WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bollore SE v. 赵竹飞 (Zhao Zhu Fei)

Case No. D2020-0691

1. The Parties

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

The Respondent is 赵竹飞 (Zhao Zhu Fei), China.

2. The Domain Name and Registrar

The disputed domain name <bollore.online> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2020. On March 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On March 25, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on March 25, 2020. The Respondent requested that Chinese be the language of the proceeding on March 25, 2020.

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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on April 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2020. The Respondent did not submit a formal response. Accordingly, on April 22, 2020 the Center informed the Parties that it will proceed to appoint a panel.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 4, 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 a French company, founded in 1822, and operating in the following sectors: transportation, logistics communication, media and electricity storage and solutions. The Complainant is one of the 500 largest companies in the world and is listed on the Paris Stock Exchange.

The Complainant provides evidence that it owns a trademark for BOLLORE, International trademark registration number 704697, registered on December 11, 1998 and designating, amongst others, China and Switzerland. The Complainant also owns a portfolio of official domain names, such as <bollore.com>, registered on July 24, 1997, and <bollore.net>, registered on May 12, 1997. The disputed domain name was registered on March 21, 2020. The Complainant submits evidence that the disputed domain name resolves to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is identical to its trademarks for BOLLORE, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademark is distinctive and used intensively since 1822, and submits company and marketing information as well as several prior UDRP decisions which have recognized that the Complainant’s trademark for BOLLORE is well known, see for instance BOLLORE v. Yang, WIPO Case No. D2018-2340. The Complainant particularly submits that the Respondent is holding the disputed domain name passively, that there are no justifications for the use of its trademarks in the disputed domain name, contends that such use does not confer any rights or legitimate interests in respect of the domain name and constitutes use in bad faith.

The Complainant request the transfer of the disputed domain name.

B. Respondent

The Respondent’s submissions in this case are limited to its request that Chinese be the language of the proceeding, submitted on March 25, 2020. The Respondent did not reply on the merits of this case.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the administrative proceeding

Pursuant to paragraph 11(a) of the Rules, 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 Complainant states that the language of the Registration Agreement is Chinese, but nevertheless filed its Complaint in English, requesting that the language of the proceeding be English. The Complainant essentially contends that English is one of the most spoken languages in the world and an official working language of the Center, that the disputed domain name is in Latin letters and not in Chinese characters, that the disputed domain name is confusingly similar to the Complainant’s trademark and that the use of Chinese as the language of the administrative proceeding would result in undue costs and burdens on the Complainant. On March 25, 2020, the Respondent requested that the Chinese be the language of the proceeding, essentially arguing that the disputed domain name was registered by a Chinese Registrar with a Registration Agreement in Chinese, that Chinese is one of the most spoken languages in the world and an official working language of the Center, that the Respondent does not understand English sufficiently and that English as the language of the proceeding would disadvantage the Respondent.

Given the submissions of the Parties and the circumstances of this case, the Center has decided to accept the Complaint as filed in English, accept a Response in either English or Chinese and appoint the Panel, who is familiar with both English and Chinese.

The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1, which states: “panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include: […] (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint; […] The credibility of any submissions by the parties and in particular those of the respondent (or lack of reaction after having been given a fair chance to comment) are particularly relevant.”

In view of the foregoing, the Panel has carefully considered all elements of this case, and considers the following particularly relevant: the fact that the Respondent did not submit any arguments on the merits, while it was explicitly notified by the Center in Chinese and English of the administrative proceeding and of its right to file a Response in Chinese (or in English), so that the Respondent has not been disadvantaged; the fact that the disputed domain name is identical to the Complainant’s trademark; the fact that the disputed domain name is written in Latin letters and not in Chinese characters; and the fact that Chinese as the language of proceedings could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

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

(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.

Based on the evidence and arguments submitted, the Panel's findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark BOLLORE based on its intensive use and registration of the same as a trademark.

Moreover, as to identity or confusing similarity with the Complainant’s trademark, the Panel notes that the disputed domain name only consists of the Complainant’s registered trademark BOLLORE. The applicable generic Top-Level Domain (“gTLD”) (“.online” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel rules that the disputed domain name is identical to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant has made out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Moreover, upon review of the evidence provided by the Complainant, the Panel notes that the disputed domain name has not been used, and directs to an inactive webpage. The Panel finds that holding a domain name passively, without making any use of it, does not confer any rights or legitimate interests in the disputed domain name on the Respondent.

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel holds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademark, by using such trademark in the disputed domain name to mislead and divert consumers to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademark, the Panel holds that the registration of the disputed domain name, clearly targeting the Complainant’s well-known trademark, was obtained in bad faith. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in BOLLORE and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the disputed domain name has not been used and resolves to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” The Panel has reviewed all elements of this case, and in particular the fact that the disputed domain name is identical to the Complainant’s trademark and the high degree of distinctiveness and fame of the Complainant’s trademarks. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under 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.online> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: May 15, 2020