WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CMA CGM v. PrivacyProtect.org / ICS INC.
Case No. D2012-2088
1. The Parties
Complainant is CMA CGM of Marseilles, France, represented by Inlex IP Expertise, France.
Respondent is PrivacyProtect.org of Australia and ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“UK”).
2. The Domain Name and Registrar
The Disputed Domain Name <wwwcma-cgm.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2012. On October 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 27, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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, Complainant filed an amended Complaint on October 29, 2012.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2012. Respondent did not submit any response.
On December 5, 2012, it came to the Center’s attention that while the Registrar confirmed Respondent is listed as the registrant in its email of October 27, 2012, it in fact disclosed the underlying registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. Accordingly, the Center sent an email communication to Complainant on December 5, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 6, 2012.
The Center verified that the Complaint as amended 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 re-notified Respondent of the Complaint, and the proceedings commenced on December 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2012.
The Center appointed Michael A. Albert as the sole panelist in this matter on January 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
Complainant owns trademark registrations to the CMA CGM trademark including an International Registration of December 12, 2005.
Registrant registered the Disputed Domain Name on December 27, 2011.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant is a container transport company headquartered in France with offices and agencies in more than 150 countries. Complainant has been in business for 33 years and has a worldwide staff to support its operations. Complainant alleges its CMA CGM trademark is very well known and has been in use since 1997 and appears in many domain names owned by Complainant, including <www.cma-cgm.com>.
Complainant argues that the Disputed Domain Name is confusingly similar to its trademark because the Disputed Domain Name incorporates its exact trademark with the prefix of “www” and generic top-level domain (gTLD) “.com”. Complainant argues that the widespread use of “www” and “.com” in directing Internet traffic renders Respondent’s use of the prefix and suffix irrelevant for purposes of distinguishing the Disputed Domain Name from Complainant’s trademark.
Complainant further alleges that Respondent has not registered the Disputed Domain Name as a trademark and that there are no legitimate services offered through the Disputed Domain Name. Also, Complainant alleges that it has never licensed or otherwise authorized anyone to register the Disputed Domain Name.
Complainant contends that Respondent is operating the Disputed Domain Name as a parking site to gain advertisement revenue. Complainant alleges Respondent registered the Disputed Domain Name in bad faith because Complainant was already widely known at the time Respondent registered the Disputed Domain Name. Furthermore, Complainant argues the registration must have been in bad faith because the Disputed Domain Name <wwwcma-cgm.com> is obviously designed to mislead Internet users seeking <www.cma-cgm.com>, in other words Complainant’s official website. Complainant concludes that Respondent’s bad faith continues in its use of the Disputed Domain Name as a webpage displaying competing sponsored links from which Respondent is commercially benefitting.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Complainant proceeded against PrivacyProtect.org as well as ICS Inc. as Respondent and properly notified both. PrivacyProtect.org is a means to hide the actual registrant. The Registrar, when contacted by the Center for verification purposes, provided the contact details of the actual Respondent, i.e. ICS Inc. Therefore, the Panel finds that the proper Respondent is ICS Inc.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Name should be cancelled or transferred:
(i) the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Here, Respondent provided no response, and the deadline for doing so expired on December 28, 2012. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
Complainant has provided sufficient evidence that it is the owner of a valid International Registration for and makes substantial use of the CMA CGM trademark.
The Disputed Domain Name, however, is not identical to the CMA CGM trademark. Therefore, the first issue is whether the Disputed Domain Name and the CMA CGM trademark are confusingly similar.
The Disputed Domain Name combines three elements: (1) the prefix “www”; (2) Complainant’s CMA CGM trademark; and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “wwwcma-cgm”), as it is well established that the top-level domain name (i.e., “.com”) can be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006 0561. The addition of the generic letters “www” does not extinguish the similarity between the second-level portion of the Disputed Domain Name and the CMA CGM trademark. Rediff.com India Ltd. v. Weerakiat Sripunyadach, WIPO Case No. D2012-0639. These letters are insignificant modifications clearly meant to capitalize on those mistyping <www.cma-cgm.com> by forgoing the first period. Id (finding “www” is an insignificant modification as between the domain name <wwwrediff.com> and the registered trademark <rediff.com>). Thus, the Disputed Domain Name incorporates Complainant’s trademark to embody a mistyping of Complainant’s webpage “www.cma-cgm.com”.
The Panel finds the Disputed Domain Name is a case of typo-squatting and accordingly that the Disputed Domain Name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name, after which the burden of rebuttal passes to Respondent. See Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (citing Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The absence of rights or legitimate interests is established if Complainant makes out a prima facie case and Respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
It is uncontested that the use of Complainant’s trademark in the Disputed Domain Name is unauthorized. Complainant has thus made a prima facie showing that Respondent lacks rights to the Disputed Domain Name. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261. Additionally, Complainant presented uncontroverted evidence that the Disputed Domain Name was intended to divert customers from Complainant’s website through typo-squatting.
In the absence of a response, the Panel accepts as true Complainant’s allegations that Respondent is not authorized to use the CMA CGM trademark and that Respondent is seeking to mislead Internet users to Respondent’s commercial benefit. See Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). Also, the Panel agrees that Respondent does not offer any bona fide goods or services but merely uses the Disputed Domain Name to display sponsored ads.
For all of the foregoing reasons, the Panel finds that Complainant has proven that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy, paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service offered on Respondent’s website.
Respondent has failed to refute Complainant’s evidence that Complainant has well-established rights in the CMA CGM trademark, that the trademark is well known worldwide, or that the Disputed Domain Name was registered well after Complainant’s trademark was in use. These facts support a conclusion that Respondent did not innocently register the Disputed Domain Name. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its … trademarks.”); Société Air France v. R Blue, WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith”).
In addition, the Panel finds that the incorporation of the trademark with only the addition of the misleading “www” prefix in the Disputed Domain Name is a clear indication of bad faith in itself. Rediff.com India Ltd. v. Weerakiat Sripunyadach, WIPO Case No. D2012-0639 (finding the “www” prefix is evidence of bad faith). The ubiquitous use of the “www” prefix in designating webpages leads to the conclusion that Respondent intended to attract Internet users to the Disputed Domain Name for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such typo-squatting constitutes evidence of bad faith. National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.
For all the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith.
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 <wwwcma-cgm.com> be transferred to Complainant.
Michael A. Albert
Date: January 16, 2013