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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CMA CGM v. Darcy Elgrey

Case No. D2014-0297

1. The Parties

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

The Respondent is Darcy Elgrey of Bamenda, Cameroon.

2. The Domain Name and Registrar

The disputed domain name <cma-cgmgroup.com> is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2014. On February 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27 and 28, 2014, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 28, 2014.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2014.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on March 31, 2014. 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 has submitted evidence that it is the owner of a large number of trademark registrations in numerous countries for CMA CGM, including:

Community trademark CMA CGM with registration No. 004658068, filing date October 18, 2005 under priority of French trademark No. 053366726 dated June 23, 2005 and registration date January 19, 2007 for goods and services in class 12, 16, 36, 37, 38, 39, 41 and 43.

International trademark CMA CGM with registration No. 879781, registration date December 22, 2005 under priority of French trademark No. 053366726 dated June 23, 2005 for goods and services in class 12, 37 and 39.

The disputed domain name <cma-cgmgroup.com> was registered by the Respondent on November 19, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant CMA CGM is the world’s third largest container shipping and tracking company, ranked number one in France. The container transport group serves over 400 ports around the world. The Complainant’s headquarter is situated in Marseille, France and operates out of over 650 offices and agencies in more than 150 countries. The Complainant employs over 17,000 staff members worldwide.

The Complainant is the owner of numerous trademark registrations for CMA CGM all over the world.

The disputed domain name <cma-cgmgroup.com> is identical with the CMA CGM trademark except for the addition of the non-distinctive term “group”. In fact, the addition of the term “group” increases the likelihood of confusion as the term describes the corporate structure of the Complainant being a worldwide group with many subsidiaries. The disputed domain name is confusingly similar to the Complainant’s trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The fact that simple searches on the Internet for “CMA CGM”, “CMA-CGM” etc. provides only search results related to the Complainant indicates that the Complainant’s trademark is well-known. The Respondent was aware of the Complainant’s trademark when registering the disputed domain name. The disputed domain name was initially redirected to a website that was identical to the Complainant’s own website. Once the Complainant started investigating the Respondent’s website, the disputed domain name was redirected to a website that displays the following message “This Account Has Been Suspended”.

The term “Cma Cgm” is not generic. The community and international trademark databases show that all registered CMA CGM trademarks belong to the Complainant. The Complainant never licensed or otherwise authorized the Respondent to register the disputed domain name. To the Complainant’s knowledge, the Respondent has no right or authorization to use the term “Cma Cgm”, no trademark registration and is not commonly known by the disputed domain name nor using it in connection with a legitimate or fair use.

The Complainant sent a cease and desist letter to the Respondent on January 28, 2014. The Respondent never replied.

To the best of the Complainant’s knowledge, the term “Cma Cgm” does not refer to any common word in any language. Thus, it is unlikely that the Respondent registered the disputed domain name and created a website being identical to the Complainant’s website by chance. It is clear that the Respondent knew about the CMA CGM trademark. People who would be searching for information about the Complainant’s products and services could end up on the Respondent’s website and falsely believe that it is the Complainant’s website. By directing the disputed domain name to a website being identical to the Complainant’s website, the Respondent is creating a likelihood of confusion with the Complainant’s name and trademark. The Respondent’s use of the disputed domain name is disruptive to the Complainant’s business as potential customers may become frustrated or draw adverse inferences concerning the status of the Complainant’s business. Also, the current passive use of the disputed domain name reflects the Respondent’s bad faith.

The Complainant has found information indicating that the Respondent has created a fraudulent website based upon another domain name. It is the opinion of the Complainant that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant and to intentionally attract, for commercial gain, Internet uses to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

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

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark CMA CGM. The disputed domain name <cma-cgmgroup.com> incorporates the trademark in its entirety although the first part “cma” is separated from the second part “cgm” by a hyphen, which is a standard replacement for the “space” character that cannot be used in a domain name. The hyphen in the disputed domain name makes little difference in the similarity and identity analysis. See Dreamworks L.L.C. v. Carol Maleti, WIPO Case No. D2003-0548. Furthermore, the disputed domain name contains the addition of “group”, which is a descriptive term commonly used to describe a collection of parent and subsidiary corporations that function as a single entity through a common source of control. The ability for a generic term, such as “group”, to distinguish the disputed domain name from the trademark of the Complainant is very limited. In fact, since the Complainant’s business consists of a group of companies, the addition of the term “group” to the Complainant’s trademark may actually increase the risk of confusion.

Having the above in mind, the Panel concludes that the disputed domain name <cma-cgmgroup.com> is confusingly similar to the Complainant’s trademark CMA CGM and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or

(iii) that it intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant has not licensed or otherwise consented to the Respondent’s use of the Complainant’s registered trademark CMA CGM in connection with the disputed domain name <cma-cgmgroup.com>, which is confusingly similar to the Complainant’s trademark.

It has been argued by the Complainant that the disputed domain name initially resolved to a website being identical to the Complainant’s own website. The Respondent’s website currently displays the following message “This Account Has Been Suspended”. Thus, the evidence in the case indicates that the Respondent is neither making a bona fide offering of goods or services, nor a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

The Complainant’s CMA CGM trademark registration predates the registration of the disputed domain name <cma-cgmgroup.com>. In the Panel’s assessment, the Respondent’s initial direction of the disputed domain name to a website identical to the Complainant’s website “www.cma-cgm.com” indicates that the disputed domain name was registered and used with the Complainant’s business and trademark in mind. The Complainant sent a letter to the Respondent requesting that the Respondent should cease using the disputed domain name and accept to transfer it to the Complainant but the Respondent did not reply.

Furthermore, the Complainant has submitted evidence indicating that another website controlled by the Respondent is classified as a scam website in a database managed by “Artists Against 419”, an Internet community dedicated to identifying and shutting down scam websites. Although the evidence in this part is hearsay the Panel has taken the Complainant’s submission into consideration, particularly in light of the Respondent’s failure to file a Response or submit any kind of evidence. See Rules, paragraph 10(d).

Thus, the evidence in the case before the Panel indicates that the disputed domain name

<cma-cgmgroup.com> has intentionally been registered and is being used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.

There is no evidence in the case file that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <cma-cgmgroup.com> has been registered and 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 <cma-cgmgroup.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: April 11, 2014

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