WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bolloré v. H. Tobé, Stichting Nederlands Centrum voor Handelsbevordering

Case No. D2017-1155

1. The Parties

Complainant is Bolloré of Ergue Gaberic, France represented by Nameshield, France.

Respondent is H. Tobé, Stichting Nederlands Centrum voor Handelsbevordering (“Respondent organization”) of The Hague, the Netherlands, represented by Charlotte’s Law & Fine Prints, the Netherlands.

2. The Domain Names and Registrar

The disputed domain names <bluecity.solutions> and <bluesolutions.city> are registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2017. On June 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain names is Dutch. On June 19, 2017, the Center sent a language of proceeding communication in both Dutch and English to the Parties. On the same day, Complainant submitted a request for English to be the language of proceeding. On June 23, 2017, Respondent sent an email to the Center and Complainant stating that he had no objection regarding the language of proceeding to be English.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2017. On July 17, 2017, Respondent requested an extension to submit a Response. The Center extended the due date for Response until July 24, 2017. The Response was filed with the Center on July 24, 2017.

The Center appointed Stephanie G. Hartung, Christian André Le Stanc and Wolter Wefers Bettink as panelists in this matter on August 7, 2017. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a company organized under the laws of France that belongs to the Bolloré Group of companies which, in turn, is active in the field of transportation and logistics, communication and media, as well as electricity storage and solutions. Among the Bolloré Group’s subsidiaries are the companies “Blue City” (offering a point-to-point electric car sharing service) as well as “Blue Solutions” (being the umbrella company for the Bolloré Group’s electricity storage activities).

Complainant has provided evidence that the Bolloré Group is the registered owner of the following trademarks relating to the terms “blue city” and “blue solutions”, four of which predate the registration of the disputed domain names:

- Word mark BLUE CITY, Institut National de la Propriété Industrielle (“INPI”), Registration No. 3838700, Registration Date: June 14, 2011, Status: Active;

- Word mark BLUECITY, Intellectual Property Office (“UK”), Registration No. UK00003170711, Registration Date: December 16, 2016; Status: Active;

- Word-/device mark BLUE SOLUTIONS, World Intellectual Property Organization (WIPO), Registration No. 1200153, Registration Date: October 11, 2013, Status: Active;

- Word mark BLUE SOLUTIONS; WIPO, Registration No. 1201375, Registration Date: October 11, 2013, Status: Active;

- Word mark BLUE SOLUTIONS, INPI, Registration No. 3997702, Registration Date: April 12, 2013; Status: Active.

Moreover, Complainant has submitted screenshots taken from its subsidiaries’ websites at

“www.blue-city.co.uk” as well as “www.blue-solutions.com” promoting the subsidiaries’ businesses and services in the field of electric car sharing as well as electricity storage.

Respondent organization is a foundation established under the laws of the Netherlands in 1946 for whom Respondent is empowered to act. Also, Respondent has provided evidence of a further Dutch foundation named “Blue City Solutions” established in June 2015, to which Respondent is a board member.

The disputed domain names <bluecity.solutions> as well as <bluesolutions.city> were registered on November 10 and 26, 2015, and both redirect to the same website at “www.bluecity.solutions” promoting the business of the Blue City Solutions Foundation as “being a global partnership of private entities all over the world working together to achieve zero-emission cities” for which it attempts to bring together companies in a multitude of economic sectors, including traffic management, energy, cyber-security, electric mobility, agriculture, finance, waste, water, transport and government.

On February 14, 2017, Complainant sent a cease-and-desist letter to Respondent under the postal mail address as well as the email address provided for in the disputed domain names’ WhoIs information. On February 28, 2017, Complainant received a confirmation apparently issued by a Dutch mail service PostNL claiming that the cease-and-desist letter could not be delivered due to an “unknown or incomplete” address.

Complainant requests that the disputed domain names be transferred to Complainant, while Respondent objects to such remedy.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Bolloré Group of companies is one of the 500 largest companies in the world which meanwhile has become a producer of complete electrical components for capacitors holding over a third of the global market. The Bolloré Group, together with its subsidiary Blue Solutions, is particularly using its expertise to develop solutions for the storage and smart management of electricity, including batteries in mobile electric vehicles and stationary applications (electricity storage for individuals, companies, local authorities, etc.). As for the Bolloré Group’s subsidiary Blue City, Complainant points to the fact that using the Blue Point London network of over 1,400 charging points, the Blue City car sharing network will gradually be developed in London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) from June 2016 and, on completion, should link all the boroughs of greater London, United Kingdom.

