Bureau Veritas v Jones Saintd

WIPO Case No. D2024-5182

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bureau Veritas v. Jones Saintd

Case No. D2024-5182

1. The Parties

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

The Respondent is Jones Saintd, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bureauveritaszm.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2024. On December 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2024, 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 (Unknow / Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 2024, 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 December 18, 2024.

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 December 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2025.

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The Center appointed Peter Burgstaller as the sole panelist in this matter on January 17, 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 services in testing, inspection, and certification to help its clients improve their performance by offering services and innovative solutions to ensure that their assets, products, infrastructures, and processes meet standards and regulations in respect of quality, health and safety, environmental protection, and social responsibility. The Complainant employs over 82,000 people in more than 1,600 offices and laboratories worldwide.

The Complainant owns numerous trademark registrations containing the mark BUREAU VERITAS, inter alia,

- European Union trademark registration (word), No. 4518544, registered on June 1, 2006 (Annex 4 to

the Complaint);
- European Union trademark registration (figurative), No. 7282651, registered on April 16, 2009 (Annex 5 to the Complaint);
- United States of America trademark registration (word), No. 3214422, registered on March 6, 2007;
several jurisdictions under the Madrid Protocol around the world, including in Zambia (Annex 9 to the
Complaint).

- International trademark registration (word), No. 311819, registered on April 12, 1966, designated in

The Complainant and affiliated companies provide under domain names which contain the term
“bureauveritas” several websites, for example <bureauveritas.com>.

The disputed domain name was registered on October 16, 2024 (Annex 1 to the Complaint); at the time of filing the Complaint the disputed domain name redirected to the Complainant’s official corporate website under the domain name <bureauveritas.com> (Annex 14 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 trademark BUREAU VERITAS in that it only differs by adding the letters “zm” which has no effect on the reproduction of the trademark BUREAU VERITAS, since it does not affect the visual and phonetic similarities or the public's perception of it.

The Complainant argues that the terms “bureau” and “veritas” in its domain names are always written as one word without spaces between both terms, just as is the case in the disputed domain name. This increases the risk of confusion.

Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not an employee of the Complainant and not linked to the Complainant in any way whatsoever. Also, the Respondent has never been authorized by the Complainant to register a domain name that is similar to its trademark.

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Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant argues that the intention of the Respondent is to divert customers by creating confusion about the origin of the services and thus tarnishing the Complainant's trademark and damaging the Complainant’s image and reputation. In the present case the disputed domain name linked to the

Complainant’s corporate website which leads the public to believe that this company is linked to the Complainant and that it also provides certification services in the field of engineering and construction. It is furthermore apparent from the composition of the disputed domain name, comprising the Complainant’s trademark with a misspelling, that the Respondent was aware of the Complainant’s rights and its reputation vested in the trademark BUREAU VERITAS, as the Respondent almost identically copied the trademark for the disputed domain name when it registered it.

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.

The Complainant submitted evidence, which incontestably and conclusively establishes rights in the mark
BUREAU VERITAS.

In the present case the disputed domain name is confusingly similar to the BUREAU VERITAS mark in which the Complainant has rights since it incorporates the entirety of the mark and only adds the letters “zm” at the end.

It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name, the mere addition of a descriptive term or a generally known abbreviation (here “zm”, the country code of Zambia (ISO 3166)) will not prevent a finding of confusing similarity under the first element of the Policy (WIPO Overview 3.0, section 1.8). This is the case at present.

Finally, it has also long been held that generic Top-Level-Domains (“gTLDs”) (in this case “.com”) are
generally disregarded when evaluating the 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 assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to register or use the BUREAU

VERITAS trademark in any manner. Although the Respondent is not an authorized dealer of the Complainant and has no connection to it, it has used the disputed domain name to forward Internet users to the Complainant’s website and lead them to believe that its domain name is linked to the Complainant and that it also provides certification services in the field of engineering and construction, especially in Zambia. Such a behavior cannot be considered fair use as it falsely suggests an affiliation with the Complainant that does not exist. WIPO Overview 3.0, section 2.5.

The Respondent 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.

The Complainant has established rights in the registered trademark BUREAU VERITAS, long before the registration of the disputed domain name. Further, the trademark BUREAU VERITAS is well known in the field of providing services in testing, inspection, and certification.

It is therefore inconceivable for this Panel that the Respondent has registered and used the disputed domain name without knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith. This finding is supported by the fact that the disputed domain name entirely incorporates the Complainant’s trademark BUREAU VERITAS together with a generally known abbreviation for Zambia “zm”.

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

Finally, the disputed domain name is used actively since it redirects to one of the Complainant’s official websites. The Panel finds that such use is clearly bad faith use under the Policy since it is able to mislead the public into believing that the disputed domain name is registered and used by the Complainant.

Also, the Respondent’s control of the disputed domain name’s redirection also represents an implied ongoing threat to the Complainant, seeing as the Respondent may always opt to use the disputed domain name for further nefarious and/or disadvantageous purposes.

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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 <bureauveritaszm.com> be transferred to the Complainant.

/Peter Burgstaller/
Peter Burgstaller
Sole Panelist
Date: January 28, 2025