Bureau Veritas v Abs GroupNl

WIPO Case No. D2025-1864

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bureau Veritas v. Abs GroupNl

Case No. D2025-1864

1. The Parties

The Complainant is Bureau Veritas, France, represented by Dennemeyer & Associates SAS, France.

The Respondent is Abs GroupNl, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bureauveritas-es.com> (the “Disputed Domain Name”) 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 May 9, 2025. On
May 12, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On May 13, 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 (Domain Admin) and contact information in the Complaint. The
Center sent an email communication to the Complainant on May 13, 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 May 13, 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 the due date for Response was June 3, 2025. The Response was filed with the Center on May 17, 2025.

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The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on June 12, 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 was founded in 1828 and provides testing, inspection and certification (TICS) services.
The Complainant’s group is present in Spain since 1854 and operates websites such as

“

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

- BUREAU VERITAS, European Union word mark No. 004518544 registered on June 1, 2006, covering services in classes 38 and 42; and

- European Union figurative trademark No. 007282651 depicted below, registered on April 16, 2009,

and covering products and services in classes 9 and 35 to 45.

The Disputed Domain Name was registered on October 16, 2024. According to the evidence filed by the Complainant, the Disputed Domain Name resolved to a website in the Spanish language reproducing the Complainant’s trademarks and the name and photo of the Complainant’s “Executive President in Spain and

Portugal”. It also included a link to “see all our offers” (translated from Spanish). The Disputed Domain

Name currently appears to resolve to an error “403 Forbidden” 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 confusingly similar to a trademark in which it claims to have rights, as it incorporates the verbal elements of the Complainant’s marks in their entirety.

The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the

Disputed Domain Name as:

- the Respondent is not linked with the Complainant;

- the Respondent has never been authorized by the Complainant to register a domain name similar to the Complainant’s trademarks;

- the Disputed Domain Name resolved to a website reproducing the Complainant’s trademarks.

Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. In summary, according to the Complainant:

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- it is inconceivable that the Respondent registered the Disputed Domain Name without prior knowledge of the Complainant and the Complainant’s marks;

- it is admitted that registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith;

- the Spanish customers could think that the Disputed Domain Name is linked to the Complainant or

legitimate; and

- the Respondent is therefore making unlawful and unfair use of the Disputed Domain Name with the

intention of diverting customers by creating confusion about the origin of the services and thus tarnishing the

Complainant's trademarks and damaging the Complainant's image and reputation.

B. Respondent

The Respondent contends the following:

- its development team has been “strictly instructed to refrain from using any content from existing

websites to avoid potential infringements”;
- the Disputed Domain Name is not confusingly similar to the Complainant's trademark. The addition of
the geographical identifier “es” reduces the likelihood of confusion, as it clearly indicates a localized or
region-specific focus, distinct from the global scope of the Complainant’s operations;

- the Respondent has legitimate rights and interests in the Disputed Domain Name as it is intended for use in a distinct business venture, unrelated to the services provided by the Complainant; and

- the Disputed Domain Name was registered in good faith without the intention of misleading or

confusing consumers regarding the Complainant’s services.

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 (textual components of 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 a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel observes that the entirety of the BUREAU VERITAS mark is reproduced within the Disputed Domain Name. In such cases, the domain name will normally be considered confusingly similar to the incorporated mark for purposes of UDRP standing. WIPO Overview 3.0, section 1.7.

Additionally, the Panel finds that the addition of a hyphen and another term – here, “es” – 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.

It is well established that generic Top-Level-Domains (“gTLDs”), here “.com”, may be disregarded when
considering whether the Disputed Domain Name is confusingly similar to a trademark in which the

Complainant has rights. WIPO Overview 3.0, section 1.11.

Based on the available record, 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.

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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.

The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name. According to the information provided by the Registrar and the Response, the Respondent is “Abs GroupNl”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the

Complainant.

The Disputed Domain Name incorporates the Complainant’s BUREAU VERITAS trademark in its entirety and merely adds a hyphen and the term “es”, which is the country code for Spain. In combination with the Complainant’s mark, the Panel finds that this term can be associated with the Complainant’s business in

Spain, particularly given the Complainant’s use of the domain name <bureauveritas.es>. According to the
Panel, noting also the use of the Disputed Domain Name discussed below, the composition of the Disputed
Domain Name affirms the Respondent’s intention of taking unfair advantage of the likelihood of confusion
between the Disputed Domain Name and the Complainant as to the origin or affiliation of the website at the
Disputed Domain Name.

Beyond looking at the disputed domain name and the nature of any additional terms appended to the mark, UDRP panels also assess whether the overall facts and circumstances of the case support a fair use or not. WIPO Overview 3.0, sections 2.5.2 and 2.5.3.

While the Respondent asserts that it has registered the Disputed Domain Name for the use in some unidentified “separate and independent business, without the intention of misleading or confusing consumers regarding the Complainant’s services”, the evidence provided by the Complainant shows that the Disputed Domain Name resolved to a website in the Spanish language reproducing both the Complainant’s word and figurative trademark mentioned above, and appearing to refer to the Complainant’s services, including a link to “all our offers”. The website also featured the name and a photo of the Complainant’s “Executive President in Spain and Portugal”. In the Panel’s view, this neither amounts to a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name. UDRP panels have categorically held that the use of a domain name for illegal activity (e.g. impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.

The Disputed Domain Name currently does not appear to resolve to an active web page. In the Panel’s view, this does not amount to any legitimate noncommercial or fair use or use in connection with a bona fide offering of goods and services either.

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

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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 finds that the following circumstances serve as indication of bad faith registration and use:     

- the Disputed Domain Name incorporates the Complainant’s trademark in its entirety, and combines it with a term which can be linked to the Complainant’s business and presence in Spain;

- several of the Complainant’s trademarks predate the registration of the Disputed Domain Name by

more than 15 years;

- according to the Complainant’s evidence, the Disputed Domain Name referred to a website

reproducing both the Complainant’s word and figurative trademark mentioned above, and appearing to refer
to the Complainant’s services, including a link to “all our offers”, and featured the name and a photo of the
Complainant’s “Executive President in Spain and Portugal”.;

Given the totality of the circumstances discussed above, the fact that the Disputed Domain Name currently resolves to an inactive webpage would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. 

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 <bureauveritas-es.com> be transferred to the Complainant.

/Flip Jan Claude Petillion/
Flip Jan Claude Petillion
Sole Panelist
Date: June 26, 2025