

page 3

According to the Complainant the disputed domain name was registered and is being used in bad faith as it is confusingly similar to its well-known and distinctive trademarks and the addition of the terms “limited” and “UK” to the term BOUYGUES cannot be coincidental.

Moreover, the Complainant argues that the disputed domain name has been set up with Mail Exchanger (“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

Paragraph 6(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the
Complainant must demonstrate each of the following:

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

(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.

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

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 Complainant’s trademark is well known worldwide.

A side-by-side comparison shows that the entirety of the mark is reproduced within the disputed domain name. When a domain name incorporates the entirety of a trademark, the domain name is considered confusingly similar to that mark for purposes of UDRP standing. See Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb, WIPO Case No. D2017-0209.

Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.7.

The disputed domain name is composed of the word BOUYGUES and the words “limited” and “UK”.

Although the addition of other terms here, “UK” and “limited”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms 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.

page 4

The gTLD designation “.com” may in this case be disregarded in the determination of confusing similarity.

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

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.

In this case, there is no proof of use of the disputed domain name or demonstrable plans for such use with a bona fide offering, as the Respondent is not known by the disputed domain name.

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.

In the present case, the Panel notes that the Respondent registered a worldwide well-known trademark
within the disputed domain name knowing that the Complainant owns a number of domain names including
<bouygues-uk.com>. The Panel considers therefore that the Respondent registered the disputed domain
name in full knowledge of the Complainant's trademark rights. See “Dr. Martens” International Trading
GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds 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.

page 5

Furthermore, the Respondent failed to submit a response or to provide any evidence of actual or contemplated good faith use.

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 <bouygueslimiteduk.com> be transferred to the Complainant.

/Zineb Naciri Bennani/
Zineb Naciri Bennani
Sole Panelist
Date: May 5, 2025