The Complainant is CMA CGM, France, internally represented.
The Respondent is Domains By Proxy, LLC, United States of America / Jeanne Deduit, France.
The disputed domain name <cmacgm-fret.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2021. On August 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 30, 2021, 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 September 14, 2021.
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 September 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2021.
The Center appointed Vincent Denoyelle as the sole panelist in this matter on December 15, 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.
The following facts are based on the submissions in the Complaint and the Annexes to the Complaint.
The Complainant is an international group of companies specialized in container shipping, transport and logistics with its headquarters in France.
The Complainant is the owner of several trade marks for CMA CGM including the following:
- International Trade Mark CMA CGM No. 879781 registered on December 22, 2005; and
- International Trade Mark CMA CGM No. 1191384 registered on October 2, 2013.
The Complainant is also the owner of several domain names reflecting its trade mark including <cma-cgm.com> and <cma-cgm.fr>.
The Domain Name was registered on July 28, 2021. The Domain Name points to the official website of the Complainant at “www.cma-cgm.fr”.
The Complainant contends that the Domain Name is confusingly similar to the CMA CGM trade mark in which the Complainant has rights as the Domain Name incorporates the entire CMA CGM trade mark followed by a hyphen “-” and the term “fret” (French for “freight”) and that such addition does not prevent a likelihood of confusion between the Domain Name and the Complainant’s trade mark and would even increase the likelihood of confusion.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant contends that the Respondent has no registered trade mark corresponding to the Domain Name. The Complainant adds that the fact that the Respondent has redirected the Domain Name to the Complainant’s official French website proves that the Respondent does not carry out any legitimate activity under the Domain Name. Finally, the Complainant asserts 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 Domain Name.
The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant argues that the Respondent was well aware of the CMA CGM trade mark of the Complainant when it registered the Domain Name and that the term “cmacgm” is a fanciful term that immediately refers to the Complainant as shown by an Internet search. As for use of the Domain Name in bad faith, the Complainant points to the fact that the Domain Name redirects to the Complainant’s official French website in an effort by the Respondent to pass itself off as the Complainant. The Complainant contends that the DNS setup of the Domain Name with active MX records suggests that the Respondent’s goal is to use the Domain Name to send fraudulent emails to the Complainant’s suppliers or customers.
The Respondent did not reply to the Complainant’s contentions.
In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in CMA CGM, which is reproduced in its entirety in the Domain Name.
The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark CMA CGM in which the Complainant has rights.
At the second level, the Domain Name incorporates the Complainant’s CMA CGM trade mark in its entirety followed by a hyphen “-“ and the term “fret” (French for “freight”). The Panel finds that the addition of the term “fret” after the CMA CGM trade mark of the Complainant in the Domain Name does not prevent a finding of confusing similarity between the Complainant’s trade mark and the Domain Name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Then there is the addition of the generic Top-Level-Domain (“gTLD”) “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test.
Thus, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or
(iii) [the respondent] is making a legitimate non-commercial 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.
Numerous previous panels have found under the UDRP that once the Complainant makes a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name, the burden of production shifts to the Respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.
Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name.
The Complainant has stated that it has not licensed or otherwise authorized the Respondent to make any use of its CMA CGM trade mark. A trade mark search carried out by the Complainant confirms that the Respondent does not hold trade mark rights corresponding to the Domain Name. There is no indication that the Respondent is commonly known by the Domain Name.
The Respondent chose not to rebut the Complainant’s prima facie showing.
Furthermore, the use of the Domain Name to merely redirect to the Complainant's official French website cannot be considered a bona fide use in light of the overall circumstances of this case.
Finally, the nature of the Domain Name, comprising the Complainant’s trade mark in its entirety with the addition of a term which is closely associated with the Complainant’s activity, is likely to trigger an inference of affiliation especially in light of the overall circumstances of the case including the redirection of the Domain Name to the Complainant’s official French website. See section 2.5.1 of the WIPO Overview 3.0.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith.
The Domain Name reproduces the exact CMA CGM trade mark of the Complainant and this cannot be a coincidence given the overall circumstances of the present case including (i) the renown of the Complainant’s trade mark (ii) the fact that the Respondent is based in the country where the Complainant is headquartered and (iii) the targeted choice of a term appended to the CMA CGM trade mark in the Domain Name which is closely associated with the business of the Complainant.
Thus, the Panel finds that the Domain Name was registered in bad faith.
As for use of the Domain Name in bad faith, given the circumstances described in the Complaint and the evidence provided by the Complainant, the Panel considers that the Domain Name is being used in bad faith.
The use of the Domain Name to redirect to the Complainant’s official French website only serves to increase confusion that the Domain Name is somehow affiliated with or authorized by the Complainant (See PayPal Inc. v. Jon Shanks, WIPO Case No. D2014-0888 and AXA S.A., AXA Investment Managers S.A. v. Domains By Proxy, Inc. / Adam Long, WIPO Case No. D2009-0452).
This circumstance, along with the DNS setup of the Domain Name (with active MX records) and the composition of the Domain Name, lead the Panel to consider that the Domain Name could be used to deceive Internet users by impersonating the Complainant. In these circumstances, the Domain Name constitutes a potential threat hanging over the head of the Complainant.
The fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the Panel’s view that the Domain Name is being used in bad faith.
Thus, the Panel finds that the Domain Name has been registered and is also being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <cmacgm-fret.com> be transferred to the Complainant.
Vincent Denoyelle
Sole Panelist
Date: December 29, 2021