The Complainant is CMA CGM, of Marseille, France, represented by Inlex IP Expertise, France.
The Respondent is Moshe Nizri, of Rosch Pina, Israel.
The disputed domain names <tour-cma-cgm.com>, <tour-cmacgm.com>, <tourcma-cgm.com> and <tourcmacgm.com> are registered with Gandi SARL
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2009. On August 31, 2009, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the disputed domain names. On September 1, 2009, Gandi SARL transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 8, 2009.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on October 15, 2009. 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.
The Complainant is a French shipping and transport company formed by the 1999 merger of two former shipping businesses, CMA (Compagnie Maritime d'Affrètement) and CGM (Compagnie Générale Maritime).
The Complainant has used the trade mark CMA CGM since its formation and holds numerous trade mark registrations. The Complainant's main website at “www.cma-cgm.com” is in French and English.
In July 2006 the Complainant announced via its website and press release, plans to build a new corporate tower and head office in Marseilles, to be named “La Tour CMA CGM” (in English “The CMA CGM Tower”). During 2007, the construction of the tower was reported in various newspapers and on the Complainant's website.
On October 29, 2007, the disputed domain names were registered by a Mr. Arnaud Adreani, a Marseille resident. There is no website associated with any of the domain names.
The Complainant has not licensed or otherwise authorized the Respondent to use the trade mark, or to register any domain name incorporating the trade mark.
The Complainant's representative sent a cease and desist letter to Mr. Adreani in September, 2008. No reply was made. In September 2009 the disputed domain names were transferred to the Respondent.
The Complainant petitions the Panel to transfer the disputed domain names from the Respondent to the Complainant.
The Complainant asserts trade mark rights in CMA CGM and submits that the disputed domain names are confusingly similar to the trade mark since they each incorporate the trade mark and, aside from the non-distinctive gTLDS, only add the French term “tour” (one English language meaning of which is “tower”) and which only serves to indicate the “possible web site specific subject.”
The Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain names since:
“the Respondent has no activity under the name CMA CGM or TOUR CMA CGM and the domain names do not correspond to the Respondent name or logogram. The name of the Respondent does not appear on internet searches concerning CMA CGM or “tour cma cgm”. The Complainant has never licensed or otherwise authorized the Respondent to use the CMA CGM's trademarks as domain name or contained in a domain name. To the Complainant knowledge, Moshe Nizri has no right or authorization concerning the use of the specific term “CMA CGM”, no registered trademark and it is not commonly known by the disputed domain name nor using the domain names in connection with a legitimate or fair use. There is no website attached to the domain names TOURCMACGM.COM, TOUR-CMA-CGM.COM, TOUR-CMACGM.COM, and TOURCMACGM.COM since its reservation in 2007. The lack of web site since too many years reflects the absence of any right or legitimate interest of the Respondent.”
The Complainant argues that the disputed domain names were registered in bad faith. In particular, the Complainant submits that the trade mark does not correspond with any common word in either English or Hebrew. The Complainant argues that there is no plausible reason why the Respondent would have chosen the disputed domain names other than in the knowledge of the Complainant's business and of its publicly stated intention to built a tower.
The Complainant goes on to argue that the disputed domain names are not in use but are subject to “passive detention”, preventing the Complainant from their use for its legitimate activities.
The Respondent did not reply to the Complainant's contentions.
Although no Response was filed, Paragraph 4(a) of the Policy nonetheless requires the Complainant to prove the following three elements to obtain an order that the domain names be transferred to it:
(1) the domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names have been registered and are being used in bad faith.
Those matters must be established on the balance of probabilities and the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory1.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry. First, a threshold investigation of whether a complainant has rights in a trademark, followed by an assessment of whether the trade mark and the domain name are identical or confusingly similar.
On the evidence, there is no doubt that the Complainant has trade mark rights in CMA CGM acquired through use2 and registration3. The remaining question is whether the disputed domain names <tour-cma-cgm.com>, <tour-cmacgm.com>, <tourcma-cgm.com> and <tourcmacgm.com> are confusingly similar to the trade mark.
