WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CMA CGM v. Whois agent, Whois Privacy Protection Service, Inc. / DNS Manager, Profile Group

Case No. D2016-1036

1. The Parties

The Complainant is CMA CGM of Marseilles, France, represented by Inlex IP Expertise, France.

The Respondent is Whois agent, Whois Privacy Protection Service Inc. of Kirkland, Washington, United States of America (“United States”) / DNS Manager, Profile Group of Wilmington, Delaware, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <cma-cgmhk.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2016. On May 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 25, 2016, 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 May 30, 2016 providing the registrant and contact information disclosed by the Registrar, and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 31, 2016.

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 June 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2016. The Response was filed with the Center on June 22, 2016. The Center appointed Jon Lang as the sole panelist in this matter on July 4, 2016. 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 Domain Name was created on November 14, 2014.

The Complainant CMA CGM is the third-largest container shipping company worldwide and the largest in France. From its base in Marseille, the Complainant operates in more than 160 countries through its network of over 765 agencies, with more than 22,000 employees worldwide (4,500 in France). The Complainant serves over 420 ports around the world and operates three main activities: shipping, intermodal and logistics.

The Complainant is the owner of several trademarks, including:

- European Union trademark No. 004658068 for , registered on January 19, 2007;

- International trademark No. 879781 for , registered on December 22, 2005;

- International trademark No. 1191384 for CMA CGM, registered on February 10, 2013;

- and several trademarks in Hong Kong, including No. 303228633 for CMA CGM, registered on December 9, 2014.

The Respondent registers and acquires domain names for the purposes of deriving advertising income by the use of each such domain name in connection with a click-through service which serves as a starting point for Internet users seeking certain information.

5. Parties’ Contentions

A. Complainant

The following section is a summary of the key assertions of the Complainant.

Confusing Similarity

The trademarks of the Complainant are very well-known and have existed since 1997.

The Domain Name contains the acronyms “cma cgm” separated by a hyphen and thus it includes the trademark of the Complainant and its corporate name. The Domain Name also corresponds to many other domain names owned by the Complainant. The Domain Name includes the ISO country code for Hong Kong, where the Complainant has a presence. The letters ‘hk’ might well be understood as a geographic descriptor and is unlikely to avoid confusion with the Complainant’s trademarks. The Domain Name is thus confusingly similar to the Complainant’s well-known trademarks.

Rights and Legitimate Interests

Given the extensive registration of the Complainant’s trademarks, its corporate name and that its website at “www.cma-cgm.com” is available from anywhere in the world, the Respondent must have been aware of the existence of the Complainant’s trademarks when it registered the Domain Name.

The Respondent chose to register “cma cgm”, separated by a hyphen and in association with the ISO country code for Hong Kong, where the Complainant has interests, to cause confusion (for the consumer) with the Complainant’s own website at “www.cma-cgm.com”.

CMA CGM is not a generic term.

A simple Internet search shows that the search term CMA CGM immediately refers to the Complainant.

A search on the EUIPO and WIPO databases shows that there is no filed or registered European or International trademarks for CMA CGM belonging to anyone other than the Complainant.

If the Respondent was acting in good faith, it would have provided an explanation in response to the e-mail sent on the Complainant’s behalf on March 24, 2015.

The Complainant has never licensed or otherwise authorized anyone to reserve the Domain Name and to the Complainant’s knowledge, the Respondent has no right or authorization concerning the use of CMA CGM.

The Domain Name resolves to the website at “www.cma-cgmhk.com” which contains a list of sponsored links concerning different products and services relating to shipping, container tracking, etc. Some such links, for example, “CMA CGM Marco Polo” and “CMA CGM tracking” redirect to other sponsored links of the Complainant’s competitors. This clearly shows the bad faith of the Respondent and its intention to create confusion.

The nature of the website to which the Domain Name resolves reflects the absence of any right or legitimate interest on the part of the Respondent.

Bad Faith

Bad faith registration

The term “CMA CGM” has no specific meaning but corresponds to the Complainant’s trademarks and its corporate name which are well-known. The Respondent could not have registered the Domain Name by chance.

