WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CMA CGM v. ICS Inc. / Contact Privacy Inc.

Case No. D2013-1412

1. The Parties

The Complainant is CMA CGM of Marseille, France, represented by Inlex IP Expertise, France.

The Respondent is ICS Inc. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Contact Privacy Inc. of Toronto, Canada.

2. The Domain Names and Registrar

The disputed domain names <delmasline.com> and <wwwdelmas.com> are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2013. On August 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 23, 2013, 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 August 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2013.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on October 4, 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.

4. Factual Background

The Complainant is the world’s third largest container shipping group and number one in France, with headquarter in Marseille (France). The Complainant’s group serves over 400 ports around the world and operates out of over 650 offices and agencies in more than 150 countries. With regular services on over 170 shipping lines, the Complainant manages a dense network capable of meeting the expectations of its customers all over the world. It is also one of the first global shipping operators to have control over the whole logistics chain offering a door-to-door service that integrates both inland waterway transport (River Shuttle Containers) and railways (CMA Rail), as well as port handling facilities and logistics on land.

Delmas, a France's leading regular-line shipping company on North-South traffic, was founded in 1867 and became part of the Complainant group in January 2006. Delmas now covers lines all over the world, such as, for example, Europe - Africa Trade, Asia - Africa Trade, South America - Africa Trade and India & Middie East - Africa Trade.

The Complainant submitted documents (Annex 5) that it is the owner of numerous trademark registrations for DELMAS, throughout the world, including but not limited to the countries of the European Community, United States of America, different African countries, Japan, Singapore and China. The Complainant’s first trademark was registered in 1990.

According to the publicly-available Whois information, the disputed domain name <delmasline.com> was registered on November 16, 2011 and the disputed domain name <wwwdelmas.com> was registered on December 18, 2012.

According to the evidence submitted by the Complainant (Annex 8), the disputed domain names resolve to a parking page with different commercial links to Complainant’s competitors or generally related to the maritime transports.

5. Parties’ Contentions

A. Complainant

The Complainant contends that DELMAS trademarks are very well known and submitted evidences proving said status (Annex 6).

The Complainant contends that the disputed domain name <delmasline.com> is confusingly similar to the Complainant’s DELMAS trademark, because it incorporates the entirety of the well-known DELMAS mark with the addition of the generic word “line”. The addition of said generic word is not enough to exclude the confusion because the word “line” is descriptive in the maritime transport such as it describes the itinerary of the transport CMA CGM and Delmas.

The Complainant contends that similarly, the disputed domain name <wwwdelmas.com> is nearly identical and confusingly similar to the Complainant’s well-known DELMAS mark, as it includes the mark in its entirety with the addition of “www” before the mark. Also this variation is not sufficient to distinguish the disputed domain name from the trademark owned by the Complainant or to avoid confusion.

Also the addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant to determine the confusing similarity of the domain names with a trademark or to avoid confusion.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s trademarks and name.

The Complainant states that the disputed domain names <delmasline.com> and <wwwdelmas.com> are not currently used but they resolved to a parking website which contains commercial links in relation with maritime transport at some point. This absence of use and the fact that the domain names are for sale clearly demonstrate that the Respondent does not intend to use the disputed domain names in connection with its activities.

The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith.

There is no doubt that Respondent was aware of Complainant’s rights in the trademark DELMAS when its registered the disputed domain names. Indeed the DELMAS trademark is well known, all over the world, as it results from a simple search on the Internet (Annex 10) and from the Complainant’s websites “www.cma-cgm.com” and “www.delmas.com”.

Moreover, the Respondent’s awareness of the Complainant’s trademark DELMAS is even proved by the fact that the disputed domain name <delmasline.com> incorporate the entirety of the well-known DELMAS mark with the addition of the word “line” that clearly relates to the Complainant’s activity.

The Complainant contends that the Respondent’s bad faith use of the disputed domain names is evidenced by the fact that the disputed domain names were currently connected to a parking website and were for sale. Consequently, the Respondent is using the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with the Complainant’s well known trademark and official website “www.delmas.com”.

Moreover, the Respondent is taking undue advantage from the Complainant’s trademark to generate profits. Indeed the Respondent used the disputed domain names to direct Internet users to a webpage displaying pay-per-clicks links which are likely to generate revenues for it.

Finally, the Complainant contends that the Respondent has a long history of registration and use of domain names comprising third parties’ trademarks. It provides a list of prior decisions (Annex 12) related to other proceedings under the Policy. In several UDRP proceedings, the panels have ordered the Respondent to transfer domain names. This circumstance proves that the Respondent is used to registering domain names including third parties’ well-known trademarks, in bad faith, in order to take financial advantages from the reputation of said trademarks and/or to resale the domain names to their legitimate owner.

The Complainant requests that the disputed domain names be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the disputed domain names registered by the Respondent are 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 names; and

(iii) the disputed domain names registered by the Respondent have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are nearly identical and confusingly similar to the Complainant’s DELMAS trademark, a strong, distinctive and well-known mark in which the Complainant has established rights through registration and extensive use, at least, in connection with the maritime transport.

