WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CMA CGM v. David Squire / Registration Private Domains By Proxy, LLC
Case No. D2014-1691
1. The Parties:
The Complainant is CMA CGM of Marseilles, France, represented by Inlex IP Expertise, France.
The Respondent is David Squire of Limpopo, South Africa / Registration Private Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <ukcma-cgm.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 September 29, 2014. On September 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 1, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 6, 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 October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2014.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on November 6, 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 disputed domain name was created on September 6, 2014 in the name of Registration Private Domains By Proxy, LLC. The true name of the holder is David Squire of Limpopo, South Africa. The disputed domain name currently resolves to an error page.
The Complainant is a French international container transport company which claims to be the world's third largest container shipping and tracking company and is ranked No. 1 in France, serving 400 ports around the world with a fleet of 428 vessels. It owns Community trademark registration No. 004658068 filed October 18, 2005 and International trademark registration No. 879781 registered December 22, 2005. The dominant components of the trademarks are the letters CMA CGM. The Complainant holds corresponding registrations in many countries throughout the world including South Africa and the United Kingdom. Evidence provided by the Complainant shows that the Complainant’s CMA CGM trademark is widely publicized and prominently displayed throughout the world, including on the Complainant’s ships and shipping containers. The Complainant operates its website at “www.cma-cgm.com”.
The Complainant has offices in the United Kingdom in Liverpool, Glasgow, Birmingham, Southampton and Tilbury and there employs over 270 UK based staff. It has 17,000 employees worldwide.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is substantially identical to its CMA CGM trademark and the addition of the geographic descriptor UK is not sufficient to negate the confusing similarity of the disputed domain name with the Complainant’s trademark and that, on the contrary, it may add to the risk of confusion since the Complainant conducts business in the United Kingdom.
The Complaint asserts that it has not licensed or authorized the Respondent to use the disputed domain name and that the disputed domain name is not being used in the offering of bona fide goods or services. The Complainant contends that the fact that the domain name resolves to an error page is further evidence of bad faith, citing Telstra v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant contends that in view of its worldwide and very extensive reputation in its CMA CGM name and trademark and from the fact that the Respondent has adopted the letters “cma” and “cgm” in the same way as it appears in the Complainant’s domain name, i.e. with the letters “cma” separated from the letters “cgm” by a hyphen, the Respondent must have known of the Complainant’s rights in the mark and has adopted and registered the disputed domain name in bad faith.
The Complainant has produced evidence to show that over the period September 7 to September 9, 2014 (immediately after registering the disputed domain name) the Respondent used the disputed domain name in an email address […]@ukcma-cgm.com or […]@ukcma-cgm.com in correspondence claiming to be associated with the Complainant, addressed to members of the Complainant’s local companies at various locations around the world variously requesting details of the Complainant’s local travel agents, introduction to the travel agents and the booking of flights to or from, Nigeria. The Respondent did not reply to a letter from the Complainant demanding cessation of such conduct.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has well established and extensive reputation and registration rights in its name and trademark CMA CGM in many countries throughout the world. The disputed domain name wholly contains the principal verbal elements of the Complaint’s registered trademarks. The addition of the letters “uk” as a prefix to the trademark does not in any way serve to reduce the likelihood of confusion between the disputed domain name and the Complainant’s mark.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The disputed domain name does not resolve to an active website. The use being made of the disputed domain name has been as an email address in an apparently fraudulent attempt to obtain information and travel services from the Complainant and its travel agents. The Complainant asserts that it has not licensed or authorized the Respondent to use the disputed domain name and there is no evidence that the Respondent is commonly known by the disputed domain name.
The Panel finds that the Complainant has established a strong prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has not attempted to rebut the Complainant’s case.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As noted under Section 6A above, the Complainant’s name and its trademark CMA CGM have been widely used and publicized throughout the world. The Respondent has taken the verbal element of the Complainant’s trademark and has, immediately following registration of the disputed domain name, proceeded to use it for the purpose of perpetrating a scam. The inevitable inference is therefore that the Respondent registered the disputed domain name in bad faith for the purpose of such fraudulent use and that, having done so, it proceeded to use the disputed domain name as part of its email address for the purpose of fraudulently obtaining information and financial advantage from the Complainant’s employees and associates at multiple locations around the world. Such conduct is clearly use in bad faith even though it may not fall strictly within the non-limiting circumstances set out in paragraph 4(b) of the Policy.
The Panel therefore finds that the disputed domain name was registered and is being used 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 <ukcma-cgm.com> be transferred to the Complainant.
Desmond J. Ryan AM
Date: November 20, 2014