The Complainant is Cemex, S.A.B. DE C.V. of Monterrey, Mexico, represented by Stobbs IP Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is WhoIsGuard, Inc of Panama, Panama / Luis Felipez of Madrid, Spain. 2. The Domain Name and Registrar
The disputed 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 May 16, 2018. On May 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2018, 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 May 17, 2018 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 May 22, 2018.
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 May 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2018.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 19, 2018. 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 the third largest cement producer in the world with an annual turnover of more than USD 13 billion and with more than 40,000 employees worldwide. The Complainant is the owner of the CEMEX trademark, which is registered for various goods and services in numerous jurisdictions worldwide including in Peru under registration number P00191801, registered on September 30, 2009.
There is no information available about the Respondent except for the information provided for and the allegations made in the Complaint.
The disputed domain name was registered on February 13, 2017. At the date when the Complaint was filed the disputed domain name resolved to an active website, which appeared to offer products and services of the Complainant. The disputed domain name now resolves to a blank web page containing the words “Cemex Peru.” 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s CEMEX trademarks since it consists of the Complainant’s CEMEX trademark in combination with the generic term “Peru”.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use its trademarks neither in the disputed domain name nor on the corresponding website. The Respondent’s action is therefore not a bona fide offering of goods or services under the Policy. Also, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
Finally, the Complainant submits that the disputed domain name was registered and is used in bad faith. The Complainant registered and has used its marks extensively prior to the registration of the disputed domain name. Further, the Respondent intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. The fact that the Respondent copies many of the graphic images of products from the Complainant only adds to the finding that it is seeking commercial gain in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because it contains the Complainant’s registered trademark CEMEX in its entirety with the addition of the geographical term “Peru”. The addition of a geographical term as suffix to the trademark to form the disputed domain name does not, to this Panel, dispel a finding of confusing similarity. In addition, it has also long been held by UDRP panels that the generic Top-Level Domain (“gTLD”) suffix does not preclude a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Further, given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this, and the way the Respondent has been and is using the disputed domain name (see below in Section C) does not support a finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, in particular the extent of use of the Complainant’s trademark, the reputation and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name it chose could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
At the time of filing of this Complaint the disputed domain name was used for a website on which the Respondent used the Complainant’s trademark including the logotype just as the pictures on and the layout of the website clearly resembled that of the Complainant’s own website. This clearly gave Internet users the impression that the website was the official website of the Complainant or a website that was authorized by the Complainant, which is not the case.
The Panel therefore finds that the Respondent by its registration and use of the disputed domain name intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain names with the purpose of attracting Internet users to the website most likely for commercial gain. Moreover, the Panel finds that this use of the disputed domain name disrupts the Complainant’s business.
Given the circumstances of this case the Panel finds that the fact that the content of the website under the disputed domain name was altered to a blank web page containing the words “Cemex Peru” after the filing of the Complaint does not alter this finding. See section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.”
Noting that the disputed domain name incorporates a well-known trademark, that no response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name and considering all the facts and evidence; the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Knud Wallberg
Sole Panelist
Date: July 4, 2018
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