On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 102462
Time of Filing 2019-04-26 10:04:46
Disputed domain name BOLLORELOGISTICS.CO
Case Administrator
Name Iveta Špiclová
Complainant
Organization BOLLORE
Authorized Representative
Organization NAMESHIELD S.A.S.
Respondent
Name Nandita Sharma
Other Legal Proceedings
There are no other legal proceedings the Panel is aware of which are pending or decided and which relate to the disputed domain name.
Identification of rights
The Complainant is the owner - among others - of International registration no. 1025892 "BOLLORE LOGISTICS", granted on July 31, 2009, as well as of the domain name <bollorelogistics.com> registered on January 20, 2009.
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is one of the 500 largest companies in the world, active in the fields of transportation and logistics, communication and media, electricity storage and solutions. Such company has a presence on the five continents, with 609 agencies in 107 countries and more than 20,600 employees.

The Complainant owns the trademark "BOLLORE LOGISTICS", registered worldwide, and is widely known by consumers with the business name "BOLLORE LOGISTICS".

The Respondent has registered the disputed domain name on April 21, 2019, which, as of this day, is being used in connection with a parking page containing commercial links.
 
No administratively compliant Response has been filed.
Rights
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).
No rights or legitimate interests
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).
Bad faith
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).
Procedural Factors
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.
Principal Reasons for the Decision
1. IDENTICAL OR CONFUSING SIMILARITY

The Panel finds that the disputed domain name is identical to the trademark “BOLLORE LOGISTICS”, since it exactly reproduces such distinctive sign, while the top level domain ".co" can be disregarded in this assessment, as it is understood descriptively, only.

It is a well-established principle that when a domain name wholly incorporates the Complainant's registered mark, the first requirement under the UDRP shall be considered accomplished (see Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. 2005-1249, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and CAC Case No. 101501, BOLLORE SA v. Delonte Wood.


2. NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

According to the information provided by the Complainant, the Respondent is not affiliated nor authorized by the Complainant in any way. Likewise, the Complainant neither licensed nor authorized the Respondent to make any use of its trademark “BOLLORE LOGISTICS”, or to apply for registration of the disputed domain name on behalf of the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent.

It is undeniable that the Complainant is only required to make out a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.

Given all the above, the Panel accepts the contentions of the Complainant that the Respondent has no such rights or legitimate interests in the disputed domain name.


3. THE DISPUTED DOMAIN NAME HAS BEEN REGISTERED AND IS BEING USED IN BAD FAITH

The Panel finds that the Complainant successfully submitted prima facie evidence that the Respondent has made no use of, or demonstrable preparations to use, neither of the disputed domain name in connection with a bona fide offering of goods or services, nor is making a legitimate non-commercial or fair use of the disputed domain name.

As a matter of fact, the existence of pay per click advertising on the website is an indication of commercial gain. The Respondent has taken no positive steps, to the knowledge of the Panel, to displace the possible likelihood of confusion through the use of a name corresponding exactly to a trademark held by and existing website operated by the Complainant (see, among others, WIPO Case no. D2013-1409).

As indicated in CAC Case No. 101501, BOLLORE SA v. Delonte Wood, the Complainant´s "BOLLORE" and "BOLLORE LOGISTICS" trademarks are deemed well-known and highly distinctive. In this regard, it is hard to believe that the Respondent was not aware of the registration and the use of the Complainant´s trademarks before the registration of the disputed domain name.

In the absence of a response from the Respondent and given the reputation of the Complainant and its trademarks, the Panel infers that the Respondent had the Complainant's trademarks "BOLLORE LOGISTICS" in mind when registering the disputed domain name. Consequently, the Panel believes that the same was registered and is being used in bad faith.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
BOLLORELOGISTICS.CO Transferred to Complainant
Panellists
Name Tommaso La Scala
Date of Panel Decision 2019-06-10
Publication of the Decision
Publish the Decision