The Complainant is CMA CGM of Marseille, France, represented by Inlex IP Expertise, France.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Sun Lee of Annandale, Virginia, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2016. On July 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2016 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 July 7, 2016 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 July 12, 2016.
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 July 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2016.
The Center appointed Antony Gold as the sole panelist in this matter on August 11, 2016. 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 substantial, international shipping company which has its headquarters in Marseille, France. It operates, through a network of agencies, in over 160 countries and has over 29,000 employees. Its full trading name is the CMA CGM Group but this is commonly shortened to CMA CGM. The Complainant has secured trade mark protection in multiple jurisdictions for both CMA CGM and also for CMA. Its trade marks for CMA include International trademark No. 502706 registered on April 30, 1986 in classes 35 and 39.
The disputed domain name was registered on April 30, 2016. The disputed domain name presently points to a website which closely replicates the design and content of the Complainant’s corporate website. Features evidently taken from the Complainant’s website include (by way of example only) a banner featuring pictures of some of the Complainant’s boats and sections of the website which contain corporate and business news about “CMA CGM” as well as a purported container tracking facility. The “About Us” section of the website refers to a company called “CMA Shipping and Logistics Limited” which purports to offer freight forwarding, customs clearance and related services. Internet searches conducted by the Complainant indicate that no such entity as “CMA Shipping and Logistics Limited” exists. Notwithstanding the fact that the disputed domain name was only registered in April 2016, a copyright notice on the “Contact Us” section of the website asserts “Copyright © 2000-2016”. 5. Parties’ Contentions A. Complainant
The Complainant asserts, first, that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. In support of this contention, the Complainant has provided details of registered trademarks it owns in various jurisdictions for various CMA-related names including (in stylized form) CMA CGM|LOG, CMA CGM LOGISTICS and CMA CGM as well as (in word only form) CMA and CMA CGM. The Complainant says that CMA has been used as a root brand for a family of CMA-related services, such as CMA Ships, CMA Terminals and CMA Logistics and that, as a consequence, it is commonly known by the term “CMA” alone.
The Complainant says that the fact that “logestics” has been added to “CMA” in the disputed domain name is likely to increase, rather than reduce, the likelihood of confusion between the disputed domain name and the Complainant. It points out that most Internet users are likely to perceive “logestics” as typographical error for “logistics” which is one of the Complainant’s principal activities. This is particularly the case, says the Complainant, because it is known to have a family of “CMA” brands and the disputed domain name will be perceived as relating to a member of that family. In this respect, the Complainant says that a Google search for the words “cma-logestics” produces results, the first page of which relate entirely to the Complainant and its corporate website. The Complainant says that the disputed domain name is also similar to its stylized trade marks for CMA CGM LOGISTICS and CMA CGM|LOG and that the removal of “CGM” is insufficient to avoid the confusion which will arise by use of a domain name which couples “CMA” with a misspelt description of one of the Complainant’s principal services.
Second, the Complainant says that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. It says that the word “CMA” will be seen as a reference to the Complainant and, in support of this contention, it produces the results of a Google search for “CMA”, the first page of which is comprised entirely of links which refer to the Complainant. The Respondent must have known of the Complainant’s reputation in its CMA mark, it says, because the website to which the disputed domain name pointed, shortly after it was registered is effectively a replica of the Complainant’s website.
In addition, the Complainant says that there is no evidence that the Respondent has a registered trade mark for CMA and that, if the Respondent had any rights in CMA he would have responded to the formal claim letter sent to it on behalf of the Complainant on June 20, 2016. Furthermore, it asserts that the only known use to which the Respondent has put the disputed domain name is to point it to a fraudulent copy of the Complainant’s website and that such activity does not give the Respondent a legitimate interest in the disputed domain name. Further, the Complainant states that the Respondent is not linked to the Complainant through a business, legal or other relationship and has not been authorized by the Complainant to register the disputed domain name.
Lastly, the Complainant asserts that the disputed domain name was registered and used in bad faith. So far as bad faith registration is concerned, the Complainant points out that the word “CMA” has no specific meaning in the English language and that the Respondent cannot have registered the disputed domain name and copied the Complainant’s website by chance. Accordingly, when registering the disputed domain name, the Respondent will have been aware of the Complainant and of the repute of its trade marks. It would have known that the word “logestics” (when used in conjunction with “CMA”) was likely to be seen by Internet users as a misspelling of “logistics. This word is descriptive of the Complainant’s services in the field of maritime services and logistics transport and the disputed domain name was accordingly likely to be associated by Internet users with the Complainant. Accordingly, the Complainant says, the Respondent’s evident knowledge of the Complainant’s reputation, trade marks and activities as at the time of registration of the disputed domain name indicates that it was registered in bad faith.
