WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CMA CGM v. Zhang Peng

Case No. D2015-0172

1. The Parties

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

The Respondent is Zhang Peng of Xi’an, Shanxi, China.

2. The Domain Name and Registrar

The disputed domain name <cma-cgm.top> (the “Disputed Domain Name”) is registered with Jiangsu bangning science & technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2015. On February 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 4, 2015, 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.

On February 5, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 5, 2015, the Complainant transmitted by email to the Center its confirmation that the Complaint would be translated into Chinese and requested an extension of time to do so. On February 6, 2015, the Center granted an extension until February 20, 2015, for the Complainant to submit a Chinese translation of the Complaint. On February 16, 2015, the Complainant submitted a Chinese translation of the Complaint. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the Complaint together with the Chinese translation of 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 in Chinese, and the proceeding commenced on February 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2015.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 23, 2015. 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 an international container shipping company based out of Marseilles, France. The CMA CGM Group operates in more than 150 countries with more than 20,000 employees worldwide. The CMA CGM Group serves over 400 ports around the world. The Complainant began using the term CMA CGM in 1996. The Complainant has registered the trademark CMA CGM (the CMA CGM marks) in many jurisdictions around the world, including Asia. The Complainant provided evidence of several trademark registrations for its CMA CGM marks in Annex 5 to the Complaint. The evidence shows that the Complainant’s registrations of the CMA CGM marks began at least as early as 1999. The Complainant further provided evidence of its ownership of several domain names utilizing the CMA CGM marks, as Annex 7 to the Complaint.

The Respondent is Zhang Peng of Xi’an, Shanxi, China. The Disputed Domain Name <cma-cgm.top> was registered on November 24, 2014. The Disputed Domain Name is passively held, Annex 10 to the Complaint.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Name is identical or confusingly similar to the Complainant’s CMA CGM marks. The Respondent has no rights to or legitimate interests in the Disputed Domain Name. The Respondent registered and is using the Disputed Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

The Complainant has requested that English be recognized as the language of the proceeding. The Complainant submits that it has not been possible to identify the registration agreement for the Disputed Domain Name and thus is unable to assess the language of the proceeding on that basis. However, the Complainant bases its request on the assertion that the website of the Registrar is available in the English language and that a registration can be made in the English Language. Further, the Disputed Domain Name utilizes “.top” as a generic Top-Level Domain (gTLD), which is an English word.

The Respondent has not commented regarding the language of the proceeding. A copy of the Complaint was provided to the Respondent in the Chinese language. Thus, the Respondent’s default is not due to a lack of understanding of the language of the proceeding. Further, the Disputed Domain Name was registered in ASCII characters using the Roman alphabet, which is used by English speakers.

Taking the foregoing into account, along with the Respondent’s default, the Panel concludes that English should be the language of the proceeding.

Where a party fails to present evidence of facts in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004. Insofar as the Respondent has not responded, it is appropriate to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent. Nonetheless, paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

B. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the Disputed Domain Name must be identical or confusingly similar to the Complainant’s trademark.

As stated above, the Complainant is the registered owner of numerous CMA CGM marks in a number of jurisdictions. The record shows that the Complainant owned rights in the CMA CGM marks before the Disputed Domain Name registration. In light of the foregoing and the Respondent’s failure to provide rebuttal evidence, the Panel finds that the CMA CGM marks are distinctive and well-known by the public as indicating the Complainant’s services, and that the Complainant has rights in the CMA CGM marks.

The Complainant asserts that the Disputed Domain Name is confusingly similar to its CMA CGM marks. The Panel agrees. The Disputed Domain Name incorporates the CMA CGM mark in its entirety. It is well established that a domain name is generally confusingly similar to a mark “when the domain name includes the trademark, or a confusingly similar approximation.” Nicole Kidman v. John Zuccarini, b/b/a Cupcake Party, WIPO Case No. D2000-1415; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 (“in most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to that mark.”); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Further, the inclusion of a dash, rather than a space, between the terms “CMA” and “CGM” is insufficient to distinguish the Disputed Domain Name from the Complainant’s CMA CGM marks. See OLX Inc., OLX S.A. v. Privacy Protect / Generic Domains, WIPO Case No. D2012-1433 (“The addition of the dash does nothing to distinguish the disputed domain name from the mark, nor to dispel the risk of confusing similarity.”). Finally, the addition of the “.top” gTLD is insufficient to prevent a finding of confusing similarity. In determining whether a domain name is identical or confusingly similar to a complainant’s mark, UDRP panels have typically disregarded the gTLD or country code Top-Level Domain (“ccTLD”). See Yahoo! Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Moataz Mohsen, YAHO, WIPO Case No. DME2014-0003.

In light of the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered marks and that paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

The Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the term CMA CGM. A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the policy. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. The Panel finds that the Complainant has successfully presented a prima facie case which the Respondent has not rebutted. The Respondent filed no response. Without a response, there is nothing in the case file that indicates that the Respondent has a right or legitimate interest in the Disputed Domain Name. Further, as discussed below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent’s use of the Disputed Domain Name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the Disputed Domain Name.

The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

As discussed above, the Complainant’s CMA CGM marks are distinctive and well known. Given this, the Panel finds that the Respondent was likely aware of or should have known of the Complainant’s rights in the CMA CGM marks when registering the Disputed Domain Name. The record shows that the Complainant owned trademark rights in the CMA CGM marks that predate the creation of the Disputed Domain Name and that the Disputed Domain Name contains the Complainant’s mark in its entirety. Further, there is no evidence that the Respondent has any rights or legitimate interests in the term “cma cgm”. Where a respondent chooses to incorporate a well-known mark into a domain name without authorization, “the combination of an identical trademark in a domain name and the ensuing likelihood of confusion alone ought to be sufficient to demonstrate that the Respondent has no legitimate interest in this case.” General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645. Further, where the mark is well-known and famous, a trader would not legitimately choose it, “unless seeking to create an impression of an association” with the mark’s owner. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Respondent has not offered any argument to show this inclusion is not non-distinctive or generic, and, in the absence of a credible explanation, the most likely explanation is that is was chosen with the Complainant’s mark in mind. Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181. The Panel finds that the Respondent registered the Disputed Domain Name in bad faith.

The Complainant submits that the Respondent is using the Disputed Domain Name in bad faith. There is no evidence that the Respondent has used or intends to use to the Disputed Domain Name for purposes of a bona fide offering of goods and services over the Internet. Given the totality of the circumstances, including the fame of the Complainant’s CMA CGM mark and the Respondent’s failure to respond, the Panel finds that the Disputed Domain Name is being used in bad faith.

In light of the foregoing, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith. Thus, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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.top> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: April 7, 2015