Complainant submits that the disputed domain names are confusingly similar to Complainant’s trademarks BLUE CITY as well as BLUE SOLUTIONS as each of the disputed domain names incorporates the one or the other of Complainant’s trademarks and the addition of the Top-Level Domain (“TLD”) “.city” or “.solutions”, respectively, does not change the overall impression of the disputed domain names being connected to Complainant’s trademarks. On the contrary, Complainant states, given the existence of Complainant’s trademarks BLUE CITY and BLUE SOLUTIONS, the extensions “.city” and “.solutions” even increase the likelihood of confusion existing.

Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain names since (1) Respondent is not affiliated to nor authorized by Complainant in any way to use the trademarks BLUE CITY or BLUE SOLUTIONS and Complainant does not carry out any activity for, nor has any business with Respondent, (2) the website at “www.bluecity.solutions” (to which both disputed domain names redirect) purposes services in the same sector of activity as does the Bolloré Group, e.g., batteries, manufacture and sale of energy storage shelters, smart grid etc., (3) Respondent deliberately creates a likelihood of confusion with Complainant in order to unduly profit from Complainant’s BLUE CITY and BLUE SOLUTIONS trademarks’ reputation and (4) Respondent did not respond to the cease-and-desist letter sent to him electronically and by postal mail on February 14, 2017, indicating that Respondent is not making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain.

Finally, Complainant argues that Respondent has registered and is using the disputed domain names in bad faith since (1) the disputed domain names are confusingly similar to Complainant’s trademarks BLUE CITY and BLUE SOLUTIONS, (2) the website at “www.bluecity.solutions” purposes services in the same sector of activity as the Bolloré Group, (3) Respondent registered the disputed domain names with full knowledge of Complainant and his BLUE CITY and BLUE SOLUTIONS trademarks, (4) Respondent registered and is using the disputed domain names to take advantage of the confusing similarity between the disputed domain names and Complainant’s trademarks in order to profit from the goodwill associated with the trademarks in bad faith, (5) Respondent did not respond to the cease-and-desist letter sent to them electronically and by postal mail, but that the cease and desist letter sent by postal mail returned back with the mention “address unknown or incomplete” demonstrating that the address in the WhoIs was intentionally spoofed, and (6) the website under the disputed domain names does not mention Respondent organization’s name whatsoever.

B. Respondent

Respondent points to the fact that Respondent organization and the Blue City Solutions Foundation are located at the same address and that the disputed domain names were registered by Respondent on behalf of said Blue City Solutions Foundation which did not have the financial resources at the time to register them itself. Blue City Solutions is just a network of private entities not making or selling any products nor facilitating any services to third parties. Blue City Solutions works in the network and conference industry and, therefore, is not active in the same sector of activity as Complainant and the Bolloré Group of companies.

Respondent claims that the cease-and-desist letter of February 14, 2017, never reached them, because the used post mail service PostNL never delivered the letter, apparently because they thought that the address was unknown or incomplete, the contrary of which is proven by the Chamber of Commerce registration for Respondent organization as well as Blue City Solutions Foundation. Had the Respondent received the letter, he would have reacted within reasonable time to settle the dispute.

Respondent contends that Complainant’s trademarks are not confusingly similar to the disputed domain names since (1) BLUE CITY and BLUE SOLUTIONS are weak trademarks as they are composed of generic words and there are many other trademarks within the same sector of activity relating to the terms “blue”, “blue city” or “blue solutions”, (2) Respondent uses the disputed domain name <bluecity.solutions> simply because it is the full name of the foundation and (3) Blue City Solutions is active in the network and conference market and, therefore, not in the same sector as Complainant and the Bolloré Group of companies, which is why there will be no confusion between the disputed domain names and Complainant’s trademarks.

