Bureau Veritas v Registration Private, Domains By Proxy, LLC / Domain

WIPO Case No. D2022-0079

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bureau Veritas v. Registration Private, Domains By Proxy, LLC / Domain
Privacy, Above.com Domain Privacy

Case No. D2022-0079

1. The Parties

The Complainant is Bureau Veritas, France, represented by Novagraaf France.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Domain

Privacy, Above.com Domain Privacy, Australia.

2. The Domain Name and Registrar

The disputed domain name <bureauveristas.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2022. On January 12, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 14, 2022, 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 amendment to the Complaint on January 18, 2022.

The Center verified that the Complaint together with the amendment to the 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 January 20, 2022. In accordance with the Rules, paragraph
5, the due date for Response was February 9, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on February 16, 2022.

The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on February 22, 2022.
The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

page 2

Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background
A. Complainant

The Complainant in this proceeding is Bureau Veritas, a French company, a leading provider of testing, inspection and quality control services.

The Complainant also tests for compliance with applicable standards, regulations, and specifications, performing laboratory and on-site testing for manufacturing and process industries.

The Complainant benefits from a large network of laboratories operating worldwide. BUREAU VERITAS facilities are strategically located for its clients’ benefit, granting easier access from ports and major manufacturing locations. The Complainant’s inspection services give companies confidence in the reliability and integrity of their products, assets, and systems.

In the year 2018, the Complainant’s revenue amounted to EUR 4.8 billion. The Complainant has more than

400,000 clients, over 77,000 employees, and more than 1,500 offices and laboratories in 140 countries.

The Complainant has proven to be the owner of the BUREAU VERITAS mark.

The Complainant is, inter alia, the owner of the following trademarks:

1) Union European trademark registration BUREAU VERITAS No. 004518544 filed on June 30, 2005,

registered on June 1, 2006, and renewed on May 20, 2015, in classes 38 and 42.

2) Union European trademark registration BUREAU VERITAS 1828 and device No. 005927711 filed on May

11, 2007, registered on February 6, 2008 and renewed on April 24, 2017, in class 42.

3) International trademark registration BUREAU VERITAS No. 1289458 filed on December 23, 2015, in class
24 designating the following countries: European Union, India, United-States, Japan, Republic of Korea,

Singapore, and China.

4) International trademark registration BUREAU VERITAS 1828 and device No. 1291135 filed on December
23, 2015, in class 24 designating the following countries: European Union, India, United-States, Japan,

Republic of Korea, Singapore, and China.

5) Australian trademark registration BUREAU VERITAS No. 1169634 filed on April 2, 2007, and renewed in

2017.

6) Australian trademark registration BUREAU VERITAS 1828 and device No. 1180194 filed on June 5, 2007,

and renewed in 2017.

7) New Zealand trademark registration BUREAU VERITAS No. 769695 filed on June 5, 2007, registered on

June 11, 2009 and renewed in 2017 in class 42.

8) New Zealand trademark registration BUREAU VERITAS 1828 and device No. 769697 filed on June 5,

2007, registered on June 11, 2009, and renewed in 2017 in class 42.

9) United States trademark registration BUREAU VERITAS No. 3214422 filed on March 30, 2001, and
registered on March 6, 2007, and renewed in 2017 in class 38.

page 3

10) United States trademark registration BUREAU VERITAS No. 2871545 filed on April 3, 2003, registered

on August 10, 2004 and renewed in 2015 in classes 09, 16, 35, 37, 38, 41, and 42.

11) United States trademark registration BUREAU VERITAS 1828 and device No. 3448092 filed on June 20,

2007, registered on June 17, 2008 and renewed in 2018 in classes 42 and 45.

12) United States trademark registration BUREAU VERITAS 1828 and device No. 3425827 filed on July 24,

2007, registered on May 13, 2008, and renewed in 2018 in class 37.

