The Complainants are Delmas of Le Havre, France and CMA CGM of Marseille, France, represented by Inlex IP Expertise, France.
The Respondent is K Wall of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain names <delmastracking.com> and <delmastracking.net> are registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2012. On July 17, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On the same date, GoDaddy.com, LLC 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2012.
The Center appointed Torsten Bettinger as the sole panelist in this matter on August 17, 2012. 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 Complainants are two French companies engaged in the business of commercial container shipping. The first Complainant, Delmas, is the subsidiary of the Second Complainant, CMA CGM, and is currently the holder of the DELMAS trademark. The Second Complainant, however, is in the process of incorporating the First Complainant, and will shortly assume all assets of its subsidiary including its rights in the DELMAS trademark. Accordingly, the two companies have elected to bring the Complaint jointly. The DELMAS trademark was first registered in 1990 and is protected in numerous jurisdictions, including France, Austria, the United Kingdom, Benelux, Italy, Germany and the United States of America.
The Complainants are engaged in the business of container shipping, utilizing a fleet of roughly 400 ships and serving over 150 countries around the world. Clients of the Complainants are provided with unique tracking numbers which enable them to monitor the progress of their shipments. By entering this number into an online search box function, referred to on the Complainants’ websites as “container tracking”, the client (or its recipient) can determine where the shipped goods are located and view the anticipated delivery date of the products. The Complainants operate websites at “www.cma-cgm.com” and “www.delmas.com”.
The disputed domain name <delmastracking.com> was registered on April 25, 2011, and the disputed domain name <delmastracking.net> was registered on May 25, 2011. The disputed domain names connect to similar web content, as the websites active at each domain name display both general information related to the importance of container shipping in the global marketplace and some basic background information about the Complainants’ business. Numerous pay-per-click links are displayed throughout the pages, some for goods and services related to those offered by the Complainants (including those of the Complainants’ competitors) and some for unrelated goods, as well as embedded video feed which appears to bear no relation to the other content available on the sites.
In order to obtain further information about the Respondent and its potential activities, the Complainants hired a private investigator. The results of the investigation indicated that the Respondent was no longer authorized to conduct business in the Cayman Islands, and that the address information provided in the WhoIs records may be incorrect.
The Complainants assert that all of the necessary elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainants argue that the disputed domain names are confusingly similar to the DELMAS trademark as they fully include the trademark followed by the descriptive term “tracking”, which is indicative of a service provided by the Complainants.
The Complainants further contend that they have not authorized the Respondent to use the DELMAS trademark in any fashion, that the Respondent has no connection to the Complainants, and that the Respondent is not using the disputed domain names in connection with any bona fide commercial, noncommercial or fair use. The Complainants note that no information is available to suggest that the Respondent has trademark rights in the term “delmas” and argue that, due to the notoriety of their mark, the Respondent must have been aware of the Complainants and their rights at the time it selected the disputed domain names.
Finally, the Complainants allege that the Respondent registered the disputed domain names with full knowledge of their business activities and DELMAS mark, as indicated by the content displayed on the Respondent’s websites. The Complainants assert that the use of the domain names in connection with pay-per-click advertising is evidence of the Respondent’s bad faith registration and use of the domain names under paragraph 4(b)(iv) of the Policy. Furthermore, the Complainants note the Respondent’s use of the copyright sign at the bottom of its websites, which the Complainants allege may lead to further consumer confusion as to whether or not the Complainants control the content available on the disputed domain names.
The Respondent did not reply to the Complainants’ contentions.
Before turning to an assessment of the substantive elements of the Policy, the Panel must first determine whether the Complaint has been properly filed by two distinct entities. Previous UDRP panels have considered the issue of multiple complainants, and have established that where both parties have an interest in the relevant trademark (including where, as here, the parties are a parent company and its subsidiary) it may be appropriate for the parties to bring the complaint in tandem. See Unilever PLC and Unilever N.V. v. Umair Sheikh, Domain names, Micronix, Essential Links, Pemac, AAR Communications, INT, abc, PMSS Lahore, WIPO Case No. D2008-1790 and adidas International Marketing BV and adidas-Salomon AG v. Sonia Eguia, WIPO Case No. D2006-0475.
Accordingly, the Panel accepts the Complaint as filed by both Complainants, and will proceed to the substantive elements of the Policy.
The disputed domain names are comprised of the Complainants’ DELMAS trademark and the dictionary word “tracking”, registered in both the “.com” and “.net” gTLD spaces. Previous panels have established that the addition of generic or dictionary terms which are descriptive of a complainant’s goods or services will generally not serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco, WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd., WIPO Case No. D2009-1616; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.
Furthermore, it is well established that a gTLD suffix is generally irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainants’ DELMAS trademark, and that the first element of the Policy has been satisfied.
Paragraph 4(a)(ii) of the Policy requires the Complainants to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is the consensus view among WIPO UDRP panelists, however, that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this case, the Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainants confirm that they have not licensed or authorized the Respondent to use the DELMAS trademark in any fashion and that there is no connection between the Respondent and the Complainants. There is no evidence on the present record, on the websites active at the disputed domain names, or in the publicly-available WhoIs records to indicate that the Respondent is commonly known by the domain names or a name corresponding to the domain names. Additionally, as discussed below, the websites display pay-per-click links through which the Respondent appears to generate revenue. Thus, the Respondent is clearly not making a noncommercial or fair use of the disputed domain names.
The Respondent’s websites display some general information more or less related to the Complainants’ business activities, as well as a large number of pay-per-click links. Many of these links relate to goods and services similar to those offered by the Complainants, and some direct Internet traffic to the websites of the Complainants’ competitors. The Respondent thus uses the Complainants’ trademark, and the name of their shipment-tracking service, to earn pay-per-click revenue. Such use of the disputed domain names to generate revenue via sponsored links does not constitute a bona fide offering of goods or services. See Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404 and Lego Juris A/S v. Young entrepreneur success, Trian Tego Utomo MSA, WIPO Case No. D2010-0354.
The Respondent has not replied to the Complaint, and as such has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain names.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) is also satisfied.
The Complainants have demonstrated that their DELMAS trademark has been widely used in commerce and that it has enjoyed protection as a registered mark since at least 1990, over twenty years prior to the Respondent’s registration of the disputed domain names. The domain names contain the Complainants’ trademark in combination with the term “tracking”, which is indicative of the Complainants’ “container tracking” service. The Respondent has used the domain names to display text relevant to the Complainants’ business activities to lend an air of authenticity to the sites, in addition to providing a wide array of pay-per-click links. Thus, it is clear to the Panel that the Respondent was fully aware of the Complainants and their DELMAS trademark when it selected the disputed domain names.
Furthermore, by fully incorporating the DELMAS trademark in the disputed domain names and using the domain names in connection with landing pages providing links to third parties’ websites, the Respondent was, in all likelihood, trying to divert Internet traffic intended for the Complainants’ website to its own for commercial gain by creating a likelihood of confusion with the Complainants’ mark. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267 and F. Hoffmann-La Roche AG v. DOMIBOT, WIPO Case No. D2006-0327.
The Panel therefore concludes that the requirements of paragraph 4(a)(iii) of the Policy have also been met.
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 names <delmastracking.com> and <delmastracking.net> be transferred to the Second Complainant, CMA CGM.
Torsten Bettinger
Sole Panelist
Dated: August 20, 2012