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. 104344
Time of Filing 2022-02-10 10:06:36
Disputed domain name TRANSITEXPORTBOLLORE.COM
Case Administrator
Name Denisa Rihova
Complainant
Organization BOLLORE SE
Authorized Representative
Organization NAMESHIELD S.A.S.
Respondent
Organization Marvocabe Enterprise
Other Legal Proceedings
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.
Identification of rights
According to the evidence submitted by Complainant, Complainant is the owner of the international trademark nr. 704697 BOLLORE registered on 11 December 1998.
Factual Background
According to the evidence submitted by Complainant, Complainant was founded in 1822. Thanks to a diversification strategy based on innovation and international development, it now holds strong positions in all its activities around three business lines, Transportation and Logistics, Communication and Media, Electricity Storage and solutions. Complainant is one of the 500 largest companies in the world. Listed on the Paris Stock Exchange, the majority interest of the Group's stock is always controlled by the Bolloré family.

The disputed domain name <transitexportbollore.com> was registered on 1 February 2022 and is held by Respondent.
According to the information and evidence provided by Complainant the disputed domain name resolves to a template of a website offering transport services.

The trademark registration of Complainant has been issued prior to the registration of the disputed domain name.

According to Complainant the disputed domain name is confusingly similar to Complainant's trademark. Indeed, the disputed domain name contains Complainant’s trademark in its entirety. The addition of the terms “Transit Export” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark BOLLORE.

Complainant submits that Respondent does not have any rights or legitimate interest in the disputed domain name. Complainant asserts that Respondent is not known as the disputed domain name. Respondent is not affiliated with nor authorized by BOLLORE in any way. Complainant does not carry out any activity for, nor has any business with Respondent. Moreover, neither license nor authorization has been granted to Respondent to make any use of Complainant’s trademark. Furthermore, the disputed domain name points to a template of website offering transport services, which competes with the services offered by Complainant via its subsidiary Bollore Transport and Logistics.
According to Complainant the disputed domain name was registered in order to create a likelihood of confusion with Complainant and its trademarks. By profiting of the notoriety of Complainant’s trademarks, Respondent uses the disputed domain name to offer services in direct competition with Complainant. Using a confusingly similar domain name that resolves to a competing webpage is not a bona fide offering of goods or services.

Complainant contends that the disputed domain name is registered and is being used in bad faith. Given the distinctiveness of Complainant's trademark and reputation, according to Complainant it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant's rights in the trademark. Furthermore, Complainant argues that Respondent uses the disputed domain name to divert Internet users searching for Complainant’s website to Respondent’s competing website, and to create a likelihood of confusion with Complainant’s mark for Respondent’s commercial gain by offering competing services. Past panels have established that it is an evidence of bad faith.

 
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
Rights
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 Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
Complainant has, to the satisfaction of the Panel, shown 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
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
In the opinion of the Panel the disputed domain name is confusingly similar to Complainant's trademark. Many UDRP decisions have found that a disputed domain name is identical or confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark or the principal part thereof in its entirety. Complainant has established that it is the owner of a trademark registration for BOLLORE. The disputed domain name incorporates the entirety of the well-known BOLLORE trademark as its distinctive element. The addition of the descriptive terms “transit” and “export” in the disputed domain name is insufficient to avoid a finding of confusing similarity as the BOLLORE trademark remains the dominant component of the disputed domain name. The top-level domain “com” in the disputed domain name may be disregarded. The Panel notes that Complainant’s registration of its trademark predates the creation date of the disputed domain name.

In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interest in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use its trademark or to register the disputed domain name incorporating its mark. Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights. Complainant has no relationship with Respondent. Respondent did not submit any response.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that the disputed domain name has been registered and is being used in bad faith. Respondent knew or should have known that the disputed domain name included Complainant’s well-known BOLLORE mark. The Panel further notes that the disputed domain name resolves to a template of website offering transport services, which competes with the services offered by Complainant via its subsidiary Bollore Transport and Logistics. The disputed domain name incorporates Complainant’s trademark in its entirety which indicates that Respondent registered the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location, which constitutes registration and use in bad faith.


Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
TRANSITEXPORTBOLLORE.COM Transferred to Complainant
Panellists
Name Dinant T.L. Oosterbaan
Date of Panel Decision 2022-03-11
Publication of the Decision
Publish the Decision