The Respondent’s bad faith is also demonstrated by its attempts to cover its tracks — anonymous registration with a United States registrar of a domain name including the ISO country code for Hong Kong; its lack of engagement following the communication referred to earlier of March 24, 2015; and the website to which the Domain Name resolves which is dedicated to links relating to shipping, containers, etc.

The Respondent is aware of the Complainant and the importance of its trademarks all over the world, a fact made all the more obvious given the association of the term “CMA CGM” with the ISO country code “hk” (where the Complainant has a presence).

Some Internet users looking for information about the Complainant’s products and services would undoubtedly end up at the Respondent’s website.

Bad faith use

The Domain Name is used in bad faith to make a commercial gain by taking advantage of the well-known reputation of the Complainant’s name and marks.

The Domain Name resolves to a website with sponsored links. Nearly all the links relate to container tracking and freight/shipping. This demonstrates that the Respondent wants to create confusion with the Complainant’s name and trademarks.

Companies will pay to appear on a sponsored links page and the Respondent will earn revenue when Internet users click on third-party links (some being to the websites of the Complainant’s competitors). The Respondent is therefore commercially benefiting from the likelihood of confusion created by the Domain Name.

The Respondent’s goal is to attract Internet users to its website. The exploitation of a domain name that is confusingly similar to a complainant’s trademarks in order to attract Internet users to an advertising website is not considered to be use in connection with a bona fide offering of goods and services, nor legitimate, noncommercial or fair use.

The Respondent registered the Domain Name in order to attract Internet users and to direct them to other, unconnected websites. This cannot constitute a legitimate right or interest in the Domain Name or otherwise good faith use.

The Respondent’s use of the Domain Name is disruptive of the Complainant’s business because of it being liable to create confusion between it and its competitors.

B. Respondent

Confusing Similarity

The Respondent disagrees with the Complainant’s assertion that the additions of a hyphen and the letters “hk” is insufficient to differentiate the Domain Name from CMA CGM. The second level of the Domain Name is divided (by a hyphen) into two distinct parts: (i) “cma” and (ii) “cgmhk”. The dominant part of the Domain Name is “CGMHK”. The Complainant’s mark does not contain a hyphen. A reasonable person would not be confused into thinking that <cma-cgmhk.com> is associated with the Complainant. Moreover, CMA CGM is not a famous trademark. This further supports the assertion that a reasonable person would not be confused into thinking that the Domain Name is associated with the Complainant. In the circumstances, the Complainant has failed to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Rights and Legitimate Interests

Rights and legitimate interests are not limited to trademark or service mark rights, but include equitable interests such as expectation and reliance interests associated with use of the Domain Name, prior to notice of a dispute, in connection with a bona fide offering of goods and services. The Respondent registers and acquires generic, descriptive, and otherwise non-infringing domain names for the purposes of deriving advertising income by the use of each such domain name in connection with a click-through service which serves as a starting point for Internet users seeking certain information.

Panels in prior UDRP proceedings have frequently held that a click-through service is a common business practice and constitutes legitimate use of a domain name.

The Policy does not affirmatively require a respondent to demonstrate legitimate rights or interests. The Complainant has not shown the Respondent’s use of the Domain Name to be illegitimate.

Bad Faith

Bad faith registration

Bad faith requires the Respondent’s specific intent directed towards the Complainant and arises from rights known by the Respondent to belong to the Complainant. Thus, as the Policy illustrates, a conscious and willful exploitation of the Complainant’s rights is required.

Where use has been found to be legitimate, it cannot also be found to have been in bad faith.

The bad faith element of the Policy requires an enquiry into why the Respondent registered the Domain Name – was it with intent to target or usurp the goodwill of the Complainant, or was it motivated by an independent intent, unrelated to the Complainant? The Respondent asserts that the evidence shows it is the latter.

The Complainant has provided no evidence that the Respondent knew about its CMA CGM trademarks and activities, and that that was the reason for registration.

