Demathieu Bard Construction v Hong Liam, Hong Liam

WIPO Case No. D2025-0137

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Demathieu Bard Construction v. Hong Liam, Hong Liam

Case No. D2025-0137

1. The Parties

The Complainant is Demathieu Bard Construction, France, represented by Cabinet Boettcher, France.

The Respondent is Hong Liam, Hong Liam, United States of America.

2. The Domain Name and Registrar

The disputed domain name <demathieu-bard.net> is registered with Wix.com Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2025. On January 15, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 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 (DT)) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 20, 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 amendment to the Complaint on January 22, 2025.

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 23, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 12, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 13, 2025.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 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

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4. Factual Background

The Complainant is a French company, part of a group founded in 1861, which is active in road and rail infrastructure, industrial civil engineering (including large scale urban development projects), and the building industry and real estate sectors. With consolidated revenue of 1.7 billion euros in 2024, the Complainant group is one of the main French companies in the construction sector. Outside France, the Complainant has completed projects in Luxembourg, Germany, and North America.

The trademark DEMATHIEU BARD comes from the name of the founders of the construction company

Pierre and Julien Demathieu.

The Complainant is the owner of the following trademarks, among others:

− French trademark DEMATHIEU BARD, reg. No. 4 259 306 filed on March 23, 2016, in classes 19, 36, 37

and 42, especially for construction material and services as well as architecture services;

− International trademark DEMATHIEU BARD designating European Union, Switzerland, Algeria, Egypt,

Morocco, Monaco and Russian Federation, reg. No. 1327027, registered on September 14, 2016, in classes

19, 36, 37 and 42, especially for construction material and services as well as architecture services.

The domain name <demathieu-bard.fr>, owned by the Complainant’s group, resolves to its official website.

The disputed domain name <demathieu-bard.net> was registered on December 17, 2024. The disputed domain name resolved to a Registrar parking page and is inactive.

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.

According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.

First, the Complainant submits that the disputed domain name is identical or confusingly similar to the trademark registrations of the Complainant.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the disputed domain name.

Third, the Complainant submits that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to each disputed domain name:

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

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(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.

The burden of proof of each element is borne by the Complainant. The Respondent’s default does not by itself mean that the Complainant is deemed to have prevailed. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), WIPO Overview 3.0, section 4.3.

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 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 entirety of the mark is reproduced within the disputed domain name, with a hyphen separating the words
“demathieu” and “bard”. Accordingly, the disputed domain name is confusingly similar to the mark for the
purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here a hyphen (“-“), may bear on assessment of the second and third elements, the Panel finds the addition of such term 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.

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.

The Panel considers that the record of this case reflects that:

- before any notice to the Respondent of the dispute, the Respondent did not use, nor make demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and

WIPO Overview 3.0, section 2.2;

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- the Respondent’s name is “Hong Liam”; the Respondent (as an individual, business, or other organization)
has not been commonly known by the disputed domain name. Paragraph 4(c)(ii) of the Policy, and

WIPO Overview 3.0, section 2.3;

- the Respondent is not using the disputed domain name; therefore the Respondent is not making a
legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to
misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 4(c)(iii) of the

Policy, and WIPO Overview 3.0, section 2.4;

- the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the

disputed domain name;

- the disputed domain name carries a risk of implied affiliation, WIPO Overview 3.0, section 2.5.1;

- the Respondent is in default.

Based on the available record, 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 Complainant, a French company and part of a group founded in the year 1861, has been using the

mark for ages. The trademarked term DEMATHIEU BARD comes from the name of the French founders of
the company Pierre and Julien Demathieu;

- the Respondent registered the disputed domain name on December 17, 2024;

- the disputed domain name resolved to an error page and is inactive;

- the Respondent is in default.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) 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 and 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.

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 <demathieu-bard.net> be transferred to the Complainant.

/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: March 3, 2025