Bollore SE v Privacy Service Provided by Withheld for Privacy ehf /

WIPO Case No. DCO2022-0008

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Bollore SE v. Privacy Service Provided by Withheld for Privacy ehf /
Adams Franky LLC, Franky LLC

Case No. DCO2022-0008

1. The Parties

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

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Adams Franky LLC,

Franky LLC, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <bolloreusa.co> (the “Domain Name”) is registered with NameCheap, Inc.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2022. On February 2, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 2, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on February 3, 2022, 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 on February 3, 2022.

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 February 3, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2022.

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The Center appointed Jeremy Speres as the sole panelist in this matter on March 1, 2022. 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, a French corporation, is one of the 500 largest companies in the world and operates in the transportation and logistics, communication and media, electricity storage and solutions industries. Founded in 1882 the Complainant trades under its BOLLORÉ mark, having 79,000 employees world-wide with

turnover averaging EUR 24,109 million.

The Complainant owns many registrations for its BOLLORÉ trade mark around the world. Importantly for
this matter the Panel has independently established that the Complainant owns United States (the
Respondent’s country) trade mark registration number 2441830 for a stylized BOLLORÉ mark in classes 16,
17, 34, 35, 36, 38 and 39, bearing a registration date of April 10, 2001. The Complainant also owns the

domain name <bollore.com>, registered on July 25, 1997, at which its primary website is located.

The Domain Name was registered on January 25, 2022 and resolves to a parked page displaying pay-per-
click (“PPC”) advertisements, some of which relate to logistics businesses which compete with the

Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its BOLLORÉ mark, that the
Respondent has no rights or legitimate interests in it, and the Domain Name was registered and used in bad
faith given that the Complainant’s mark is well-known and there is no conceivable good faith use of the

Domain Name.

B. Respondent

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

6. Discussion and Findings
A. Identical or Confusingly Similar

The Complainant’s mark is wholly contained within the Domain Name with only the addition of the geographical term “usa”. Where the trade mark is recognisable within the disputed domain name, the addition of other terms (including geographical terms as in this case) does not prevent a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8). The omission of diacritics, such as the acute accent on the letter “E” in the Complainant’s mark in this case, is immaterial and does not prevent a finding of identity or confusing similarity (Société des Produits Nestlé S.A. v. Sonia de Ferrero, WIPO Case No. D2016-1300).

The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

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B. Rights or Legitimate Interests

The Complainant’s unrebutted evidence establishes that its mark was registered and well-known long prior to registration of the Domain Name. The Domain Name is confusingly similar to the Complainant’s mark and the Complainant has certified that the Domain Name is unauthorised by it.

UDRP panels have found that use of a domain name to host PPC links does not represent a bona fide offering where such links compete with the complainant’s mark, as in this case (WIPO Overview 3.0 at section 2.9). There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy

pertain.

The Complainant has satisfied paragraph 4(a)(ii) of the Policy by virtue of having made out an unrebutted prima facie case (WIPO Overview 3.0 at section 2.1).

C. Registered and Used in Bad Faith

The Domain Name has been used to advertise competitors of the Complainant with PPC advertisements,
which is a clear indicator of targeting for commercial gain under paragraph 4(b)(iv) of the Policy.
See Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,
WIPO Case No. D2011-1753. Although the advertisements may be served programmatically by a third party
(GoDaddy) the Respondent cannot disclaim responsibility for them (WIPO Overview 3.0 at section 3.5).

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a well-known trade mark, particularly domain names incorporating the mark plus a geographical term as in this case, by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0 at

sections 3.1.4 and 3.2.1). The Complainant’s mark has no dictionary meaning and is highly specific to the
Complainant. This indicates that the Domain Name was registered with the Complainant’s mark in mind
(Bayer Aktiengesellschaft v. H. Monssen, WIPO Case No. D2003-0275).

Furthermore, the Panel has independently established that the Respondent has registered numerous other domain names that are confusingly similar to well-known trade marks, all of which have been parked in the same manner as the Domain Name, featuring PPC links. See, for example, <qtpod.us> (genuine site:

“ <wi-k12-ny.us> (genuine site: “ <baesystem.us> (genuine site:
“ and <vaiero.us> (genuine site: “ The Respondent appears to

be a serial cybersquatter and this case is merely a continuation of that pattern.

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 Domain Name <bolloreusa.co>, be transferred to the Complainant.

/Jeremy Speres/
Jeremy Speres
Sole Panelist
Date: March 9, 2022