The Respondent acquired the Domain Name on March 14, 2016, along with hundreds of other generic, descriptive and otherwise non-infringing domain names. The Complainant was not a factor in the Respondent’s decision to acquire the Domain Name. At the time of acquisition, the Respondent believed it was acquiring a domain name with a second level consisting of two strings of random letters separated by a hyphen. This demonstrates that the Respondent did not register the Domain Name in bad faith.

Moreover, as the Respondent has established a legitimate interest in the Domain Name, the Complainant cannot show that the Respondent registered the Domain Name in bad faith.

As to the assertion of the Complainant that the Respondent sought to cover its tracks, paragraph 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (the “WIPO Overview 2.0”) states that “use of a privacy or proxy registration service is not in and of itself an indication of bad faith.” There are sound reasons for use of a privacy service.

As to the assertion of the Complainant that the Respondent’s bad faith is even more obvious due to its lack of engagement with the communication sent on behalf of the Complainant, the Respondent states that as it only acquired the Domain Name on March 14, 2016, such communication was never received.

Bad faith use

The Complainant refers to “prior advertisements that were on the website associated with the Domain Name”. Such advertisements were however automated and the Respondent had no influence over them. A prior Panel has found similar circumstances sufficient to deny a finding of bad faith (Mariah Media Inc. v. First Place® Internet Inc., WIPO Case No. D2006-1275).

The Complainant has provided no evidence that the Respondent is using the Domain Name for a free ride on any mark owned by the Complainant. Nor has the Complainant demonstrated that consumers and Internet users have been or are likely to be confused or will associate the Respondent’s services with those of the Complainant.

The Complainant has failed to show that the Domain Name is being used in bad faith.

6. Discussion and Findings

As a preliminary matter, the Panel notes that the Response was received by the Center just a few minutes after midnight on June 22, 2016, one day after the due date. However, as it appears that the Response was sent on the due date at the location of the Respondent (in the United States), the Panel considers that it was timely submitted. The Panel, in its discretion, shall allow the Response into the proceedings.

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is:

(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A complainant must prove each of these three elements.

A. Identical or Confusingly Similar

The Complainant says that the Domain Name is confusingly similar to the Complainant’s trademark CMA CGM. The Respondent disagrees on the basis that the Domain Name is divided (by a hyphen) into two distinct parts: “cma” and “cgmhk”, that the dominant part of the Domain Name is “cgmhk’ and that CMA CGM is not a famous mark.

Under the UDRP, the test for confusing similarity involves a straightforward side-by-side comparison between trademark and domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name. The general approach to confusing similarity is best summarized by reference to Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227, where the Panel said: “[…] It is necessary to recognise that the term of confusing similarity is a low threshold test the purpose of which is effectively to assess whether a complainant has sufficient rights so as to give it standing to bring a complaint (see, for example, Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986). It involves a simple comparison of the mark relied upon with the domain name in issue.”

Thus, we have a “low threshold” test that involves a simple comparison of the Domain Name and mark to which it is said to be confusingly similar.

The Complainant’s mark is clearly recognizable within the domain name. Most Internet users will be familiar with the designation “hk” and are likely to assume that it is a reference to Hong Kong, i.e., that it is a geographical indicator at the end of an acronym. The acronym to which the letters ‘hk’ attach is the second limb of the Complainant’s CMA CGM mark. That “cgmhk” is separated by a hyphen in the Domain Name from the first limb, “cma”, only adds to the similarity with the Complainant’s mark, given the two limbs of the trademark are separated (albeit by a space). Given that the Complainant clearly has rights in the mark CMA CGM, the Panel is satisfied that the Domain Name and mark are confusingly similar for the purposes of the Policy.

The Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The essence of the Respondent’s answer to the Complaint on this point is that a click-through service is a common business practice and constitutes legitimate use of a domain name, that the Policy does not positively require a respondent to demonstrate legitimate rights or interests (in a domain name) and that the Complainant has not shown that the Respondent’s use of the Domain Name is illegitimate.

As to what needs to be demonstrated and by whom, the WIPO Overview 2.0 states, in relation to the question “Is the complainant required to prove that the respondent lacks rights or legitimate interests in the domain name?”, that “While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name”. (Consensus view).

