WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CMA CGM v. Jea Geelen Geelen

Case No. D2016-1418

1. The Parties

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

The Respondent is Jea Geelen Geelen of Bowser, Canada.

2. The Domain Name and Registrar

The disputed domain name <cma-freights.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2016. On July 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2016, 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 Center verified that the 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 July 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2016.

The Center appointed Antony Gold as the sole panelist in this matter on August 16, 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 Complainant is a substantial, international shipping company which has its headquarters in Marseille, France. It operates, through a network of agencies, in over 160 countries and has over 29,000 employees. Its full trading name is the CMA CGM Group but this is commonly shortened to CMA CGM. The Complainant has secured trade mark protection in multiple jurisdictions for both CMA CGM and also for CMA. Its trade marks for CMA include International trademark No. 502706 registered on April 30, 1986 in classes 35 and 39.

The disputed domain name was registered on February 7, 2016. At least in March 2016 the disputed domain name redirected to a website at “www.cma-logestics.com”. That website closely replicated the design and content of the Complainant’s corporate website. Features evidently taken from the Complainant’s website included (by way of example only) use of its logo, a banner featuring pictures of some of the Complainant’s boats and sections of the website which contained corporate and business news about the Complainant as well as a purported Container Tracking facility.

On July 4, 2016, the disputed domain name pointed to a holding page which provided the name of the hosting company and a brief statement, in multiple languages, that “This website is not in use yet”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, first, that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. In support of this contention, the Complainant has provided details of registered trade marks it owns in multiple jurisdictions for various CMA-related trading styles including (in stylized form) CMA CGM|LOG, CMA CGM LOGISTICS and CMA CGM as well as (in word only form) CMA and CMA CGM. The Complainant says that CMA has been used as a root brand for a family of CMA-related subsidiaries, such as CMA Ships, CMA Terminals and CMA Logistics and that, as a consequence, it is also known by the term “CMA” alone.

The Complainant says that the use of the word “freights” after that of “CMA” in the disputed domain name is likely to increase, rather than reduce, the likelihood of confusion for Internet users because “freights” describes one of the Complainant’s principal activities. The probability of confusion is exacerbated, says the Complainant, because the disputed domain name is likely to be perceived as relating to a further member of its family of “CMA” services. In support of this contention, the Complainant relies on a Google search it has conducted for the words “cma-freights” and the fact that the first page of the results relate entirely to the Complainant.

Second, the Complainant says that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. It draws attention to the website at “www.cma-logestics.com” to which the disputed domain name pointed in March 2016, which had evidently been copied wholesale from the Complainant’s website, and says that whilst the disputed domain name now points to a website which comprises solely a holding page, the website at “www.cma-logestics.com” still contains a link to it. Registration of the disputed domain name for the evident purpose of pointing it to such a website, the Complainant asserts, does not give the Respondent a right or legitimate interest in it. The Complainant says also that the word “CMA” is clearly not a generic term, as is evident from a Google search it has conducted against “CMA”, in which the first page of results relate solely to the Complainant. It also says that the absence of any right or legitimate interest on the part of the Respondent is evident from the fact that a search on the WIPO Global Brand Database does not reveal any trade mark for CMA registered in the name of the Respondent. Moreover, the Complainant says, the Respondent is not linked to it through a business or legal relationship and has not been authorized by it to register the disputed domain name.

Lastly, the Complainant asserts that the disputed domain name was registered and used in bad faith. So far as bad faith registration is concerned, the Complainant points out that the word “CMA” has no specific meaning in the English language and that the Respondent cannot have registered the disputed domain name by chance. This is particularly the case as the Respondent chose to couple the word “CMA” with the word “freights” which is clearly descriptive of the Complainant’s services in the field of maritime transport. In addition, the Complainant says that the form of the disputed domain name echoes the format the Complainant has adopted to describe its various services, such as CMA Ships and CMA Terminals. Accordingly, the Respondent would have known that confusion was likely to be caused by its registration of the disputed domain name to those members of the public aware of the Complainant. For these reasons, the Complainant says, the Respondent’s evident knowledge of the Complainant’s reputation, trade marks and activities as at the time of registration of the disputed domain name indicates that it was registered in bad faith.

As evidence of bad faith use, the Complainant sets out the numerous features of the website at “www.cma-logestics.com” to which the disputed domain name pointed shortly after registration which have plainly been taken directly from the Complainant’s website. It says that the pointing of the disputed domain name to a replica of the Complainant’s website was a fraudulent and bad faith use of the disputed domain name and had evidently been done in order to create confusion to Internet users visiting the website and to enable the Respondent to take advantage of the Complainant’s substantial repute in the field of shipping and logistics services.

Whilst the disputed domain name now points to a holding page, the Complainant asserts and relies on the finding in Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2003-0003, that “inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith”. Moreover, the Complainant says, even if the disputed domain name does not presently redirect to the website at “www.cma-logestics.com”, it is likely that, at some future date, it will point once again to this website, or to another website which infringes the Complainant’s rights. Accordingly the disputed domain name is being used in bad faith.

