The Complainant is SGS Société Générale de Surveillance IP SA of Gland, Switzerland, represented by NOVAGRAAF, Switzerland.
The Respondent is Ashphase Inc of Douala, Cameroon; PrivacyProtect.org of Luxembourg.
The disputed domain name <sgs-cameroon.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2011. On April 13, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On April 17, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 April 18, 2011 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 April 21, 2011.
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 April 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2011. On April 23, 2011, the Respondent sent an email communication to the Center stating it is not the owner of the disputed domain name but a web hosting, design and IT Firm. The Respondent did not submit any formal response.
On May 23, 2011, the Respondent sent another email communication to the Center stating it is not the owner of the disputed domain name but simply a “commercial online agent”.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 23, 2011. 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 owns many trademark registrations for the designation SGS and its variants in several countries, including Cameroon. The trademark SGS is used by the Complainant to identify its inspection and certification services.
The Complainant is also the owner of a wide domain name portfolio on the designation SGS and its variants. In particular, the Complainant is the owner of the domain name <sgs.com>, <sgs.cm>, <sgs.com.cm>, <sgscameroon.com> and <sgscameroun.com>.
The disputed domain name was registered on October 23, 2010.
The Panel accessed the webpage placed at the disputed domain name on June 3, 2011, which constitutes of a reproduction of the Complainant's official website (“www.sgs.com”). The contact details for the SGS Cameroon's office informed at the disputed domain name differ from the one referred at the Complainant's official webpage.
The Complainant makes the following contentions:
(i) The disputed domain name is confusingly similar to the world wide famous trademark SGS. The addition of a hyphen and of the word “cameroon” is not enough to distinguish the disputed domain name from the trademark SGS and will likely be viewed by consumers in that country as an indication that the disputed domain name is associated with the Complainant and may be its national genuine business subsidiary in Cameroon.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainant has not licensed, permitted or granted any other right by which the Respondent could use any of its trademarks or any of its variations, nor to register or use it as a domain name. The Respondent is not commonly known by the disputed domain name, which was purposely created to cause a misleading impression on costumers. The Respondent’s use of the disputed domain name is evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
(iii) The disputed domain name was registered and is being used in bad faith. The disputed domain name has been being used to resolve to a website for inspection, verification, testing and certification services, namely exactly the same activity as the Complainant itself. The mark SGS is not one that a third party would legitimately choose unless seeking to create an impression of an association with the Complainant. Due to this well-known status in the field of activity of the Respondent, it could not ignore the existence of the trademark SGS. The Respondent deliberately chose to register one of the only domain name versions which was still available for the combination of “sgs” and “Cameroon”. Also, the Respondent registered the disputed domain name through a privacy service in the sole intent to hide from the Complainant and prevent any contestation from being directed against it. The Respondent has used the disputed domain name as the URL of a website using exactly the same features and elements as the Complainant’s official website at ”www.sgs.com“. The Respondent uses the website placed at the disputed domain name to deliver false information and to issue false certificates on behalf of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel has no doubt that SGS is a trademark directly connected with the Complainant’s activities in the inspection and certification businesses.
Exhibit 10 to the Complaint provides certificates of registrations of the SGS trademark in Cameroon and in several other countries.
The trademark SGS is wholly encompassed within the disputed domain name, which also includes the symbol "-" and the geographic indication "Cameroon". The Complainant offers its services in Cameroon through websites placed at domain names such as <sgs.com>, <sgs.cm>, <sgs.com.cm>, <sgscameroon.com> and <sgscameroun.com>.
Therefore, the Panel concludes that the addition of “-cameroon” is not sufficient to refute the confusing similarity between the disputed domain name and the Complainant’s trademark, required under paragraph 4(a)(i) of the Policy.
Previous UDRP decisions have demonstrated that geographical additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g.Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. [email protected], WIPO Case No. D2000-0713; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927).
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark.
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie evidence provided in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Moreover, the unauthorized reproduction of the Complainant's website at the disputed domain name - with different contact details in Cameroon - definitely can not be viewed as a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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; or
(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 web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
In the present case, the Panel clearly concludes that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, creating a likelihood of confusion with the Complainant’s mark as to the source of its services.
When the disputed domain name was registered the Complainant’s trademark SGS was already internationally recognized in the field of inspection and certification services. Therefore, it is unlikely that the Respondent could have been unaware of the Complainant’s reputation and business.
Besides that, the contents published at the disputed domain name prove the Respondent's awareness of the Complainant's trademark and services.
Furthermore, the unauthorized reproduction of the Complainant's website and the indication of a diverse contact office in Cameroon is per se enough to characterize bad faith, creating a likelihood of confusion. This conclusion is emphasized by the fact that in doing so the Respondent potentially obtains commercial revenue from this practice and deprives the Complainant from offering its products to prospective clients who are clearly looking for the Complainant.
Finally, given the circumstances of this case, the use of privacy services also amplifies the characterization of bad faith registration and use.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element 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 <sgs-cameroon.com> be transferred to the Complainant.
Dated: June 6, 2011
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