Respondent submits to have a legitimate interest to use the disputed domain names because (1) the domain name <bluecity.solutions> is exactly the name of the Blue City Solutions Foundation used since 2015 onwards, (2) the disputed domain names are used by a nonprofit foundation that just brings companies and government together to achieve zero-emission, therefore not aiming for any commercial gain, (3) Complainant’s trademarks are used for goods and services in a different sector of activity than the one in which Respondent’s foundation is active, thus the disputed domain names are used in connection with a bona fide offering of services, (4) Complainant and Respondent are not competitors and there are several businesses with more or less the same name as Complainant’s trademarks, so the disputed domain names were not registered by Respondent primarily to disrupt Complainant’s business and (5) Respondent never received the cease-and-desist letter because the post mail service PostNL never delivered the letter and sent it back to Complainant depriving Respondent of the possibility to settle this matter between the parties.

Finally, Respondent argues that he did not register and is not using the disputed domain names in bad faith since (1) they never received the cease-and-desist letter, (2) the names and addresses in the WhoIs for the disputed domain names match the Chamber of Commerce registration for Respondent organization as well as the Blue City Solutions foundation and are therefore correct, not spoofed, (3) Respondent simply registered the disputed domain names because they correspond to the trade name of the Blue City Solutions Foundation and not to take advantage of Complainant’s trademarks and/or the goodwill associated therewith, (4) the disputed domain names were neither registered or acquired primarily for the purpose of selling, renting or otherwise transferring them to the Complainant nor were they registered in order to prevent Complainant from reflecting its trademarks in a corresponding domain name, (4) Complainant and Respondent are not competitors and the disputed domain names were not registered by Respondent primarily to disrupt Complainant’s business and (5) the disputed domain names were not registered by Respondent in an intentional attempt to attract for commercial gain Internet users to Respondent’s website or other online location.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) That the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain names <bluecity.solutions> as well as <bluesolutions.city> are confusingly similar to the BLUE CITY and BLUE SOLUTIONS trademarks in which Complainant has rights.

The disputed domain names incorporate the Complainant’s BLUE CITY and BLUE SOLUTIONS trademarks in their entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11), that the applicable generic Top-Level Domain (“gTLD”) in a domain name is generally viewed as a standard registration requirement and as such is disregarded under the first element confusingly similarity test, though the meaning of such gTLD may be relevant to panel assessment of the second and third elements of the UDRP. Accordingly, the existence of the gTLDs “.city” as well as “.solutions” does not dispel the confusing similarity arising from the incorporation of Complainant’s BLUE CITY and BLUE SOLUTIONS trademarks in the disputed domain names, especially given the fact that Complainant owns trademark rights in both designations BLUE CITY as well as BLUE SOLUTIONS, thus each of the gTLDs “.city” and “.solutions” is reflected in one of Complainant’s trademarks.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel, furthermore, is asked to assess whether or not Respondent has rights or legitimate interests with respect to the disputed domain names. It is common practice among UDRP panels that where a complainant makes out a prima facie case that respondent lacks rights or legitimate interests, the burden of production on the second element of the UDRP shifts to respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If respondent fails to come forward with such relevant evidence, complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).

It is undisputed between the parties that Respondent is not affiliated with Complainant nor authorized by it in any way to use the BLUE CITY and BLUE SOLUTIONS trademarks; besides, Complainant does not carry out any activity for, nor has any business with Respondent.

Moreover, Complainant argues that the website at “www.bluecity.solutions” proposes services in the same sector of activity as Complainant in the Bolloré Group, e.g., batteries, manufacture and sale of energy storage shelters, smart grid, etc. While Complainant’s assertions in that respect remain unproved, due to the nature of the Blue City Solutions Foundation activities as evidenced by Respondent’s website (e.g., “identifying, financing and deploying the best performing solutions for a global transition to zero-emission cities” and Respondent being “a global partnership of private entities working together to achieve zero-emission cities by 2050”,) there may be at least an indirect connection to Complainant’s competitors in these areas which all relate to energy. Respondent, in turn, merely states that they do not make or sell any products nor do they facilitate any services to third parties, but rather work in the network and conference industry. Such assertions obviously do not coincide with Respondent’s website and Respondent has not provided any evidence to contrast the website content. Therefore, the Panel concludes that Complainant has made a prima facie case that Respondent is not making a bona fide offering of goods or services in connection with the disputed domain names (paragraph 4(c)(i) of the Policy) and that Respondent has not met the burden of production of evidence proving the contrary.