In making that comparison it is broadly accepted that the gTLD is to be ignored since it adds no distinctiveness to the domain names4. Likewise, it has been previously decided that hyphenation, or lack thereof, is inconsequential in the determination of confusing similarity. Accordingly, in each case, the domain name wholly incorporates the Complainant's trade mark and merely adds the word “tour”. Appreciated as a French word, “tour” is purely descriptive of the Complainant's project. Appreciated in its English language sense, the word “tour” again adds nothing distinctive to the trade mark since the domain name would be interpreted to mean something akin to “information about CMA CGM”. In either case, even if nothing is known of the Complainant's business or of its intentions to build a corporate tower, the addition of the element “tour” is not enough to dispel confusing similarity with the trade mark5.
The Panel finds that all four domain names are confusingly similar to the Complainant's trade mark and accordingly the Complainant has satisfied the first limb of the Policy.
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to demonstrate rights or legitimate interests6.
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be shown based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making 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.
The WhoIs data does not support any conclusion that the Respondent might be commonly known by the disputed domain names. There is no evidence that the Respondent has trade mark rights in the names, registered or not. The Complainant has stated there to be no relationship between it and the Respondent. The Respondent has not used the domain names in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and that the Respondent in failing to reply has not discharged the onus which fell to it as a result.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and so the Complainant has satisfied the second element of the Policy.
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Paragraphs 4(b)(i) – (iv) are, by definition, examples of both registration and use in bad faith. Paragraph 4(b) is not exhaustive and other instances of bad faith might be in evidence but, in those instances, the Panel must be able to find, separately, bad faith registration and bad faith use.
Paragraph 4(b)(iv) has no application to the facts since the domain names are not in use.
Paragraph 4(b)(iii) requires the Panel to decide that it is more likely than not that the Respondent's primary purpose was to disrupt the Complainant's business. The weight of the evidence does not support such a conclusion.
Paragraph 4(b)(ii) is applicable if the Respondent had engaged in a pattern of abusive conduct. The Complaint only points to one other example of potential abuse of a third party's trade mark. Of itself, that would not constitute a pattern of conduct, however it has been held that registration of multiple domains all including the trade mark at issue can properly show a relevant pattern of conduct. The Panel finds the Respondent's actions to fall within paragraph 4(b)(ii) of the Policy.
Paragraph 4(b)(i) may have been applicable with better evidence, but the Panel only has the Complainant's assertion that in a telephone conversation between its representatives and the predecessor-in-title to the Respondent, a sum in excess of ordinary out of pocket costs connected with registration of the domain names was demanded in exchange for transfer of the names to the Complainant.
The Complainant has established the third and final element of the Policy since it has shown bad faith use and registration under paragraph 4(b)(ii). Were it necessary to do so, the Panel would also be ready on a balance of the evidence to separately find bad faith registration7 and use8 on the basis that the Respondent registered the domain names opportunistically in the knowledge of the publicized intention of the Complainant to build a new corporate tower in Marseilles, and on the basis of the inactivity of the websites of each disputed domain name.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <tour-cma-cgm.com>, <tour-cmacgm.com>, <tourcma-cgm.com> and <tourcmacgm.com> be transferred to the Complainant.
Debrett G. Lyons
Dated: October 20, 2009
1 See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., NAF Case No. FA 95095; see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009.
2 The Complainant employs over 17,000 staff, has 400 vessels, 650 offices and agencies in more 260 countries and operations in over 400 ports. Last year, its turnover was more than US$15 billion.
3 For example, International Registration No. 879,781. See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Case No. FA705262; see also Mothers Against Drunk Driving v. phix, NAF Case No. FA174052.
4 See, for example, Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Case No. FA153545.
5 See Wal-Mart Stores, Inc. v MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 holding confusing similarity when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other non-distinctive terms in the domain name.
6 See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. FA741828; AOL LLC v. Jordan Gerberg, NAF Case No. 780200.
7 See Dixons Group Plc v. Abdullaah, WIPO Case No. D2000-1406, deciding amongst other things that transfer was equivalent to re-registration for the purposes of determining bad faith.
8 See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The finding of bad faith in that case rested on a number of pre-requisites which the panel there underscored as requiring analysis on a case-by-case basis. For present purposes, it is enough here that the Complainant's trademark is very well known, the Respondent lacks any rights in the name, the Respondent appears prone to registering domain names which include recognized third party trademarks, and no plausible scenario can be foreseen in which the Respondent might come to use the domain name in good faith.