13) United States trademark registration BUREAU VERITAS 1828 and device No. 3425828 filed on July 24,

2007, registered on May 13, 2008, and renewed in 2018 in class 38.

14) United States trademark registration BUREAU VERITAS 1828 and device No. 3425829 filed on July 24,

2007, registered on May 13, 2008, and renewed in 2018 in class 4.

15) Canadian trademark registration BUREAU VERITAS 1828 and device No.1351732 filed on June 14,

2007, registered on March 11, 2009 in class 42.

16) Canadian trademark registration BUREAU VERITAS No.1585427 filed on July 10, 2012, registered on

June 26, 2013 in classes 35 and 42.

17) Canadian trademark registration BUREAU VERITAS No.1097707 filed on March 27, 2001, registered on

April 21, 2004 and renewed on April 21, 2019 in classes 38 and 42.

The Complainant is also the owner of, among others, the following domain names:

<bureauveritas.com> created on June 20, 1996,
<bureauveritas.eu> created on April 4, 2006,
<bureauveritas.net> created on October 20, 2006,
<bureauveritas.org> created on July 30, 2008,

<bureauveritas.fr> created on February 13, 2001.

The disputed domain name <bureauveristas.com> was registered on January 3, 2022.

The Complainant’s trademark and domain name registrations predate the registration of the disputed domain name.

The website under the disputed domain name is operated as a parked domain name.

5. Parties’ Contentions
A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s well- known registered trademarks. Also, the Complainant argues that the Respondent has no rights or legitimate interests with respect to the disputed domain name and finally that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

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

page 4

6. Discussion and Findings

In order for the Complainant to obtain the transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel 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 in respect of 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

The Complainant has proven and established the rights in the BUREAU VERITAS trademark.

The disputed domain name constitutes a misspelling version of the Complainant’s prior rights, it is composed
of the distinctive element “bureau veritas”, to which an additional letter “s” has been added within the term
“veritas” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of the letter “s” and of “.com” to
“bureau veritas”, clearly does not avoid a finding of confusing similarity with the Complainant’s rights.

This Panel finds that the disputed domain name is similar to the trademark due to the fact that the disputed domain incorporates the trademark Bureau Veritas with the exception of the misspelling with the “s”. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states in section 1.9 “A domain name which consist of a common, obvious or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purposes of the first element.

The addition of the TLD suffix “.com” does not avoid a finding of confusing similarity. It is well established that the addition of a gTLD to the end of a trademark does not contravene the identity or confusing similarity between a disputed domain name and a trademark, as gTLD are required element of every domain name. See F. Hoffmann-La Roche AG v Macalve-edominios S.A, WIPO Case No. D2006-0451.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection

with a bona fide offering of goods or services. In addition, the Respondent is not a does not seems to be commonly known by the name “Bureau Veritas” or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered in bad faith and has been used in bad faith.

The Complainant gives several bases for his contention that the disputed domain name was registered and has been used in bad faith.

page 5

Particularly relevant are the Complainant’s unchallenged assertions (which the Panel accepts) that:

- the Respondent could not be unaware of the existence of the Complainant’s well-known trademarks when
registering the disputed domain name in the present case the misspelling also is considered bad faith as
other panelists have the same opinion: see, ESPN, Inc v XC2, WIPO Case No. D2005-0444 “The practice of

typo squatting of itself is evidence of the bad faith registration of a domain name.”

- the Respondent is using the disputed domain name as parked domain;

- the Respondent concealed its identity, and finally, the fact that;

- if the Respondent did have legitimate purposes in registering and using the disputed domain name, it chose
not to respond to the allegations made by the Complainant in this Proceeding.

For all the foregoing reasons the Panel finds that the disputed domain name has been registered and used in bad faith.

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 <bureauveristas.com> be transferred to the Complainant.

/Ada L. Redondo Aguilera/
Ada L. Redondo Aguilera
Sole Panelist
Date: March 8, 2022