BOLLORE SE v. KLX Aerospace
Claim Number: FA2308002057860
Complainant is BOLLORE SE (“Complainant”), represented by Laurent Becker of Nameshield, France. Respondent is KLX Aerospace (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bollorelogistic.us>, registered with NameCheap, Inc.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on August 17, 2023; Forum received payment on August 18, 2023.
On August 18, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <bollorelogistic.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 22, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bollorelogistic.us. Also on August 22, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Founded in 1822, Complainant is a world leader in the business lines of transportation and logistics, communication and media, electricity storage and solutions. It is one of the 500 largest companies in the world with over 56,000 employees. It’s subsidiary, Bollore Logistics, is focused on worldwide transport and logistics and operates in 146 countries. Complainant owns the BOLLORE LOGISTICS trademark in many countries through its registrations with the World Intellectual Property Organization (“WIPO”) and the United States Patent and Trademark Office (“USPTO”) (e.g., International Reg. No. 1302823, filed on January 27, 2016). It also has owned the domain name <bollorelogistics.com> and used it for a website since 2009. Respondent’s <bollorelogistic.us> domain name, registered on August 7, 2023, is confusingly similar to Complainant’s mark as it simply omits the letter “s” and adds the “.us” TLD.
Respondent has no rights or legitimate interests in the disputed domain name as it has no trademark rights, is not commonly known by the domain name, and it does not make a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Instead, the domain name resolves to a pay-per-click page with monetized links to third-party websites.
The disputed domain name was registered and is used in bad faith where it resolves to a pay-per-click page. Respondent is seeking commercial gain based on confusion with Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has rights in the BOLLORE LOGISTICS mark and the <bollorelogistic.us> domain name is confusingly similar to the mark;
- Respondent has no rights or legitimate interests in the disputed domain name where it owns no relevant trademark, is not commonly known by the domain name, and its pay-per-click website is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
- The disputed domain name was registered and is used in bad faith where it resolves to a pay-per-click website that seeks commercial gain based on confusion with Complainant’s mark.
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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the BOLLORE LOGISTICS trademark based upon registration thereof with the WIPO and the USPTO. Under Policy ¶ 4(a)(i), registration with such trademark offices is sufficient to establish rights in a trademark. See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”); see also Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”) As Complainant has submitted screenshots from the WIPO and the USPTO websites evidencing registration of its asserted trademark, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <bollorelogistic.us> domain name is identical or confusingly similar to the BOLLORE LOGISTICS mark as it copies the mark, merely omiting the letter “s”, and adding the “.us” ccTLD. Misspelling a mark through omission of a letter and adding a TLD rarely distinguishes the disputed domain name from the mark incorporated therein per Policy ¶ 4(a)(i) and is often referred to as “typosquatting”. See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.); Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). As the <bollorelogistic.us> domain name merely omits the letter “s” from Complainant’s BOLLORE LOGISTICS mark and adds the “.us” ccTLD, the Panel finds that it is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant makes no mention of Policy ¶ 4(c)(i) which states that rights or legitimate interests may be found where a respondent is “the owner or beneficiary of a trade or service mark that is identical to the domain name.” Nevertheless, the Panel will consider this issue for the sake of completeness. See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel notes that no evidence is of record relevant to Policy ¶ 4(c)(i) and so it cannot conclude that Respondent has any rights or legitimate interests in the disputed domain name under this clause.
However, Complainant does contend that Respondent lacks rights or legitimate interests in the <bollorelogistic.us> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the BOLLORE LOGISTICS mark. WHOIS information is often referenced when considering whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per [UDRP] Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “KLX Aerospace,” and there is no evidence to suggest that Respondent is known otherwise or that it is authorized to use the BOLLORE LOGISTICS mark. Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Next, Complainant argues that Respondent fails to use the <bollorelogistic.us> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name “resolves to a parking page with pay-per-click links.” Where the Respondent uses a domain to display a pay-per-click page with links to third-party products or services, Panels often find that respondents fail to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides a screenshot of the disputed domain name’s resolving website, which features pay-per-click links titled “Business”, “Business Organization Chart”, “Planning Management”, “Administrative Management Software”, “Best Trading Platform”, and others. Using a typosquatted domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). For its part, Respondent has provided no Response nor made any submission in this case. Therefore, as Complainant has set out a prima facie claim which has not been rebutted by Respondent, the Panel finds, by a preponderance of the evidence, that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(ii) and (iv).
Complainant argues that Respondent had knowledge of Complainant’s rights in the BOLLORE LOGISTICS mark at the time of registering the <bollorelogistic.us> domain name. A respondent’s actual knowledge of a complainant's rights in an asserted mark prior to registering the disputed domain name can form a foundation upon which to base an argument for bad faith. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). In promoting its assertion, Complainant claims that its BOLLORE LOGISTICS trademark is both distinctive and has gained a substantial reputation such that “it is reasonable to infer that the Respondent has registered the domain name with full knowledge of the Complainant's trademarks”. Submitted into evidence are screenshots from Complainant’s own website at www.bollorelogistics.com, a document titled “Group Profile” which sets out various of Complainant’s business statistics such as its number of employees and worldwide sales, and another document titled “We Deliver Global Logistics” which set out further statistics and detailed descriptions of Complainant’s business. While the Panel would prefer to see further evidence of the brand reputation that this marketing material has created, it finds that this evidence does narrowly support Complainant’s assertion that its mark has gained some reputation. This, combined with the fact that the <bollorelogistic.us> domain name is a typosquatted variation of Complainant’s own www.bollorelogistics.com web address, leads the Panel to find it more likely than not that Respondent did have actual knowledge of Complainant’s rights in its mark at the time that it registered the disputed domain name.
Complainant next argues that Respondent registered and uses the <bollorelogistic.us> domain name in bad faith because Respondent resolves the domain name to a pay-per-click website with links to other websites offering business related services. Use of a disputed domain name to redirect consumers to third-party goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”). Complainant provides a screenshot of the disputed domain name resolving to a pay-per-click page with links to others providing business-related services. Based on this evidence and the fact that the <bollorelogistic.us> domain name is a confusingly similar typosquatted version of the BOLLORE LOGISTICS mark and Complainant’s <bollorelogistics.com> domain name, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bollorelogistic.us> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 13, 2023
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