In particular, the disputed domain name <delmasline.com> differs from the Complainant’s trademark DELMAS only for the addition of the word “line”, that is not sufficient to prevent the risk of confusion between the DELMAS trademark and the domain name. In fact the idea suggested by the disputed domain name is that the same leads to one of Complainant’s official websites and that its registration and use is authorized by the Complainant.

Indeed, the confusion is enhanced by the fact that the word “line” clearly relates to the Complainant’s field of activity, for which the DELMAS marks are registered and have been used in connection with or can be viewed as being associated therewith.

The disputed domain name <wwwdelmas.com> differs from the Complainant’s DELMAS mark only for the addition of the prefix “www”, but the adding of the prefix “www” in the disputed domain name, cannot be considered factor of differentiation (see Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441)and is not enough to prevent a confusing similarity between the disputed domain name and the incorporated trademark (see Crédit Industriel et Commercial S.A. Banque Scalbert Dupont S.A. v. Laporte Holdings, Inc., WIPO Case No. D2004-1110).

Furthermore, the disputed domain name <wwwdelmas.com> is a mistyping of the Complainant’s mark and, according with the Complainant’s view, the Panel finds that the Respondent has intentionally registered it in order to take advantage from the typographical errors made by Internet users seeking the Complainant’s website and to divert them to the Respondent’s website, and thus confusing similarity should be presumed (besides the UDRP decisions mentioned by the Complainant, see Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150; Red Bull GmbH. v. Grey Design, WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094; Telstra Corporation Ltd. v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2000-1293).

Finally, with regards to the gTLD “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit Industriel et Commercial S.A. v. Name Privacy, WIPO Case No. D2005-0457), it does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.

There is no doubt that the disputed domain names <delmasline.com> and <wwwdelmas.com> are confusingly similar to the Complainant’s trademarks. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain names, such as:

(i) use or preparation to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the disputed domain names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain names.

The Complainant states that the Respondent is not linked to the Complainant in any way, through a business or legal relationship or authorized by the Complainant to register the disputed domain names <delmasline.com> and <wwwdelmas.com>.

Furthermore, the use of the disputed domain names cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the disputed domain names the Respondent clearly intended to profit from the use of a domain name which is confusingly similar to the Complainant’s trademark DELMAS, diverting Internet users to websites where pay-per-click links exist and generate income for the Respondent.

Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain names may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain names were registered and are being used in bad faith.

In light of the evidence filed by the Complainant, the Panel finds that the Complainant’s trademarks and activities are well-known throughout the world, at least in the sector of the maritime transport. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights when it registered the disputed domain names. And indeed, the Respondent’s awareness may be inferred by the fact that one of the disputed domain names, <delmasline.com>, incorporates the DELMAS trademark in its entirety with the addition of the generic word “line” that clearly relates to the Complainant’s field of activity.

As the Panel has found that the Respondent has no rights or legitimate interests in the disputed domain names, in line with other prior UDRP decisions (Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395), the Panel believes that, given the circumstance of this case, the Respondent’s registration of domain names nearly identical and confusingly similar to the Complainant’s well-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411).

Furthermore, in the Panel’s view, the use of a proxy registration service to avoid disclosing the name and contact details of the real owner of the disputed domain names, is also consistent with an inference of bad faith in registering and using the disputed domain names (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, cited by the Complainant, and Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311).

Concerning the use of the disputed domain names, the Complainant has proven that at the time of the Complaint was filed they resolve to a web page containing several commercial links to websites where information concerning the maritime transport and other relevant services were offered. In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s services and to obtain information about the Complainant’s activity, to another variety of products and services related to the maritime transport and the sea transportation of cargoes, by creating a likelihood of confusion with the Complainant’s trademarks and business.

By exploiting the renown of the DELMAS trademark, the Respondent diverts Internet users looking for the Complainant’s website and seeks to gain profit out of the disputed domain names by providing sponsored links to several other websites (also offering goods and services of the Complainant’s competitors) and obtaining revenue from the diverted traffic (see MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325 and Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955).

Finally as proved by the Complainant, the Respondent, whose real identity and contact information were disclosed by the Registrar,after cease and desist letters from the authorized representatives of the Complainant, is a cybersquatter engaged in a pattern and practice of registering and using in bad faith domain names corresponding to the well-known trade names and/or marks of third parties. Indeed, a search in the publicly available UDRP decisions, reveals forty-five recent decisions made against the Respondent in UDRP cases covering a broad range of domain names, suggesting that the Respondent is, in this Panel’s opinion, a serial cybersquatter (see, cited by the Complainant, CBOCS Properties Inc v. WhoIs Privacy Protection Service, Inc. / ICS INC., WIPO Case No. D2013-0700, “Taking all the above circumstances into account and also the list of cases where the Respondent was found by other panels to have registered third party trade marks as domain names with the intention of exploiting, in one form or another, the goodwill associated with these trade marks, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith”).

In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain names <delmasline.com> and <wwwdelmas.com> were registered and are 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 names <delmasline.com> and <wwwdelmas.com> be transferred to the Complainant.

Alessandra Ferreri
Sole Panelist
Date: October 15, 2013