Bureau Veritas v Kamala MAMMADOVA

WIPO Case No. DGE2025-0002

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bureau Veritas v. Kamala MAMMADOVA

Case No. DGE2025-0002

1. The Parties

Complainant is Bureau Veritas, Immeuble Newtime, France, represented by Dennemeyer & Associates S.A.,

France.

Respondent is Kamala MAMMADOVA, Azerbaijan.

2. The Domain Name and Registry

The disputed domain name <bureauveritas.com.ge> is registered with Caucasus Online LLC (the .GE

Registry).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2025. On the same day, the Center transmitted by email to the .GE Registry a request for registry verification in connection with the disputed domain name. Also on February 19, 2025, the .GE Registry 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 (“Unknown”) and contact information in the Complaint. The Center sent an email communication to Complainant on February 19, 2025, providing the registrant and contact information disclosed by the .GE Registry, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 20, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the .GE Domain Name Dispute Resolution Policy (the .GE Policy), the Rules for .GE Domain
Name Dispute Resolution Policy (the .GE Rules), and the WIPO Supplemental Rules for .GE Domain Name

Dispute Resolution Policy (the Supplemental Rules).

In accordance with the .GE Rules, paragraphs 2 and 4, the Center formally notified Respondent of the
Complaint, and the proceedings commenced on February 21, 2025. In accordance with the .GE Rules,
paragraph 5, the due date for Response was March 13, 2025. Respondent submitted a Response on
February 22, 2025. Complainant submitted a Supplemental Filing on February 26, 2025.

page 2

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 27, 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 .GE

Rules, paragraph 7.

4. Factual Background

Complainant is a company organized under the laws of France that is active in the testing, inspection and certification (TICS) industry.

Complainant has provided evidence that it is the registered owner of numerous trademarks relating to its company name and brand BUREAU VERITAS, including, but not limited to, the following:

- word trademark BUREAU VERITAS, European Union Intellectual Property Office (“EUIPO”),
registration No.: 004518544, registration date: June 1, 2006, status: active;

- word/device trademark BUREAU VERITAS, EUIPO, registration No. 007282651, registration date:
April 16, 2009, status: active.

Moreover, Complainant has evidenced in its supplemental filing dated February 26, 2025, to own a Georgian subsidiary named Bureau Veritas Georgia LLC and to operate an office in Georgia since 2015.

Finally, Complainant has also demonstrated to own, inter alia, the domain name <bureauveritas.com> which resolves to Complainant’s main website at “ used to promote Complainant’s TICS services internationally.

Respondent, according to the Registrar Verification, is located in Azerbaijan. The disputed domain name was registered on October 24, 2024. By the time of the rendering of this Decision, it does not resolve to any content on the Internet (and according to the Case File has not done so in the past), but is passively held by Respondent instead. Complainant, however, has demonstrated that, at some point before the filing of the Complaint, e.g. on January 27, 2025, Respondent sent an email under the disputed domain name with the email address being “[…]@bureauveritas.com.ge”, thereby impersonating an employee of Complainant’s Georgian office, in order to send out false test reports and invoices for the purpose of claiming related payments.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the .GE Policy for a transfer of the disputed domain name. Notably, Complainant contends to be a world leader in TICS services, with over 82,000 people employed in more than 1,600 offices and laboratories worldwide, including since 2015 in Georgia.

Complainant submits that the disputed domain name is confusingly similar to Complainant’s BUREAU the latter.

Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not an employee of and is not linked with Complainant whatsoever, (2) Respondent has never been authorized by Complainant to register a domain name identical

to its trademark registrations, and (3) Respondent apparently is using the disputed domain name to create

page 3

email addresses impersonating at least one of Complainant’s employees in order to claim payment of false
invoices.

Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) given the circumstances of this case, it is inconceivable that Respondent registered the disputed domain name without prior knowledge of Complainant and its BUREAU VERITAS trademark, and (2) a fraudulent email address has been created by Respondent with the disputed domain name to send out false test reports and invoices to claim payments, thus tarnishing Complainant’s BUREAU VERITAS trademark and so damaging Complainant’s image and reputation.

B. Respondent

Respondent contends that Complainant has not satisfied the elements required under the .GE Policy for a transfer of the disputed domain name. Notably, Respondent submits that the disputed domain name is not identical or confusingly similar to a trademark in which Complainant has rights, since (1) at the time of the

registration of the disputed domain name, Complainant had no enforceable trademark rights in Georgia to
which the country code Top-Level Domain (“ccTLD”) “.ge” refers, but only applied for such trademark rights
shortly before the filing of the Complaint, and (2) the combination of the two words “bureau” and “veritas”

does not inherently imply any association with Complainant.

Moreover, Respondent asserts to have rights and legitimate interests in the disputed domain name, since the disputed domain name was entirely unrelated to Complainant’s business activities.

Also, Respondent argues that the disputed domain name was not registered or used in bad faith, since (1) the disputed domain name includes a common phrase or combination of words (such as “bureau” and “veritas”), (2) Complainant’s claim that the disputed domain name is being used for fraudulent purposes (e.g. the sending of fake invoices) is entirely speculative and Complainant has not provided any proof of actual harm or misuse of the disputed domain name, and (3) Respondent had no knowledge of Complainant’s future trademark application in Georgia at the time of registration of the disputed domain name. Finally, Respondent indicates that it is open to discussing the possibility of transferring the disputed domain name to Complainant against adequate compensation or a court ruling mandating such transfer.