Also, Complainant, by pointing to Respondent’s website under the disputed domain names, argues that Respondents are not making a legitimate noncommercial or fair use of the disputed domain names without intent to commercial gain.

Respondent, in turn, submits that “Blue City Solutions is just a network of private entities and they do not make or sell any products nor do they facilitate any services to third parties”. This does, however, not exclude that Respondent works for commercial gain of the private entities it connects and/or represents. On the contrary, there are further indications on the website under “www.bluecity.solutions” which rather point to the contrary (e.g.: “Blue City Solutions leads a global transition to zero-emission cities by identifying, financing and deploying the best performing solutions”, and “Blue City Solutions (“blue”) is a global partnership of private entities in Europe, North-America, Asia and the Middle-East working together to achieve zero-emission cities by 2050”) and Respondent himself acknowledges that “Blue City Solutions works in the network- and conference industry”. All of the aforementioned quotes imply that Respondent (also) conducts for profit activities. Therefore, the Panel further finds that Complainant has made a prima facie case in that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain (paragraph 4(c)(iii) of the Policy) which again is not rebutted by the evidence submitted by Respondent.

The Panel, finally, notes that Respondent has provided an excerpt from the Chamber of Commerce of The Hague evidencing the existence of a foundation named “Blue City Solutions” established in 2015. This company name is nearly identical with at least the disputed domain name <bluecity.solutions> (the only deviation being the dot as part of the gTLD “.solutions”). In fact, Respondent has argued to have registered the disputed domain name <bluecity.solutions> because this is exactly the name of the Blue City Solutions Foundation used since 2015 onwards. Still, Respondent has not brought forward to be “commonly known under the disputed domain name” as set forth by paragraph 4(c)(ii) of the Policy, and Complainant, in turn, stays silent on this aspect, too. Certainly, neither Respondent nor Respondent organization itself is named “Blue City Solutions”, but at least the entity for which Respondent registered the disputed domain name <bluecity.solutions> as e.g. a trustee. The Panel adds that neither Complainant nor Respondent has made any statements, nor submitted any relevant evidence, in respect of rights or legitimate interests (or the lack thereof) with respect to the disputed domain name <bluesolutions.city> within the meaning of paragraph 4(c)(ii) of the Policy.

Giving such missing substance of the case file provided by the parties in this respect, the Panel, after consideration, and in view of its considerations under section 6.C., has decided to leave open whether Complainant has proven that Respondent has no rights or legitimate interests with respect to the disputed domain names. Irrespective of the Panel’s findings on this point, the outcome of this proceeding – as laid out in detail below – is still the same.

C. Registered and Used in Bad Faith

The Panel, finally, holds that Complainant has not met the burden to prove that Respondent has registered and is using the disputed domain names in bad faith.

Generally, UDRP panels agree that bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s trademark; given that the scenarios described in paragraph 4(b) of the Policy are nonexclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse or otherwise engage in behavior detrimental to complainant’s trademark would also satisfy complainant’s burden (see WIPO Overview 3.0, section 3.1).

Complainant broadly argues that Respondent’s bad faith is proven by the confusing similarity between Complainant’s BLUE CITY and BLUE SOLUTIONS trademarks and the disputed domain names. While the Panel did indeed find that the disputed domain names and Complainant’s trademarks are confusingly similar under the first element of the UDRP, this finding of confusing similarity is not as such a proof of bad faith registration and use of a disputed domain name, though it may serve as one argument among others to draw a picture of bad faith behavior.

