Decision for dispute CAC-UDRP-102656

The Panel is not aware of any other legal proceedings related to the disputed domain name.

The Complainant uses the domain name <BOLLORE.COM> as its official website, and is also the owner of the international trademark "BOLLORÉ and device" (registration no. 704697, in classes 16, 17, 34, 35, 36, 38 and 39, priority 11 December 1998, based on French national registration no. 98739779).

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a company with its legal seat in Paris, France. It was founded in 1822 and is one of the world´s largest 500 companies. The Complainant operates in three lines of business: transportation and logistics, communication and media, and electricity storage and solutions. The Complainant uses its trademarks "BOLLORE" and "BOLLORE and device" in connection to these businesses, and uses the domain <BOLLORE.COM> as its main website.

The notoriety of the trademark BOLLORE® in the following cases:

- CAC Case No. 102015, BOLLORE SA v. mich john (“the Panel takes note, again, of the distinctiveness of the Complainant's brand and the intention that must be presumed to exist in registering a domain name bearing such confusing similarity with well-known brand name.”);

- CAC Case No. 101696, BOLLORE v. Hubert Dadoun (“As the Complainant is also one of the largest 500 companies in the world, the Panel accepts the Complainant's contention that their trademark has a strong reputation and is in fact to be considered well-known.”)".

The Respondent registered the disputed domain name <BOLLORE-UK.COM> on 21 August 2019. The disputed domain name is not currently used for an active website, and it appears that it has not been used since it was registered.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

RIGHTS IN AN IDENTICAL OR CONFUSINGLY SIMILAR TRADEMARK

The Complainant is the holder of different international and national trademark registrations including the trademark "BOLLORÉ". The most important trademark registration relating to the present dispute is the international "BOLLORÉ and device" trademark, registration no. 704697.

The disputed domain name <BOLLORE-UK.COM> includes the Complainant´s above referenced trademark in its entirety, and adds the term "UK" and the ".COM" suffix. The mere addition of a hyphen and the geographical term "UK" does not prevent the finding of confusing similarity. The Panel disregards the ".COM" suffix for the purpose of this comparison, as this is common practice. The Panel also finds that the Complainant's trademark "BOLLORÉ" is easily recognizable within the disputed domain name.

Based on the above, the Panel decides that the disputed domain name <BOLLORE-UK.COM> is confusingly similar to the Complainant's "BOLLORÉ" trademark.


NO RIGHTS OR LEGITIMATE INTERESTS AND BAD FAITH

No administratively response has been filed by the Respondent and in accordance with the UDRP Rule 5(f) the Panel must then decide the dispute based upon the complaint, in the absence of exceptional circumstances. It is up to the Panel to decide whether the Complainant has made out a prima facie case, meaning that the Panel is not bound to transfer the disputed domain name to the Complainant solely based on the lack of response by the Respondent. On the other hand the Panel takes into consideration that the Respondent did have time to file a respond, but chose not to do so.

The Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant also contends that the Respondent is not in any other way related to the business of the Complainant.

Considering that the disputed domain name was registered on the 21 August 2019 and that the complaint was filed on 28 August 2019, the Respondent had only been the proprietor of the disputed domain for approximately one week before the Complainant filed the complaint. The Panel is not convinced that the one week of "non-use" is in itself enough for the Complainant to have established a prima facie case of lack of rights or legitimate interests and/or bad faith of the Respondent.

The Panel will hereafter examine whether the Respondent has provided any other evidence of the lack of rights and legitimate interests and bad faith of the Respondent which supports the contentions of the Complainant.

The Panel has conducted its own investigation at the time of the Decision and the Respondent is still not actively using the disputed domain name.

The question of a short period of "non-use" of the disputed domain name by a Respondent has been discussed in UDRP decision no. 101453, <MIRAPEX.CLUB>. As the disputed domain name could have a generic meaning in Latin, the Panel concluded that the Complainant had not to the satisfaction of the Panel shown that the Respondent had no legitimate rights or interest in the disputed domain name. The question was also discussed in UDRP decision no. 101629 regarding the disputed domain name <BOURSORAMA.COM>. The Panel here decided that four days of "non-use" of the disputed domain name, which was identical to the Complainant's a trademark and had no dictionary meaning in any other language, was considered to be enough for the Panel to conclude, that the Complainant had shown that the Respondent had no rights or legitimate interests in the disputed domain name.

The Panel has conducted its own investigation relating to the possible other meanings of the word "BOLLORE". It has come to the attention of the Panel that "bollore" can mean "boil", "boiling point", "scorching heat" and "sweltering heat" in Italian. If the Respondent was interested in using the disputed domain name in reference to this meaning, and not as a reference to the Complainant, it is possible that the Respondent does have legitimate interests in the disputed domain name.

On the other hand, the Complainant has existed and used the "BOLLORÉ" mark since 1822. The Panel conducted its own investigation by searching for "BOLLORE" on Google, and the result was a long list of domains, referring only to the company of the Complainant. As the Complainant contends, it is common practice that passive holding of a domain name can be considered bad faith if the Complainant’s mark has a strong reputation and the Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name (see Intel Corporation v. The Pentium Group, WIPO Case No. D 2009-0273 and Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D 2000-0003). As the Complainant is also one of the largest 500 companies in the world, the Panel accepts the Complainant's contention that their trademark has a strong reputation and is in fact to be considered well-known.

In addition to the above, it is also noted, that the Respondent decided to register a ".COM" domain, and not e.g. a ".CLUB" domain. A ".COM" domain indicates that the Respondent is intending to use the domain for commercial activities, as ".COM" is used as an abbreviation of the word "commercial".

There are no indications that the Respondent has made any demonstrable preparation to use the disputed domain name in connection to a bona fide offering of goods, that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making a legitimate or fair use of the disputed domain name, without any intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Considering all the above, the Panel concludes that the Complainant has established a prima facie case, showing that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has registered the disputed domain name in bad faith. Therefore the Panel decides to transfer the disputed domain name to the Complainant.