WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cemex, S.A.B. de C.V. v. Malachi Smyth

Case No. DIE2018-0004

1. The Parties

The Complainant is Cemex, S.A.B. de C.V. of Monterrey, Mexico, represented by Stobbs IP Limited, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Malachi Smyth of Kildare, Ireland.

2. The Domain Name and Registrar

The disputed domain name <cemex.ie> is registered with IE Domain Registry Limited ("IEDR").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 27, 2018, by email and in hardcopy on July 10, 2018. On June 27, 2018, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On June 28, 2018, IEDR transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.

The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the "IEDR Policy"), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the "Rules"), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on July 12, 2018. In accordance with the Rules, paragraph 5.1, the due date for Response was August 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 14, 2018.

The Center appointed James Bridgeman as the sole panelist in this matter on August 21, 2018. 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 a multinational building materials company headquartered in San Pedro, near Monterrey, Mexico and is the owner of the following registered trade marks:

European Union Trade Mark ("EUTM") registration number 2749406, CEMEX CONSTRUYENDO EL FUTURO, filed on June 19, 2002, and registered on December 16, 2003 in classes 19, 35, 37, and 39;

EUTM registration number 4088159, CEMEX, filed on October 19, 2004, and registered on January 18, 2006, in classes 6, 19, 35, 37, and 39;

EUTM registration number 4088167, CEMEX, filed on October 19, 2004, and registered on January 18, 2006, in classes 6, 19, 35, 37, and 39;

EUTM registration number 9992785, CEMEX, filed on May 24, 2011, and registered on October 27, 2011, in classes 1, 11, 36, 37, 40, and 42;

EUTM registration number 011869039, CEMEX GLOBAL SOLUTIONS, filed on June 4, 2013, and registered on October 24, 2013, in classes 35, 37, and 42;

EUTM registration number 014557482, CEMEX BUILDING A BETTER FUTURE, filed on September 15, 2015, and registered on July 2, 2016, in classes 1, 4, 19, 35, 36, 37, 39, 40, 41, and 42.

There is no information available about the Respondent.

The disputed domain name was registered on February 11, 2016. The Complainant had previously registered and used the disputed domain name for its marketing operations in Ireland from 2007 until 2016, when the registration was allowed to lapse. At the time of filing, the disputed domain name resolved to a landing page prominently displaying the Complainant's trademark together with links to dating sites, massages and sex toys. The disputed domain name is currently inactive.

5. Parties' Contentions

A. Complainant

The Complainant submits that it has built a substantial goodwill and significant reputation in the use of the CEMEX name and trade mark through its own use and use by associate companies worldwide in relation to a range of goods and services as a manufacturer and distributor of cement, ready-mix concrete and aggregates in more than 50 countries. The Complainant currently operates on four continents, with 66 cement plants, 2,000 ready-mix-concrete facilities, 400 quarries, 260 distribution centers and 80 marine terminals and has had a presence in Ireland since at least 2007.

Relying on its ownership of the abovementioned trade mark registrations and its rights at common law acquired through its extensive use of the CEMEX name and mark in its business, the Complainant submits that it has rights in the CEMEX name and trade mark which it states is a Protected Identifier for the Purposes of the IEDR Policy.

The Complainant submits that the disputed domain name <cemex.ie> is identical and misleadingly similar to the Complainant's CEMEX Protected Identifier because the disputed domain name is identical to the CEMEX mark and previous panels have held the country code Top-Level Domain ("ccTLD") should be disregarded when a disputed domain is compared with a complainant's Protected Identifier.

The Complainant alleges that the Respondent has no rights in the word "cemex"as there is no reason to believe that the Respondent has been known by the name "cemex" because the Respondent has no trade mark registrations for or incorporating "cemex"; the disputed domain name does not correspond to the personal name or pseudonym of the Respondent; the disputed domain name is not being used in relation to a bona fide offering of goods and services and the Respondent is not making legitimate or fair use of the disputed domain name; and there is no evidence of the Respondent's bona fide use of, or demonstrable preparations to use, the disputed domain name in connection with an offering of goods or services.

Furthermore the Complainant states that the word "cemex"is the Complainant's name and trade mark and is not a defined word in either the Irish or the English language and refers to a search it had carried out which shows no results for the term "cemex" in the electronic Dictionary of the Irish Language or in the Oxford English Dictionary.

The Complainant submits that because it has made out a prima facie case, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights in law or legitimate interests thereby created. See, e.g., Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited, WIPO Case No. DIE2006-0001.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith, arguing that the registration of the disputed domain name that is misleadingly similar to the Complainant's trade mark by an entity that has no relationship to that mark is sufficient evidence in itself to ground a finding of bad faith.

The Complainant further argues that, bearing in mind the reputation of the CEMEX brand and the Complainant's operations in a range of activities since as early as 1930, and the fact that the Complainant had owned used the disputed domain name for its marketing operations in Ireland from 2007 until 2016 when the registration was allowed to lapse, the registrant of the disputed domain name must have been aware of the Complainant when the disputed domain name was registered. There is therefore no believable or realistic reason for registration or use of the disputed domain name other than to take advantage of the Complainant's rights.

