WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bollore SE v. Ruth Hermine

Case No. D2021-0114

1. The Parties

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

The Respondent is Ruth Hermine, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <bollore-energygroup.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 January 14, 2021. On January 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2021, 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. The Center sent an email communication to the Complainant on January 15, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on January 15, 2021.

On January 15, 2021, the Center transmitted an email communication to the Parties in English and French regarding the language of the proceeding. On January 15, 2021, the Complainant submitted a request 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 in English and French of the Complaint, and the proceedings commenced on January 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2021.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on April 1, 2021. 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 was founded in 1822. It carries out its activities around three business lines, namely transportation and logistics, communication and media, electricity storage and related solutions.

The Complainant is listed on the Paris Stock Exchange and is one of the 500 largest companies in the world. Together with and its affiliates, it has 84,000 employees world-wide with a turnover in 2019 of EUR 24,843 million and an operating income that year of EUR 1,259 million.

Its subsidiary Bolloré Energy is a key player in oil distribution and oil logistics in France, Switzerland and Germany.

The Complainant owns several trademarks including the term BOLLORÉ, such as the international trademark BOLLORÉ (International Registration number 704697), registered on December 11, 1998 with a priority date as of July 1, 1998, as well as BOLLORÉ ENERGY (International Registration number 1303490), registered on January 22, 2016 with a priority date as of November 17, 2015.

The Complainant owns numerous domain names, including <bollore-energy.com>, which was registered on September 29, 2015.

The Respondent registered the domain name <bollore-energygroup.com> on January 11, 2021. The domain name resolves to the Complainant’s subsidiary official website mentioned above Bolloré Energy.

5. Parties’ Contentions

A. Complainant

The Complainant first contends that the disputed domain name <bollore-energygroup.com> is confusingly similar to its trademark BOLLORÉ ENERGY as it entirely incorporates such trademark.

The Complainant then asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated nor authorized by the Complainant to use its trademarks in any way.

Besides, the disputed domain name resolves to the Complainant’s subsidiary official website. The Complainant contends that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, which cannot be considered a bona fide offering of goods or services.

Finally, as a result of its well-known character and strong reputation worldwide, the Complainant considers that the Respondent was obviously aware of its trademarks when it decided to register the disputed domain name <bollore-energygroup.com>, and that its use, which resolves to the official website of its subsidiary, is by itself an evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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.

Prior to turning to the merits of the case, the Panel however has to address a formal issue regarding the language of the proceedings.

A. Language of the proceedings

The Complaint was filed in English on January 14, 2021.

On January 15, 2021, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain names was French. The Center invited the Complainant to provide satisfactory evidence of an agreement between the parties to the effect that the proceedings should be in English, to submit the Complaint translated in French or a request for English to be the language of the proceedings.

On the same day, the Complainant requested English to be the language of the proceedings as the Respondent is based in the United Kingdom and can thus be expected to understand the English language. The Respondent did not respond.

Considering that the Respondent did not oppose to the Complainant’s request for the proceedings to take place in English, although it has the opportunity to do so, the Panel accepts the Complainant’s request, and hence the proceedings shall be conducted in English.

B. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant holds numerous trademarks throughout the world consisting in all or in part of the term BOLLORÉ, including an international trademark BOLLORÉ ENERGY.

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). Such is the case here.

In this case the inserted trademark consists of the dominant part of the disputed domain name, and the added elements are merely descriptive. The Panel finds these elements are present here.

The disputed domain name entirely incorporates and reproduces the BOLLORÉ ENERGY trademark, andfor the addition of the term “group” which does not prevent confusing similarity.

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

C. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.”

Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”).

In the present case, the Complainant is the owner of the BOLLORÉ ENERGY trademark that enjoys a significant reputation. The Complainant has no business or other relationship with the Respondent and has never authorized the Respondent to use its trademark. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent did not object to these assertions.

Furthermore, the use of the disputed domain name, which directly resolves to the Complainant’s subsidiary official website, does not amount to a bona fide offering of goods or services, to the contrary.

Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

D. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant’s BOLLORÉ trademarks enjoy a strong reputation.

Considering the distinctiveness of the BOLLORÉ ENERGY mark and the fact that the disputed domain name resolves to the Complainant’s subsidiary official website, there is no doubt that the Respondent was well aware of the Complainant’s trademark when it registered the disputed domain name
<bollore-energygroup.com>.

Furthermore, by resolving to the Complainant’s subsidiary official website, the Respondent has intentionally attempted to create a likelihood of confusion with the Complainant’s official website as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Such a use obviously amounts to a use in bad faith.

Consequently, the Panel is of the opinion that the disputed domain name <bollore-energygroup.com> has been registered and is being used in bad faith under the paragraph 4(a)(iii) 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-energygroup.com> be transferred to the Complainant.

Philippe Gilliéron
Sole Panelist
Date: April 8, 2021