In relation to bad faith use, the Complainant sets out the numerous features of the website to which the disputed domain name points which have plainly been taken directly from the Complainant’s website. It says that the copying of its website is plainly a bad faith use of the disputed domain name and has evidently been done in order to create confusion to Internet users visiting the website and to enable the Respondent to take advantage of the Complainant’s substantial repute in the field of shipping and logistics services. It says also that the failure of the Respondent to respond to the Complainant’s cease-and-desist letter dated June 20, 2016 is another indication of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The schedule of registered trade marks owned by the Complainant includes numerous trade marks which include the word “CMA” and, specifically, five word-only trade marks for CMA solus, numerous stylized trade marks for CMA CGM|LOG and four stylized word marks for CMA CGM LOGISTICS. Contrary to the Complainant’s assertions, there is little, if any, evidence of use by either the Complainant itself or third parties of the term “CMA” alone as a means of referring to the Complainant. Indeed the Complainant’s website almost invariably uses the term “CMA CGM” as a means of referring to its business. Furthermore, consideration of the results produced by a search on Google for “CMA” is not a reliable means of ascertaining the extent of the Complainant’s repute in this term as unsponsored search results can be heavily influenced by search engine optimization processes.
Nonetheless, the Complainant’s trade mark portfolio includes valid and subsisting word only trade marks for CMA solus and it accordingly has rights in this word. Moreover, the Complainant’s CMA CGM mark is evidently well known internationally in its field and, in that context, the first element of this trade mark, namely CMA, is likely to be associated by the shipping and logistics community with the Complainant’s business.
The disputed domain name is not identical to any of the Complainant’s trade marks but it is confusingly similar to the Complainant’s trade marks. This first element of the disputed domain name is identical to the Complainant’s CMA trade marks and the disputed domain name in its entirety is confusingly similar to them. This is particularly the case as it is established practice, when assessing the degree of similarity between a disputed domain name and a complainant’s trade mark, to disregard the generic Top-Level Domain (“gTLD”) suffix “.com”. Moreover, as the Complainant says, its reputation in the field of shipping and logistics is such that a domain name comprising the word “logestics”, in conjunction with, and following, the word “CMA” will be assumed by Internet users aware of the Complainant’s reputation to be a misspelt reference to the Complainant’s activities in the field of logistics.
The Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) it can show that (as an individual, business, or other organization) it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these grounds would appear to be remotely applicable to the current facts. In particular, such use as the Respondent has made of the disputed domain name, namely to point to a website the form and content of which has been lifted wholesale from the Complainant’s website, is plainly intended to mislead Internet users into believing that the website is run by, or on behalf of, the Complainant. This use is, self-evidently, not in connection with a bona fide offering of goods and services. Moreover, the Respondent has failed to respond either to this Complaint or to a cease-and-desist letter sent on behalf of the Complainant in June 2016, prior to the filing of this Complaint. It has thereby declined to take the opportunities available to it to provide evidence which might suggest that it has a right or legitimate interest in the disputed domain name whether on the specific grounds set out above or on any other basis and it is therefore reasonable to infer that it has nothing to say which might assist its position.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
Whilst the exact date on which the website to which the disputed domain name points became active is not known, it was evidently active by the date of the cease-and-desist letter sent on behalf of the Complainant to the Respondent, namely by June 20, 2016. It is likely that the Respondent registered the disputed domain name both with knowledge of the Complainant’s business and reputation and with the intention of pointing the disputed domain name towards what is, in effect, a copy of the Complainant’s website.
As the Complainant says, the only motive the Respondent could have had for registering the disputed domain name and then using it in order to point it to a website which has been taken from the Complainant’s website is to cause confusion to active or prospective customers of the Complainant and to others involved in the Complainant’s fields of activity, all of whom are likely to think that the website is run by, or is otherwise connected with, the Complainant.
Paragraph 4(b) of the Policy sets out a number of non-exhaustive circumstances in which bad faith registration and use will be found. These include, at paragraph 4(b)(iv) of the Policy, circumstances in which a respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The Respondent’s conduct falls within the circumstances described.
The Panel accordingly finds that the disputed domain name has been registered and is being used in bad faith. 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 be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: August 22, 2016
Full & Egal Universal Law Academy