Finally, as an additional ground for finding bad faith, the Complainant draws attention to another domain name registered by the Respondent which appears to be a misspelling of the name of a business owned by an unrelated third party based in England in which, it says, the Respondent has no evident interest.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

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

A. Identical or Confusingly Similar

The schedule of registered trade marks owned by the Complainant includes numerous trade marks which include the word “CMA”, five word-only trade marks for CMA solus, and many trade marks for CMA CGM. The Complainant’s website mentions that other subsidiaries include CMA Ships, CMA Terminals and CMA CGM Logistics. However, there is little, if any, evidence of use by either the Complainant or third parties of the term “CMA” alone as a means of referring to the Complainant or that it is commonly used as a “root” brand for describing either services provided by, or subsidiaries owned by, the Complainant. Indeed the Complainant’s website almost invariably uses the term “CMA CGM” as a means of referring to its business. Furthermore, consideration of the results produced by searches on Google for “CMA” or “cma-freights” is not a reliable means of ascertaining the extent of the Complainant’s repute in these terms as unsponsored search results can be heavily influenced by search engine optimization processes.

Nonetheless, the Complainant’s trade mark portfolio includes valid and subsisting word only trade marks for CMA solus and it accordingly has rights in this word. Moreover, the Complainant’s CMA CGM mark is evidently well known internationally in its field and, in that context, the first element of this trade mark, namely CMA, is likely to be associated by the shipping and logistics community with the Complainant’s business.

The disputed domain name is not identical to any of the Complainant’s trade marks but it is confusingly similar to the Complainant’s CMA trade marks. The first element of the disputed domain name is identical to the Complainant’s CMA trade marks and the disputed domain name in its entirety is confusingly similar to them. This is particularly the case as it is established practice, when assessing the degree of similarity between a disputed domain name and a complainant’s trade mark, to disregard the generic Top-Level Domain (“gTLD”) suffix “.com”. Moreover, as the Complainant says, its reputation in the field of shipping and logistics is such that a domain name comprising the word “freights”, in conjunction with, and following, the word “CMA” will be assumed by Internet users aware of the Complainant, to be a reference to the Complainant’s activities in the field of freight shipping.

The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:

(i) before any notice of the dispute, it can show use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) it can show that (as an individual, business, or other organization) it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or

(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

None of these grounds are applicable to the current facts. The only known active use which the Respondent has made of the disputed domain name, has been to point it to a third party’s website the form and content of which has been lifted wholesale from the Complainant’s website. This website is plainly intended to mislead Internet users into believing that it is run by, or on behalf of, the Complainant. This use is, self-evidently, not in connection with a bona fide offering of goods and services.

Different considerations might apply now that the disputed domain name points to a holding page. Whether use of a domain name to point to a parking or landing page might enable a respondent to assert that it thereby has a legitimate interest in the disputed domain name is fact-specific. Previous panel decisions have found that using domain names for generic words to point to parking pages can sometime be sufficient to support a finding that a respondent has a legitimate interest in a disputed domain name; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), section 2.6 and, by way of example, the decision of the panel in Havanna S.A. v. Brendan Hight, Mdnh Inc, WIPO Case No. D2010-1652).

However, the disputed domain name is not generic in character and will be readily perceived by many Internet users as referring to the Complainant’s business. Moreover, the initial use of the disputed domain name to point to what was a replica of the Complainant’s website was not a use which fell within the circumstances outlined at paragraph 4(c) of the Policy. The fact that the holding page to which the disputed domain name presently points is seemingly innocuous does not assist the Respondent because, now that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name (and as explained in WIPO Overview 2.0) the burden of production shifts to the Respondent to rebut that inference. As the Respondent has failed to reply to the Complaint and thereby declined to take the opportunity available to it to provide evidence which might suggest that it has a right or legitimate interest in the disputed domain name it reasonable to infer that it has nothing to say which might assist its position.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s submission that the components of the disputed domain name comprising the first part of the Complainant’s name coupled with one of its principal trading activities are such that the Respondent would have been well aware that Internet users familiar with the shipping industry were very likely to associate it with the Complainant and its activities in the field of freight shipping and that this is precisely why the Respondent chose to register it. As the Complainant says, the only motive the Respondent could have had for doing so and then pointing the disputed domain name to a website which largely replicates the Complainant’s website would have been to cause confusion to active or prospective customers of the Complainant and to others involved in the Complainant’s fields of activity, all of whom are likely to think that the website is run by, or is otherwise connected with, the Complainant.

The fact that the disputed domain name does not presently point to that website does not dispel a finding that the disputed domain name has being used in bad faith. First, as the Complainant says, it is perfectly possible that the disputed domain name will at some future date point, once again, to that website or to a similar website. Second, the circumstances of this case have close similarities to those which supported a finding of bad faith use in Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In particular, the Complainant’s trademark has a strong reputation and is widely known, the Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name and it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not be illegitimate.

Paragraph 4(b) of the Policy sets out a number of non-exhaustive circumstances in which bad faith registration and use will be found. These include, at paragraph 4(b)(iv), circumstances in which 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 web site. The website at “www.cma-logestics.com” does not seem to have been owned by the Respondent and the disputed domain name does not presently point to it, but the Respondent’s conduct is in all other respects within the circumstances described at paragraph 4(b)(iv) of the Policy.

The Panel accordingly finds that the disputed domain name has been registered and is being used in bad faith. It is not therefore necessary to deal with the additional ground for a bad faith finding put forward by the Complainant.

7. Decision

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 <cma-freights.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: August 24, 2016