6. Discussion and Findings

Under paragraph 4(a) of the .GE Policy, Complainant carries the burden of proving:

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

(ii)       that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Complainant’s Supplemental Filing of February 26, 2025

In light of the fact that unsolicited supplemental filings in Uniform Dispute Resolution Policy (“UDRP”) proceedings are generally discouraged, unless specifically requested by the panel (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”, section 4.6)[1], and with regard to the Panel’s authority under paragraph 10 of the .GE Rules vesting the Panel with the right to determine the admissibility, relevance, materiality and weight of the evidence brought before it, and to conduct the proceedings with due expedition, the Panel clarifies that it took knowledge of Complainant’s

[1] Given the similarities between the .GE Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel finds it

page 4

supplemental filing of February 26, 2025, but that the latter had no influence on the outcome of this
proceeding, which is why the Panel did not need to grant Respondent the opportunity of a supplemental

filing, too, thereby still treating both parties equally and fair (see paragraph 10(b) of the .GE Rules).

B. Identical or Confusingly Similar

First, 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 Complainant’s BUREAU VERITAS trademark and the disputed domain name. WIPO Overview 3.0, section

1.7.

Complainant has shown rights in respect of its BUREAU VERITAS e.g. for the territory of the European
Union. Such finding is sufficient to satisfy the threshold requirement of having trademark rights for purposes
of standing to file a case under the .GE Policy; contrary to Respondent’s contentions, it is not required that
Complainant owns trademark rights specifically in Georgia. WIPO Overview 3.0, section 1.2.1.

Moreover, the entirety of Complainant’s BUREAU VERITAS trademark is reproduced within the disputed domain name, with no additions or alterations whatsoever. Accordingly, the disputed domain name is identical to Complainant’s BUREAU VERITAS trademark for the purposes of the .GE Policy (see WIPO Overview 3.0, section 1.7), noting that the applicable ccTLD “.ge” for Georgia is simply viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1).

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

B. Rights or Legitimate Interests

Second, paragraph 4(c) of the .GE Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in .GE Policy 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 Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted 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 .GE Policy or
otherwise.

In particular, it is undisputed between the parties that Respondent has not been authorized to use Complainant’s BUREAU VERITAS trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights (yet) associated with the terms “bureau” and/or “veritas” on its own. Other than that, this Panel has well noticed Respondent’s claim of being in the process of registering a news agency in Georgia and the intended use of the disputed domain name was entirely unrelated to Complainant’s business activities. Respondent didn’t provide any evidence to support its claims. Quite contrary, however, to such claim and other of Respondent’s contentions, Complainant has indeed evidenced that, at some point before the filing of this Complaint, e.g. on January 27, 2025,

page 5

Respondent sent an email under the disputed domain name with the email address being <[…]@bureauveritas.com.ge>, thereby impersonating an employee of Complainant’s Georgian office, in order to send out false test reports and invoices for the purpose of claiming related payments. The Panel also has well recognized that Respondent argued that Complainant’s claim in that regard is speculative and that there is no evidence of such activity. Noting that Complainant provided screen captures of the fraudulent emails and Respondent did not argue or provide evidence showing change of ownership, the Panel finds that such use of the disputed domain name neither qualifies as a bona fide offering of goods or services nor as using the disputed domain name for a legitimate noncommercial or fair purpose. In this context, panels have long held that the use of a domain name for illegitimate/illegal activity (here, phishing) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel, therefore, finds the second element of the .GE Policy has been established, too.

C. Registered or Used in Bad Faith

Third, the Panel notes that, for the purposes of paragraph 4(a)(iii) of the .GE Policy, paragraph 4(b) of the .GE 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.

January 27, 2025, with the email address being <[…]@bureauveritas.com.ge>, thereby impersonating an employee of Complainant’s Georgian office, in order to send out false test reports and invoices for the purpose of claiming related payments, it is more likely than not that Respondent was fully aware of Complainant’s rights in its BUREAU VERITAS trademark when registering the disputed domain name and that the latter clearly is directed to such trademark; in this context, it is also worth noticing that Respondent only claims that it had no knowledge of Complainant’s future trademark application in Georgia when registering the disputed domain name, but not that Respondent had no knowledge of Complainant’s trademark rights at all. Moreover, using the disputed domain name for illegal phishing activities by sending at least one fraudulent email under it, obviously in order to send out false test reports and invoices for the purpose of claiming related payments, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own email communication by creating a likelihood of confusion with	In the present case, in light of the sending of a phishing email under the disputed domain name on Respondent’s phishing email. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b)(iv) of the .GE Policy. Also, panels have long held that the use of a domain name for illegitimate/illegal activity (here, phishing) constitutes bad faith. WIPO Overview 3.0, section 3.4. To sum up, even if Respondent did not register the disputed domain name with the intent of targeting Complainant or to profit from its BUREAU VERITAS trademark, using the disputed domain name in the way described above alone here fulfills the prerequisites of bad faith acting on the part of Respondent under the .GE Policy regime.
The Panel, therefore, finds that Complainant has established the third element of the .GE Policy, too.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the .GE Policy and 15 of the .GE Rules, the Panel orders that the disputed domain name, <bureauveritas.com.ge>, be transferred to Complainant.
/Stephanie G. Hartung/ Stephanie G. Hartung Sole Panelist Date: March 11, 2025

appropriate to apply UDRP jurisprudence, including reference to the WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition. See Région Ile-de-France v. Il De France LTD, WIPO Case No. DGE2024-0001.