WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CMA CGM v. Domains By Proxy, LLC / Jean Schwebel

Case No. D2021-0686

1. The Parties

The Complainant is CMA CGM, France, represented by internally represented.

The Respondent is Domains By Proxy, LLC, United States of America / Jean Schwebel, France.

2. The Domain Name and Registrar

The disputed domain name <cma-cgm-business.com> is registered with Wild West Domains, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2021. On March 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2021, 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 March 10, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not wish to file an amended Complaint on March 18, 2021.

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 March 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default April 15, 2021.

The Center appointed Christophe Caron as the sole panelist in this matter on May 4, 2021. 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 CMA CGM, an international container shipping and transport Group.

The Complainant owns several trademarks CMA CGM, such as:

- International trademark CMA CGM (logo) No. 879781, registered on December 22, 2005 in classes 12, 37 and 39,
- International trademark CMA CGM No. 1191384, registered on October 2, 2013 in classes 12, 37 and 39,
- International trademark CMA CGM (logo) No. 1391139, registered on November 16, 2017 in classes 12, 37 and 39.

In addition, this Complainant operates, among other, domain names reflecting its trademarks in order to promote its products and services, such as <cma-cgm.com>.

The disputed domain name <cma-cgm-business.com> was registered on January 28, 2021. Prior to the filing of the Complaint, the disputed domain name redirected to a website similar to that of the Complainant showing pictures of vessels and containers bearing CMA CGM’ s name and logo. Currently, the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant first argues that the disputed domain name <cma-cgm-business.com> is confusingly similar to its prior trademarks and domain names. The disputed domain name corresponds exactly to the Complainant’s trademark CMA CGM, which is also the company name of the Complainant and which is included in several domain names owned by the Complainant, with the only addition of the word “business” at the end of the CMA CGM trademark. The Complainant adds that this addition of “business” is not likely to avoid the confusion. On the contrary, The Complainant considers that it increases the confusion. In consequence, the Complainant considers that the disputed domain name is confusingly similar to its trademarks and therefore the condition of paragraph 4(a)(i) is fulfilled.

Rights or Legitimate Interests

According to the Complainant, CMA CGM is a well know trademark owned by the Complainant. The Complainant considers that CMA CGM immediately refers to the Complainant as shown by a simple search on Internet. The Complainant adds that the disputed domain name is redirecting to a website showing the Complainant’s official logo and pictures of vessels and containers belonging to the CMA CGM group. According to the Complainant, it proves that the Respondent has no legitimate activity under the disputed domain name. Finally, the Complainant states that the Respondent “is not linked” to the Complainant through a business or legal relationship and has not been authorized by the Complainant to register the disputed domain name. In consequence, the Complainant considers that the Respondent has no rights or legitimate interests in respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.

Registration and Use in Bad Faith

The Complainant recalls its argument: (i) CMA CGM corresponds to several of the Complainant’s trademarks and domain names, (ii) CMA CGM immediately refers to the Complainant as shown by a simple search on Internet, (iii) the disputed domain name <cma-cgm-business.com> is redirecting to a website which shows pictures of vessels and containers bearing CMA CGM’s name and CMA CGM’s official logo appears on the website pages and (iv) the website contains no link to the Complainant’s website. In consequence, the Complainant considers that the disputed domain name was registered and is being used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

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

(ii) the Respondent has no rights or legitimate interests in respect of 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

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to trademarks registered by the Complainant.

The Complainant is the owner of several trademarks CMA CGM.

The trademark CMA CGM is entirely reproduced in the disputed domain name <cma-cgm-business.com>.

The addition of the prefix “.com” and the term “business” in the disputed domain name do not prevent a finding of confusing similarity under the first element.

The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademarks in which the Complainant has rights. Thus, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

This Panel is satisfied that the Respondent does not appear to have been commonly known by the disputed domain name, it is not a licensee or an agent of the Complainant, nor in any way is authorized to use the Complainants’ trademark.

Furthermore, the Respondent cannot claim to have been using the terms “CMA CGM”, without being aware of the Complainants’ rights.

Moreover, the disputed domain name is redirecting to a website showing the Complainant’s official logo and pictures of vessels and containers belonging to the CMA CGM group. It proves that the Respondent has no legitimate activity under the disputed domain name.

Hence, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the disputed domain name in bad faith.

It appears that “CMA CGM” refers to the Complainant and has no other signification. The addition of the term “business”, which is a general term referring to the trade/commerce, increases the likelihood of confusion since it refers to the activity of the Complainant. The Respondent could not have ignored the existence of the Complainant at the time of the registration of the disputed domain name.

The Panel therefore considers that the disputed domain name has been registered in bad faith.

The Panel notes that the disputed domain name is redirecting to a website which shows pictures of vessels and containers bearing the Complainant’s name and the Complainant’s official logo.

It appears that the goal of the registration is to redirect to a site copying the Complainant’s site. The Respondent could have the intention to promote fraudulent reservation and rip off Complainant’s customers.

For all these reasons, it appears to this Panel that the disputed domain name has been registered and is being used in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy is made out.

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-cgm-business.com> be transferred to the Complainant.

Christophe Caron
Sole Panelist
Date: May 10, 2021