Complainant argues that given the distinctiveness and the widely known of its trademark and domain name containing its trademarks “BOLLORE TRANSPORT & LOGISTICS”, Respondent could not ignore Complainant’s prior rights when registering the disputed domain name.
Indeed, panels have confirmed the Complainant’s trademark to be well-known in previous cases, see CAC Case No. 102985, BOLLORE SE (“The disputed domain name was registered with an intention to attract customers of another well-known domain name/registered trademark holder. Therefore, there cannot be found any legitimate interest of the Respondent.”).
Therefore, Respondent could not ignore Complainant’s rights at the time of registration. Previous Panels concluded that such domain name registration when the Complainant is well-known is a typical case of bad faith registration (see JCDECAUX SA v. Charles Russam, Case No. 102392 (CAC March 13, 2019). According to most panels, the complainant is required to make out a prima facie case that the domain name has been registered and is being used in bad faith. Once such prima facie case is made, the respondent carries the burden of demonstrating than this is not the case.
To the Panel view, elements and information provided for by the Complainant at that stage, are sufficient to establish such prima facie case, notably because of the following:
- Given the reputation of the Complainant, the Respondent could hardly ignore the Complainant's existence and activities when registering the disputed domain name.”).
Complainant further asserts that the disputed domain name is the subject of a passive holding, which demonstrates the use in bad faith of Respondent.
Previous panels have found that such behaviour was evidence that Respondent was showing disputed domain name registration and use, in bad faith (see Crédit Foncier de France v. WhoisGuard Protected, WhoisGuard, Inc. / Uyi Edionwe, WIPO Case No. D2019-3037 (January 22, 2020), “Respondent is using the disputed domain name, which it registered long after Complainant’s trademark CRÉDIT FONCIER had become famous in France, to resolve to an inactive web site. Moreover, it is impossible to conceive of any legitimate use to which the disputed domain name could be put that would not constitute a bad faith use of Complainant’s well-known trademark. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Accordingly, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.”).
Following the above, the Panel considers that Respondent has registered the disputed domain name with prior knowledge of Complainant’s trademark.
The lack of use of the domain name by Respondent cannot be considered as good faith use either. Passive holding can amount to bad faith use as there is no circumstances under which the use of the disputed domain name could be legitimate, given Complainant’s reputation.
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).
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