Further, Complainant points to the fact that Respondent’s website to which the disputed domain names redirect, proposes services in the same sector of activity as Complainant, e.g., batteries, manufacture and sale of energy storage shelters, smart grid, etc. According to Respondent’s website and supportive contentions, Respondent’s activities aim at achieving “zero sum emission cities” for which Respondent attempts to bring together companies in a multitude of economic sectors, such as traffic management, energy, cyber security, electric mobility, agriculture, finance, waste, water, transport and government. While the Panel was willing to accept that due to the nature of such doing business, there may be an indirect connection to Complainant’s competitors on the energy and mobility markets (see Section 6. B. above), still Complainant has not submitted any evidence that Respondent is engaged as such in any of the aforementioned business activities called upon by Complainant. Complainant was free to submit more detailed information, e.g., on a factual influence of Respondent doing business on Complainant and its business, but in fact did not provide any supportive facts and arguments in this direction. Accordingly, Complainant’s pointing to Respondent’s website alone under the circumstances of the case is insufficient for the Panel to find Respondent being active in the same business market as Complainant.

Complainant then argues that Respondent registered the disputed domain names with full knowledge of Complainant and its BLUE CITY and BLUE SOLUTIONS trademarks, but again fails to argue why that was the case (even though the Panel notes that Respondent does not expressly refute to have had such knowledge). Still, Respondent’s possible knowledge of Complainant’s BLUE CITY and BLUE SOLUTIONS trademarks does not follow from the arguments brought forward by Complainant to evidence Respondent’s registration and making use of the disputed domain names in bad faith. Also, Complainant’s statement that Respondent has registered and is using the disputed domain names to take advantage of the confusing similarity between the disputed domain names and Complainant’s trademarks in order to profit from the goodwill associated with the latter in bad faith under the Policy again is not supported by any evidence brought forward by Complainant (such as, e.g., Respondent’s website containing offers of or references to competing products or links to websites of any of Complainant’s competitors) which assertion in itself is in this case insufficient to support a finding of Respondent’s bad faith.

Complainant also addresses the topic of its sending of a cease-and-desist letter on February 14, 2017 which was returned with the mention “address unknown or incomplete”. Complainant argues that this alone is evidence that the WhoIs data for the disputed domain names were intentionally spoofed which, in Complainant’s view, increases Respondent’s bad faith acting. Indeed, this Panel carefully examined the circumstances surrounding the non-delivery of such cease-and-desist letter and the conclusion that should be drawn therefrom. While it is certainly an important duty to a domain name registrant to provide correct WhoIs contact information, from the case file brought before this Panel it is apparent that the postal address in the WhoIs information for the disputed domain names apparently exists as it matches the excerpts from the Chamber of Commerce register for both Respondent organization as well as the Blue City Solutions Foundation. The Panel, therefore, does not subscribe to Complainant’s conclusion that Respondent’s submitted WhoIs information was spoofed. In addition, as Respondent has put forward, having received the undeliverable notice by the Dutch Mail Service, Complainant could have chosen to send the cease-and-desist letter a second time or, the Panel adds, to check if the address indeed was correct or not (e.g., by looking into the Chamber of Commerce registration) and could have decided to reach Respondent in a different way (e.g. by using the P.O. Box address instead of the visiting address of Respondent) or even to use the telephone number provided in the WhoIs information. Complainant, instead, filed its Complaint right away which it was certainly entitled to do. Still, the mere fact that Respondent kept silent on a cease-and-desist letter which they apparently did not receive is, under the circumstances of this case, in the view of the Panel not supportive of a finding of a bad faith registration and making use of the disputed domain names.

Finally, Complainant is correct in pointing to the fact that Respondent organization’s name was not mentioned on the website to which the disputed domain names direct. It is, at the same time, undisputed that the name of Respondent is to be found there, together with a hyperlink to Respondent LinkedIn profile stating that he is the manager operations of Respondent organization and at the same time working at the Blue City Solutions Foundation. Though Respondent’s website obviously does not include a regular imprint, at least Respondent may be identified in person and could have been contacted by Complainant accordingly.

To sum up, the Panel concludes that Complainant has not met the burden to prove that Respondent has registered and is using the disputed domain names in bad faith as provided for by paragraph 4(a)(iii) of the Policy, thus this Complaint must fail. Noting the Panel’s findings regarding the availability of evidence to sustain Complainant’s case, Complainant remains free to seek remedies in other forms that are better suited to developing and considering such evidence through discovery, live testimony and cross-examination.

7. Decision

For the foregoing reasons, the Complaint is denied.

Stephanie G. Hartung
Presiding Panelist

Christian André Le Stanc
Panelist

Wolter Wefers Bettink
Panelist
Date: August 21, 2017