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Use of a confusingly similar domain name to resolve to a web page containing links to third-party sites, some of which may be operated by competitors of the party having rights in the mark to which the Domain Name is confusingly similar, cannot, on the face of it, provide any rights or legitimate interests for the owner of the Domain Name.

It is therefore for the Respondent to demonstrate that it does have such rights or legitimate interests. A respondent may do so by showing (as envisaged by the Policy) that it is making 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 noncommercial or fair use circumstances envisaged by the Policy thus requires that the Respondent does not intend, for commercial gain, to mislead. Here, it is appropriate to refer to a point made by the Respondent when dealing with the allegation of bad faith, that it has no influence over the content of the web page to which the Domain Name resolves because such content is automatically generated. The Respondent would no doubt say that there can therefore be no “intent” to misled. The Respondent relies on a previous UDRP decision. However, the general position under the Policy on the question “Can third party or “automatically” generated material appearing on a website form a basis for finding bad faith?” is as follows: “Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content — for example, in the case of advertising links appearing on an “automatically” generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks”. (WIPO Overview, 2.0, paragraph 3.8).

The Respondent must take responsibility for what appears on the web page to which the Domain Name resolves unless it can show it has made attempts, in good faith, to avoid capitalizing on third-party trademarks. It has not done so and cannot therefore rely on any lack of intent to mislead in attempting to establish rights or legitimate interests.

While the use of domain names for sponsored links may be permissible in some circumstances (e.g., for domain names consisting of dictionary words, links related to the generic meaning of the domain name), hosting sponsored links based on trademark value is typically considered an unfair use under the Policy. (WIPO Overview 2.0, paragraph 2.6).

A respondent can demonstrate that it is has rights or legitimate interests in other ways too. For instance, it can show that it has been commonly known by the domain name or that it is using a domain name in connection with a bona fide offering of goods or services.

However, it is not itself known by the Domain Name. As to a bona fide offering, given that the Respondent is using a confusingly similar domain name to resolve to a web page containing links to third party sites (some of which may be operated by competitors of the Complainant), it cannot be said that the Respondent is using the Domain Name in connection with a bona fide offering of goods or services.

In all the circumstances, this Panel is of the view that the Respondent lacks rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on the website. (See paragraph 4(b)(iv) of the Policy). This appears to be the thrust of the Complainant’s case on bad faith although a few other points are made concerning the failure of the Respondent to respond to an email sent on the Complainant’s behalf, the Respondent’s use of a privacy service and disruption of the Complainant’s business.

The Respondent says that it could not have responded to the March 2015 communication because it only acquired the Domain Name, as part of a wider portfolio, in March 2016, and that there is nothing wrong with using a proxy service. The panel makes no findings on these issues, or in relation to disruption of business (the relevant circumstances envisaged by the Policy requiring such disruption to be the primary intention of registration).

As to the main thrust of the case on bad faith, the Respondent relies on the fact that it did not have the Complainant in mind when it acquired the Domain Name and that it should not be held responsible for the content of the web page to which the Domain Name resolves in circumstances where such content is automatically generated. For the reasons given earlier, the Panel finds that the Respondent is responsible for the content of the website to which the Domain Name resolves. Similarly, the Panel finds that the Respondent is responsible for determining whether any domain name in its bulk purchase violates a third-party’s rights, given that the Domain Name is not comprised of generic or descriptive terms. It may just be bad luck that of the several domain names acquired on March 16, 2016 by the Respondent, one, the Domain Name, was confusingly similar to a trademark of a third party. It may also be bad luck that content automatically generated on the website to which the Domain Name resolves refers to the Complainant, its services and, indirectly, those of its competitors. But to suggest, as the Respondent appears to do, that that is just tough luck for the Complainant and that the Respondent should bear no responsibility, is perverse.

The Panel is satisfied that the Respondent’s actions fall within the circumstances envisaged under paragraph 4(b)(iv) of the Policy.

The Panel thus finds that, for the purposes of the Policy, the Domain Name has been registered and is being used in bad faith.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <cma-cgmhk.com>, be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: July 14, 2016