BOLLORE v. John Hemelgarn
Claim Number: FA2002001883120
Complainant is BOLLORE (“Complainant”), represented by Enora Millocheau of Nameshield, France. Respondent is John Hemelgarn (“Respondent”), Indiana, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ballore-logistics.us>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 13, 2020; the Forum received payment on February 13, 2020.
On February 13, 2020, Google LLC confirmed by e-mail to the Forum that the <ballore-logistics.us> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC 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 February 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2020 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@ballore-logistics.us. Also on February 17, 2020, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On March 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the 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
Complainant, BOLLORE, is a leading worldwide transport and logistics company. Complainant has rights in the BOLLORE LOGISTICS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,206,835, registered May 23, 2017). Respondent’s <ballore-logistics.us> domain name is confusingly similar to Complainant’s mark as Respondent merely replaces the letter “o” for the letter “a” in the mark and adds a hyphen and the “.us” country code top-level domain (“ccTLD”).
Respondent does not have rights or legitimate interests in the <ballore-logistics.us> domain name. Respondent is not licensed or authorized to use Complainant’s BOLLORE LOGISTICS mark and is not commonly known by the disputed domain name. Nothing in the available evidence indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). Additionally, Respondent is not using the <ballore-logistics.us> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the disputed domain name.
Respondent registered and uses the <ballore-logistics.us> domain name in bad faith. Respondent uses the disputed domain name to conduct an email phishing scheme. Additionally, Respondent engaged in typosquatting behavior. Furthermore, Respondent failed to make an active use of the disputed domain name. Finally, Respondent had actual knowledge of Complainant’s BOLLORE LOGISTICS mark when it registered the <ballore-logistics.us> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <ballore-logistics.us> domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 or 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 claims rights to the BOLLORE LOGISTICS mark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the BOLLORE LOGISTICS mark (e.g., Reg. No. 5,206,835, registered May 23, 2017). The Panel finds that Complainant has rights in the BOLLORE LOGISTICS mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <ballore-logistics.us> domain name is confusingly similar to Complainant’s BOLLORE LOGISTICS mark as Respondent incorporates the mark entirely, merely replacing a letter and adding a hyphen and a ccTLD. Misspelling of a complainant’s mark, either by adding or removing letters, and adding a hyphen and a ccTLD does not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). The Panel agrees with Complainant and finds that the <ballore-logistics.us> domain name does not contain changes that would sufficiently distinguish it from the BOLLORE LOGISTICS mark per Policy ¶ 4(a)(i) and the domain name is confusingly similar to Complaint’s mark.
Complainant has proved this element.
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), then the burden shifts to Respondent to show 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”). The Panel finds that Complainant has established a prima facie case.
There is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). 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)).
Complainant argues that Respondent has no rights or legitimate interests in the <ballore-logistics.us> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the BOLLORE LOGISTICS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “John Hemelgarn,” and there is no other evidence to suggest Respondent was authorized to use the BOLLORE LOGISTICS mark. The Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Complainant argues that Respondent is not using the <ballore-logistics.us> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make an active use of the disputed domain name. Failure to make active use of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(ii) or (iv). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Complainant provides screenshots of the disputed domain name which resolves to an inactive webpage which currently features an “error” notice. The Panel agrees that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶4(c)(ii) or (iv) and the Panel finds Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent has registered and uses the <ballore-logistics.us> domain name in bad faith. Complainant alleges Respondent attempts to disrupt Complainant’s business. Specifically, Complainant argues Respondent is attempting to impersonate Complainant as part of an email phishing scheme, presumably for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Here, Complainant claims Respondent uses an email address associated with the disputed domain name to impersonate Complainant and send phishing e-mails to Complainant’s employees, presumably designed to solicit information under false pretenses. Complainant provides emails sent by Respondent regarding the fraudulent email scheme. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also asserts that Respondent is passively holding the domain name. Failure to make an active use of a domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum February 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Complainant provides screenshots of the disputed domain name which resolves to an inactive website which currently features an “Error” notice. The Panel finds that Respondent’s inactive use of the disputed domain name indicates bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant contends Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to commercially benefit from a confusing similarity between a disputed domain name and the mark can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Complainant asserts Respondent merely replaces the letter “o” with an “a” in the BOLLORE LOGISTICS mark. The Panel find that Respondent’s replacement of a single letter in Complainant’s mark constitutes typosquatting, further evincing bad faith by Respondent per Policy ¶ 4(a)(iii).
Complainant argues Respondent must have had actual and constructive knowledge of Complainant’s BOLLORE LOGISTICS mark. While constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant claims that due to Respondent’s use of Complainant’s BOLLORE LOGISTICS mark and Respondent’s impersonation of Complainant, Respondent had actual knowledge of Complainant’s rights in the BOLLORE LOGISTICS mark. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the BOLLORE LOGISTICS mark, and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <ballore-logistics.us> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
March 20, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page