The Complainant is CMA CGM of Marseilles, France, represented by Inlex IP Expertise, France.
The Respondent is Leme Asso of Yaoundé, Cameroon.
The disputed domain name <delmaslines.com> is registered with NetEarth One Inc. d/b/a NetEarth (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2015. On November 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2015, 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 Complainant filed an amended Complaint on November 19, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 11, 2015.
The Center appointed Cherise Valles as the sole panelist in this matter on December 16, 2015. 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 Complainant is the third-largest container shipping company in the world, and the largest in France. It serves over 450 ports around the world, operates in more than 160 countries through its network of over 655 agencies, and has more than 20,000 employees worldwide.
The Complainant owns the company Delmas. Delmas is specialized in the global sea transportation of cargoes to and from Africa (including Cameroon, the Respondent's country) and is the largest cargo carrier between European and African ports. It is the only company to offer 15 direct lines into West and East Africa from all over the world plus the necessary feeder network to serve all markets.
The Complainant is the owner of multiple trademark registrations throughout the world for the mark DELMAS. These include the following:
- AIPO (which includes Cameroon, the Respondent's country) trademark registration No. 80949 for DELMAS, registered in class 39 on December 6, 1991;
- AIPO (which includes Cameroon, the Respondent's country) trademark registration No. 3200601129 for DELMAS, registered in class 39 on November 15, 2006;
- International trademark registration No. 564337 for DELMAS, registered on December 13, 1990, in class 39;
- International trademark registration No. 891733 for DELMAS, registered on June 21, 2006, in class 39;
- International trademark registration No. 892181 for DELMAS, registered on May 26, 2006, in class 39.
The Complainant has also registered the trademark DELMAS as a domain name under several generic Top-Level Domains ("gTLDs") and country code Top-Level Domains ("ccTLDs") worldwide, among these; <delmas.com> and <delmasline.com>.
The disputed domain name <delmaslines.com> was registered on August 10, 2015.
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar or identical to the Complainant's registered trademark, DELMAS, in light of the fact that it wholly incorporates the Complainant's mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
- the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
The complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant.
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.
The Complainant is the sole and exclusive owner of the DELMAS mark. The Complainant is the owner of multiple trademark registrations in Africa and worldwide for the trademark DELMAS, as indicated in Section 4 above.
The disputed domain name <delmaslines.com> wholly incorporates the term "delmas", which is identical to the trademark DELMAS registered by the Complainant as trademarks and domain names in countries all over the world. Earlier UDRP decisions have held that when a domain name wholly incorporates a complainant's registered trademark, it is typically sufficient to establish confusing similarity for purpose of the Policy. See, among others, Alstom v. FM Laughna, WIPO Case No. D2007-1736. Furthermore, the term "delmas" has no meaning in the English language. It is highly distinctive and refers to the Complainant, and reproduction of this term in the disputed domain name is likely to create confusion.
It is a long-established precedent that confusing similarity is generally recognized when trademarks are paired up with different kinds of generic prefixes and suffixes. See Compagnie Générale des Etablissements Michelin and Michelin Recherche et Technique S.A. v. Eijiobara Obara, WIPO Case No. D2012-0047. The addition of the suffix "lines" does not affect the overall impression of the dominant part of the name, DELMAS, instantly recognizable as a registered trademark. The addition of "lines" could, in fact, increase the likelihood of confusion, as the term is frequently used in the maritime transport industry – for example, "shipping line" designates a company engaged in sea transport. Finally, the addition of ".com", a gTLD suffix, is non-distinctive and is without legal significance when assessing the identity or confusing similarity of a domain name to a complainant's prior trademark rights. See, for example, LEGO Juris A/S v. Mariusz Zielezny, WIPO Case No. D2010-0796.
In the light of the foregoing, the Panel finds that the disputed domain name <delmaslines.com> is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that he has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: "Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Complainant has registered the trademark DELMAS in Africa and around the world. The Complainant submits that the Respondent is not in any way associated with the Complainant and has never received authorization or a license to use the Complainant's DELMAS mark in any way or manner, including registering a domain name containing the mark. Previous UDRP panels have found that in the absence of any license or permission from the complainant to use the relevant trademark, no actual or contemplated bona fide or legitimate use of the domain name can reasonably be claimed (see Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188).
"Delmas" is not a generic term. It is highly distinctive and refers to the Complainant. The Complainant's DELMAS trademark is widely known in Cameroon and around the world in the shipping sector. The Complainant's registration of the trademark DELMAS preceded the Respondent's registration of the disputed domain name by many years, as indicated in Section 4 above. The Complainant's website "www.delmas.com" is accessible (in English) from every country in the world. The Respondent cannot claim to have been using the trademark DELMAS without having been aware of the Complainant's rights to it. This suggests that the Respondent's interests cannot have been legitimate. Furthermore, the disputed domain name <delmaslines.com> redirects to a website that mirrors the Complainant's own "www.delmas.com". This suggests that the Respondent was aware of the Complainant's trademarks and activities and wanted to take advantage of these for his own gain.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) 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;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
The Respondent does not have any license or permission to make use of the Complainant's trademark. Previous UDRP panels have held that in the absence of such permission, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See Alstom, Bouygues v. Webmaster, WIPO Case No. D2008-0281.
As stated above, the term "delmas" refers only to the Complainant. The Complainant's DELMAS trademark was registered decades before the disputed domain name and was widely known in numerous countries around the world, including in Cameroon. The Respondent must have been aware of the existence of the Complainant's rights in the trademarks when registering the disputed domain name. This is supported by the fact that the disputed domain name resolves to a website identical to the Complainant's website in all but the contact details of the DELMAS office in Cameroon. Previous Panels have held that the registration of a domain name obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith. See, among others, LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494. Moreover, the mere registration of a domain name that is confusingly similar to the Complainant's trademark can be taken as an act of bad faith, since the Respondent appears to be attempting to attract users to its website by relying on the likelihood of confusion with the Complainant's DELMAS mark.
The Respondent also registered the domain name <superfrangocompany.com> on August 10, 2015. SUPER FRANGO is a Brazilian company in the food industry. The domain name redirects to a website with only one page containing an inaccessible file. The Respondent does not appear to have any link with this company. This suggests that the Respondent has registered the disputed domain name in order to take advantage of the SUPER FRANGO name and to use this website, too, for fraudulent purposes. The Respondent should be considered to have registered, and to be using, the disputed domain name in bad faith, as part of a wider pattern of exploiting foreign brands.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
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 <delmaslines.com> be transferred to the Complainant.
Cherise Valles
Sole Panelist
Date: December 30, 2015