The Respondent would therefore have known of the Complainant at the time the disputed domain name was registered because of the Complainant's prior registration of the disputed domain name and the Complainant's reputation. The Complainant submits that it follows that the Respondent has registered the disputed domain name to prevent the Complainant from reflecting its registered trade mark rights in a corresponding domain name and primarily for the purpose of interfering with and disrupting the business or activities of the Complainant.

The Complainant submits evidence in the form of a screenshot of the disputed domain name taken on May 1, 2018, which is annexed to the Complaint and illustrates that the Respondent is using the disputed domain name to generate traffic to its website which has content relating to dating, massages and sex toys which the Complainant submits has a negative impact on the image of the Complainant's CEMEX brand.

B. Respondent

The Respondent did not respond to the Complaint.

6. Discussion and Findings

Paragraph 1 of the IEDR Policy requires a Complainant to prove that:

- the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights (paragraph 1.1.1); and

- the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; (paragraph 1.1.2); and

- the disputed domain name has been registered or is being used in bad faith (paragraph 1.1.3).

The IEDR Policy further provides in paragraph 1.3 that trade and service marks protected in the island of Ireland are protected identifiers for the purpose of this Policy.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it has rights in the trade mark CEMEX through its above-listed registered trade marks and at common law through its long use of the CEMEX mark in relation to the manufacture and sale of its construction products.

The disputed domain name consists solely of the Complainant's trade mark and the ccTLD ".ie" may be ignored for the purposes of comparison in the circumstances of this case. The disputed domain name is therefore identical to the Complainant's registered trade mark CEMEX, which is a Protected Identifier for the purposes of paragraph 1.3 of the IEDR Policy.

The Complainant has therefore satisfied the first element of the test in paragraph 1.1.1 of the IEDR Policy.

B. Rights in Law or Legitimate Interest

The Respondent has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name which is a coined word and has no meaning beyond being the Complainant's trade mark in either the Irish or English languages. There is no relationship between the Complainant and the Respondent; there is no evidence that the Respondent has been known by the name "cemex" nor is there any evidence that the Respondent has any trade mark registrations for or incorporating the word "cemex"; the disputed domain name does not correspond to the personal name or pseudonym of the Respondent.

On the evidence it would appear that the Respondent is using the disputed domain name as the address of a website from which on the balance of probabilities, the Respondent or some person or entity with the consent of the Respondent is generating pay-per-click revenue from content relating to dating, massages and sex toys. It is well established under the large body of decisions made under the Uniform Domain Name Dispute Resolution Policy ("UDRP")1 that such use in and of itself does not constitute a bona fide offering of goods and services or a legitimate or fair use of a disputed domain name, where such links compete with or capitalize on the reputation and goodwill of the complainant's mark or otherwise mislead Internet users (see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). There is no reason as to why the same logic should not apply under the IEDR Policy.

In these circumstances, the burden of production shifts to the Respondent, and the Respondent has failed to discharge the burden.

The Complainant has therefore satisfied the second element of the test in paragraph 1.1.2 of the IEDR Policy.

C. Registered or Used in Bad Faith

On the evidence before this Panel, it is most improbable that the registrant of the disputed domain name was unaware of the Complainant and its CEMEX Protected Identifier when the disputed domain name was chosen and registered. The Complainant had owned and used the identical <cemex.ie> domain name for several years and had allowed it to lapse only a short time before the disputed domain name was registered.

The word "cemex" has no meaning in either the Irish or English language except as the Complainant's trade mark. On the balance of probabilities therefore the disputed domain name was chosen and registered in bad faith in order to take predatory advantage of the goodwill and reputation of the Complainant's name, business, reputation and goodwill.

Since the disputed domain name was registered, the Respondent has caused, permitted or allowed the disputed domain name to resolve to a website from which on the balance of probabilities, the Respondent or some person or entity with the permission of the Respondent is, generating pay-per-click income. Given that the disputed domain name is identical to the Complainant's unique Protected Identifier it is most probable that Internet users will be misled, at least initially, into believing that there is some connection or association between the Complainant and the disputed domain name.

By using the disputed domain name to gain financial reward in such circumstances, by taking predatory advantage of the Complainant's trade mark and misleading Internet users by intercepting Internet traffic intended for the Complainant, the Respondent is using the disputed domain name in bad faith.

The Complainant has therefore satisfied the third and final element of the test in paragraph 1.1.3 of the IEDR Policy and is entitled to succeed in this Complaint.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 14 of the Rules, and subject to paragraph 6.1 of the IEDR Policy, the Panel orders that the disputed domain name <cemex.ie> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: August 27, 2018


1 Due to the similarities between the IEDR Policy and the UDRP, the Panel refers to prior UDRP decisions where appropriate.