According to paragraph 4(a) of the Policy the Complainant is required to prove each of the following three elements to obtain the transfer of the 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;
(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 disputed domain name <colasaccounting.com> combines three elements: (1) the wording "colas" (2) the term "accounting" and (3) the top-level domain name ".com". The relevant comparison to be made is with the portion of the domain name <colasaccouting>. Actually, it is well established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose (see, between many others, Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006 - 0561). Furthermore, the term "accounting" does not distinguish the disputed domain name from Complainant’s "COLAS" mark since it is a generic and descriptive term insofar as accounting is a function in which all companies engage (see, between many others, The Swatch Group AG, Swatch AG v. John Wison, WIPO Case No. D2019-3182). In general, when a distinctive mark is combined with less distinctive terms, the combination will typically be found to be confusingly similar to the distinctive mark. Therefore, in the case at hand, the combination does not prevent the likelihood of confusion between the disputed domain name and the Complainant's trademark (see, for instance, Arcelormittal S.A. v. Name Francois Dumontier, CAC Case. No. 100855). Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark "COLAS". The Complainant therefore succeeds on the first element of the Policy.
The Complainant has long standing rights in the mark "COLAS". The Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed domain name as it is not commonly known under the disputed domain name and as the Respondent was never authorized to use the domain name by the Complainant. The Respondent, in the absence of any response, has not shown any facts or element to justify prior rights or legitimate interests in the disputed domain name. The Complainant has not licenced or otherwise permitted the Respondent to use the Complainant's marks in the disputed domain name. On the basis of the evidences submitted and in the absence of a response the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant therefore succeeds on the second element of the Policy.
The Complainant’s trademark “COLAS" is distinctive and well-known in many countries. It is uncontroverted that Complainant’s worldwide use and registration of the "COLAS" mark largely precede the registration date of the disputed domain name. The fact that the Respondent has registered a domain name that is almost identical to it clearly indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. This is a clear evidence of registration of the domain name in bad faith. The Complainant has demonstrated that the disputed domain name is inactive since it is not connected to any accessible website. The fact that the Respondent effectively passively holds the disputed domain name cannot prevent a finding of use in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel wishes to stress that the disputed domain name holds no Internet content; it means that customers searching for information on the Complainant and the Complainant’s service may come to the conclusion that there are problems at the Complainant’s site, that the Complainant’s web information and services are no longer in active use. Such ʻnon-use’ by the Respondent can have the same negative result on the Complainant as active use of a disputed domain name, and amounts to bad faith use” (FIL Limited v. George Dyle, WIPO Case No. D2014-1418). Furthermore, the Complainant has provided evidence that the Respondent has set up “MX-records” for the disputed domain name. This entails that the Respondent can send e-mails through the e-mail address “@colasaccounting.com”. The Respondent could therefore use the disputed domain name to send fraudulent e-mails such as messages containing spam and/or phishing attempts that Internet users could well assume were sent by the Complainant (see Conféderation Nationale du Crédit Mutuel, Crédit Industriel et Commercial v. Khodor Dimassi, WIPO Case No. D2016-1980 and Paris Saint-Germain Football v. MHP Private, WIPO Case No. D2019-0036). Albeit that there are no concrete examples of such use, it seems inconceivable that the Respondent will be able to make any good faith use of the disputed domain name as part of an e-mail address. The Panel finds that the mere conduct of making preparation for sending emails which are very likely to confuse the recipient of such e-mails as to their origin, is without justification and is inconsistent with the Complainant’s exclusive rights in the "COLAS" trademark (see Accenture Global Services Limited v. Registration Private, Domains by Proxy, LLC / Richa Sharma, Name Redacted, WIPO Case No. D2019-2453). As a result of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant therefore succeeds also on the third element of the Policy.
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