WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bollore SE v. Andrew James

Case No. D2020-2534

1. The Parties

The Complainant is Bollore SE, France, represented by Nameshield, France.

The Respondent is Andrew James, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bollore-energys.com> is registered with Register SPA (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On October 15, 2020, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also sent an email communication to the Parties in English and French regarding the language of the proceeding. On the same day, the Complainant filed an amended Complaint and requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding

The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on October 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2020.

The Center appointed Matthew Kennedy as the sole panelist in this matter on November 22, 2020. The Panel finds that it was properly constituted. 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

The Complainant is one of the 500 largest companies in the world and is majority-controlled by the Bolloré family. It has three lines of business: transportation and logistics, communication, and electricity storage and systems. It has a subsidiary named Bolloré Energy, which conducts business in the fields of oil logistics and distribution. The Complainant owns various trademarks, including International trademark registration number 1303490 for a semi-figurative mark containing the words “Bolloré Energy”, registered on January 22, 2016, specifying goods and services in a wide range of classes. That trademark registration remains valid. The Complainant also registered the domain name <bollore-energy.com> on September 30, 2015, which it uses in connection with a website that provides information in French and English about its subsidiary Bolloré Energy.

The Respondent is an individual resident in the United Kingdom.

The disputed domain name was registered on September 28, 2020. It does not resolve to an active website; rather, it is passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s BOLLORÉ ENERGY mark. The disputed domain name contains an obvious misspelling of that mark and is a clear case of typosquatting.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with, nor authorized by, the Complainant in any way. The Complainant has not granted either licence or authorization to the Respondent to make any use of the BOLLORÉ ENERGY trademark, or to apply for registration of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. It is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of the Complainant’s rights in the BOLLORÉ ENERGY trademark. The misspelling in the disputed domain name was intentionally designed to be confusingly similar with the Complainant’s trademark. The Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in French.

The Complainant requests that the language of the proceeding be English because the Respondent is located in the United Kingdom and he thus speaks and writes in English.

Paragraphs 10(b) and 10(c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding, the Complaint and the amended Complaint were filed in English. Despite the Center having sent an email regarding the language of the proceeding, and the notification of the Complaint, in both French and English, the Respondent did not comment on the language or express any interest in participating in this proceeding. The Respondent is also resident in the United Kingdom, from which it is reasonable to infer that he is able to communicate in the English language. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into French would create an undue burden and delay, whereas proceeding in English will not cause unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a formal Response in French, but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the BOLLORÉ ENERGY semi-figurative mark.

The disputed domain name wholly incorporates the non-figurative elements of the BOLLORÉ ENERGY mark. For technical reasons, the disputed domain name cannot include the figurative elements of that trademark, hence these other elements can be disregarded in the comparison between the disputed domain name and the Bolloré Energy mark. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031. The disputed domain name also includes a hyphen separating the words “bollore” and “energy” and an additional letter “s”. These elements do not avoid a finding of confusing similarity as the non-figurative elements of the BOLLORÉ ENERGY mark remain clearly recognizable within the disputed domain name.

The only other element in the disputed domain name is the generic Top-Level Domain (“gTLD”) “.com”. As a technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant contends that it has not granted either licence or authorization to the Respondent to make any use of the BOLLORÉ ENERGY trademark, or to apply for registration of the disputed domain name.

The disputed domain name does not resolve to any active website; rather, it is passively held. That is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is it a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy.

The Respondent’s name is listed in the Registrar’s WhoIs database as “Andrew James”, not “bollore-energys”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the disputed domain name was registered in 2020, years after the registration of the Complainant’s BOLLORÉ ENERGY trademark. The disputed domain name wholly incorporates the non-figurative elements of the BOLLORÉ ENERGY mark which, in combination, have no meaning other than as a reference to the Complainant’s subsidiary of that name, and to the Complainant’s BOLLORÉ ENERGY trademark. In these circumstances, the Panel considers it highly likely that the Respondent knew of the Complainant’s mark at the time he registered the disputed domain name.

With respect to use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Complainant has developed a considerable reputation in its BOLLORÉ ENERGY mark through use and promotion. The disputed domain name wholly incorporates the non-figurative elements of that mark. Moreover, the disputed domain name is identical to the Complainant’s domain name <bollore-energy.com> but for an additional “s”. The clear inference is that the disputed domain name is intended to be used to attract Internet users who misspell the Complainant’s domain name in an Internet browser by creating a likelihood of confusion with the Complainant’s BOLLORÉ ENERGY trademark as to the source, sponsorship, affiliation, or endorsement of a webpage to which the disputed domain name will resolve. The Respondent provides no explanation of any potential use of the disputed domain name. In all these circumstances, the Panel considers it more likely than not that the Respondent is using the disputed domain name in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <bollore-energys.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: November 30, 2020