WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Capital Fund Management v. WhoisGuard Protected, WhoisGuard, Inc. / wine cfm

Case No. D2019-2836

1. The Parties

The Complainant is Capital Fund Management, France, represented by Dechert (Paris) LLP, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / wine cfm, Luxembourg.

2. The Domain Name and Registrar

The disputed domain name (“Disputed Domain Name”) <winecfm.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2019. On November 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 20, 2019, 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 November 29, 2019 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 amendment to the Complaint on November 29, 2019.

The Center verified that the Complaint together with the amendment to 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 December 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2019.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 8, 2020. 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, Capital Fund Management, is a French company headquartered in Paris, founded in 1991.

The Complainant is the owner of the following French trademarks:

- CFM, Registration No. 3032537, registered on May 26, 2005;
- CFM, Registration No. 3695402, registered on December 1, 2009; and
- CFM – CAPITAL FUND MANAGEMENT, Registration No. 3752040, registered on July 6, 2010.

In addition, the Complainant is the owner of the domain name <cfm.fr> registered on November 13, 1997.

The Respondent registered the Disputed Domain Name on May 2, 2019.

The Disputed Domain is currently inactive. However, the Complainant submitted evidence that the website linked to the Disputed Domain Name reproduced the exact copy of the Complainant’s description in its Wikipedia page.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

Identical or confusingly similar

The Complainant states that the Disputed Domain Name <winecfm.com> is confusingly similar to the Complainant’s trademarks “CFM” as it includes the three letters C, F, and M in the same order. In addition, the reproduction of the whole CFM trademark in the Disputed Domain Name creates strong visual and phonetic similarities between the Disputed Domain Name and the Complainant’s trademark.

The Complainant further states that these similarities would lead consumers to believe that the Disputed Domain Name is related to the Complainant, by offering investment services, in the wine sector.

Rights or legitimate interests

The Complainant contends that the Respondent is not commonly known by the Disputed Domain Name. In addition, there is no company registered under the French law under the name “WineCFM”.

Moreover, the website related to the Disputed Domain Name indicates that the company would be located in Paris, London, New York, Sydney and Tokyo, but there is no indication that such company exists in those countries.

Finally, the Complainant alleges that the Respondent is not making a fair use of the Disputed Domain Name, instead the Respondent intends to obtain commercial gain by misleading divert consumers.

Registration and use in bad faith

The Complainant alleges that the Respondent registered the Disputed Domain Name in bad faith, since it has been registered primarily for disrupting the Complainant’s business. In addition, the presentation section of the Respondent’s website is the exact copy of the Complainant’s Company Wikipedia page.

Finally, the Complainant contends that the Respondent uses the Complainant’s name and reputation in order to attract Internet users.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:

“(i) the domain name is identical or confusingly similar to a trademark or service mark in the 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.”

A. Identical or Confusingly Similar

Based on the evidence submitted, this Panel finds that the Disputed Domain Name <winecfm.com> is confusingly similar to the Complainant’s trademark CFM. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only distinctive element. Furthermore, the Disputed Domain Name contains the Complainant’s CFM trademark in its entirety; the addition of the generic term “wine” does not prevent a finding of confusing similarity.

Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:

“(i) before any notice to you of the dispute, your use of, 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 at issue.”

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the CFM trademark.

The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods and services.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contention.

As such this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a) (iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Disputed Domain Name was registered in the year 2019, that is 14 years after the Complainant obtained its CFM French Trademark registration No. 3032537. The fact that the Respondent displayed the Complainant’s Wikipedia official resume in the website of the Disputed Domain Name clearly demonstrates that the Respondent was aware of the Complainant’s CFM trademark when registering the Disputed Domain Name.

Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its CFM trademark.

In addition, the Complainant submitted evidence that the Respondent’s website is used for offering investment services. Thus, Internet users might have well been under the impression that it is a website created and operated by the Complainant.

The circumstances in the case before this Panel indicate that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Name and it has intentionally created a likelihood of confusion with the Complainant’s CFM trademark and website in order to attract Internet users for its own commercial gain.

Due to this conduct, it is obvious that the Respondent intentionally created likelihood of confusion with the Complainant’s trademark and its website in order to attract Internet users for his own commercial gain, as described by paragraph 4(b)(iv) of the Policy.

The Disputed Domain Name <winecfm.com> is currently inactive. As it has been the case in several previous UDRP cases, the fact that the Disputed Domain Name is currently inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.

Therefore, taking all circumstances into account and for all above reasons, this Panel concludes that the Respondent has registered and using the Disputed Domain Name in bad faith.

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 <winecfm.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: January 23, 2020