WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CMA CGM v. Mike Smith
Case No. D2013-0202
1. The Parties
The Complainant is CMA CGM of Marseille, France, represented by Inlex IP Expertise, France.
The Respondent is Mike Smith of Redondo Beach, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cmacgmtracking.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2013. On January 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar 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 February 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2013.
The Center appointed Edoardo Fano as the sole panelist in this matter on March 5, 2013. 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 Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is CMA CGM, the world’s third largest container shipping and tracking company, based in France with offices in more than 150 countries and owning several trademark registrations for CMA CGM, among which:
- Community Trademark Registration No. 004658068 CMA CGM (and logo), applied for in October 18, 2005 and registered on January 19, 2007;
- International Trademark Registration No. 879.781CMA CGM (and logo), registered on December 22, 2005.
The Complainant provided evidence in support of the above.
The disputed domain name <cmacgmtracking.com> was registered on August 14, 2012. At the time of filing the Complaint, the disputed domain name pointed to a webpage with the reproduction of the Complainant’s trademark and logo, and with pictures and videos of the Complainant’s boats, not authorised or approved by the Complainant, as well as sponsored links related to the shipping field.
5. Parties’ Contentions
The Complainant states that the disputed domain name <cmacgmtracking.com> is confusingly similar to its trademark CMA CGM, being a combination of the generic word “tracking” and the Complainant’s trademark CMA CGM.
Moreover, the Complainant affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorised by the Complainant to reserve the disputed domain name or to register and/or use its trademark within the disputed domain name and it is not commonly known by the disputed domain name.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further asserts that its trademark CMA CGM enjoys worldwide fame and the Respondent could not have registered the disputed domain name without knowledge of the Complainant’s trademark rights.
Moreover, at the time of filing the Complaint, the Respondent was using the disputed domain name for a website displaying the Complainant's trademarks, logos, pictures, videos as well as several sponsored links related to the shipping and tracking field, some of which were connected to Complainant's competitors.
The Respondent has made no formal substantive reply to the Complainant’s contentions and is in default; in reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000‑0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of 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 Panel finds that the Complainant is the owner of the trademark CMA CGM both by registration and acquired reputation and that the disputed domain name <cmacgmtracking.com> is confusingly similar to the trademark CMA CGM.
Regarding the addition of the generic word “tracking”, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the word “tracking” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a top-level domain suffix, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has a right or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy, has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent 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 the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or
(ii) that [the respondent 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 respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”
As regards to the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark CMA CGM in the field of shipping is clearly established and the Panel finds that the Respondent knew or must have known that the disputed domain name <cmacgmtracking.com> was confusingly similar to the Complainant’s trademark, especially because the content of the relevant website was fully referred to the shipping services with reproductions of the Complainant's trademarks and logos, pictures and videos.
In fact, the disputed domain name was also used in bad faith since in the relevant website, the Respondent was offering shipping and tracking services using trademarks, logos, pictures and videos of the Complainant as well as sponsored links to other companies operating in this same field, some of them being Complainant's competitors.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For all 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 <cmacgmtracking.com> be transferred to the Complainant.
Date: March 14, 2013