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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cap Gemini v. Manila Industries Inc./“Cap Gemini”

Case No. D2006-0027

 

1. The Parties

The Complainant is Cap Gemini, Paris, France, represented by Herbert Smith LLP, France.

The Respondent is Manila Industries Inc./“Cap Gemini”, Santa Ana, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <capgemni.com> is registered with Compana LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2006. On January 12, 2006, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On January 20, 2006, Compana LLC transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 7, 2006. 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”), 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 April 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2006.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on May 5, 2006. 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

Cap Gemini is the owner of several trademarks in Europe, the Americas and in Asia, including the following trademarks:

- French Trademark CAP GEMINI filed on October 21, 1996, and registered under number 96647486 for use in connection with goods and services of classes 09, 35, 38, 41 and 42, including the following products and services: “Business assistance for industrial and commercial companies, Recruitment of personnel, Communication by computer terminals, electronic messaging”.

- Community Trademark CAP GEMINI filed on April 3, 1997, and registered under number 000527978 for use in connection with goods and services of classes 09, 35, 38, 41 and 42, including the following products and services: “Business assistance for industrial and commercial companies, Recruitment of personnel, Communication by computer terminals, electronic messaging”.

- US Federal Trademark CAP GEMINI filed on April 21, 1997, and registered under number 2673482 for use in connection with goods and services of classes 09, 35, 36, 38, 41 and 42 including the following products and services: “Business management and consultation, business information in the fields of business, Electronic transmission of Data and documents via computer terminals and electronic mail services”.

 

5. Parties’ Contentions

A. Complainant

i. The <capgemni.com> domain name is identical or confusingly similar to the CAP GEMINI trademarks or service marks in which the Complainant has rights.

1. Presentation of Cap Gemini and of the rights owned by Cap Gemini.

1.1 Presentation of Cap Gemini

Cap Gemini group (Cap Gemini SA and its affiliates) is a global leader in IT consulting, technology, outsourcing, and local professional services, which operates in all major countries within Europe, Asia and North America, including the United States of America.

Cap Gemini group employs over 60, 000 people around the world and is well-known for its high quality services.

Cap Gemini group markets its services under the CAP GEMINI trademarks.

1.2 Trademarks and other rights owned by Cap Gemini in its commercial name, corporate name and domain name.

The sign “Cap Gemini” has been Cap Gemini’s commercial and corporate name since 1967. The Complainant carries on its business under this name in Europe, the Americas and in Asia.

The Complainant has also operated the “www.capgemini.com” website since October 17, 1995.

The Complainant has invested and continues to invest important sums in advertising and communication to develop and maintain its reputation.

2. The <capgemni.com> domain name is confusingly similar to the CAP GEMINI trademarks.

It has been decided by previous panels that “the essence of the Internet is its world wide access” and that therefore “the propriety of a domain name registration may be questioned by comparing it to a trade mark registered in any country” (Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).

It has also been decided by previous panels that confusing similarity depends on the similarity of sound, appearance and idea suggested by the trademark and the domain name (Sharman License Holdings, Limited v. Icedlt.com, WIPO Case No. D2004-0713).

Furthermore, in previous UDRP decisions relating to the practice of “typosquatting”, which arises where the domain name is a slight alphabetical variation of a registered trademark, the panels have found the circumstances of “typosquatting” to constitute confusing similarity (Deutsche Bank AG v. New York TV Tickets Inc., WIPO Case No. D2001-1314 and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201).

In particular, it has been decided that a misspelling of a complainant’s name and trademark such as the omission of a letter amounts to confusing similarity (Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299). In the Pfizer case, the domain name <pfzer.com> was found to be identical to Pfizer Inc.’s trademarks, except for the omission of an “i”.

In the present case, according to the relevant UDRP decisions, the fact that the CAP GEMINI trademarks are registered in France, in the European Community and in the United States of America enables the Complainant to question the propriety of the <capgemni.com> domain name which was registered in the United States of America.

Indeed, there is a confusing similarity between the <capgemni.com> domain name and the CAP GEMINI trademarks visually, phonetically and conceptually.

Visually the domain name <capgemni.com> is identical to Cap Gemini’s trademarks, except for the omission of an “i”. This is a clear case of “typosquatting” which as such is sufficient to constitute confusing similarity.

Phonetically, both signs are composed of five syllables. The first “i” in the sign “Cap Gemini” is a silent letter which is not pronounced. Hence, the signs “Cap Gemini” and “capgemni” are pronounced in an identical way and are virtually identical.

Conceptually, both signs may relate to the notions of “cape”, which is a point or head of land towards which one is heading, and “gemini”, which is a constellation in the Northern Hemisphere containing the stars Castor and Pollux. Hence, both signs suggest the same idea of heading towards the stars.

Moreover, the <capgemni.com> domain name resolves to a website which advertises computer and software services, business services, recruitment services and other services similar to those marketed by Cap Gemini, and reproduces in full the CAP GEMINI trademarks.

Hence, there is a very strong likelihood of confusion with Cap Gemini’s official website and it should be decided that the <capgemni.com> domain name is confusingly similar to the CAP GEMINI trademarks.

ii. The Respondent has no rights or legitimate interests in respect of the <capgemni.com> domain name.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

“(i) before any notice to you of the dispute, your 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) 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 non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

1. Manila Industries is not using the <capgemni.com> domain name in connection with a bona fide offering of goods and services.

It has been decided by previous panels that a bona fide offering of goods or services requires, at a minimum, that the Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No D2001-0903).

Moreover, the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No D2001-0903).

Finally, it has been decided that where there is no evidence that the Complainant authorized the Respondent to use the Complainant’s trademark, these circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent (Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400).

In the present case, Manila Industries uses the domain name to advertise a wide range of products and services which are not goods and services originating from Cap Gemini.

The site contains no indication as to the fact that it is being operated by Manila Industries, not Cap Gemini. As it reproduces the CAP GEMINI trademarks, it therefore falsely suggests that it is Cap Gemini’s official website.

Finally, Cap Gemini is not affiliated in any way with Manila Industries, and has not authorized the Respondent to use the CAP GEMINI trademarks in any ways in its domain name.

Hence, Manila Industries has no rights or legitimate interest in using the <capgemni.com> domain name.

2. Manila Industries is not commonly known by the “capgemni” name.

The domain name <capgemni.com> is not derived from Manila Industries’ name. Moreover, the “www.capgemni.com” website makes no reference to Manila Industries and there is therefore no information indicating that Manila Industries could have come to be commonly known under the “capgemni” name.

Manila Industries has therefore no rights or legitimate interest in using the <capgemni.com> domain name.

3. Manila Industries is not making a legitimate non commercial or fair use of the <capgemni.com> domain name.

The <capgemni.com> domain name is not being used for a non-commercial purpose. It seeks to advertise a wide range of products and services including, in particular, computer and software services, business services, recruitment services and other similar services.

Moreover, the <capgemni.com> domain name offers sponsored links which allow Manila Industries to raise revenues from the domain name.

Manila Industries is making a commercial use of the <capgemni.com> domain name and has therefore no rights or legitimate interest in using the <capgemni.com> domain name.

iii. The <capgemni.com> domain name was registered and is being used in bad faith.

Pursuant to paragraph 4(b)(iv) of the Policy: “[T]he following circumstances… shall be evidence of the registration and use of a domain name in bad faith:… by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your web site 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 web site or location or a product or service on your web site or location.”

Moreover, it has been decided that even where a user who arrives at the site may promptly conclude that it is not what he or she was originally looking for, a respondent has already succeeded in its purpose of using the trademark to attract the user with a view to commercial gain. (National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118).

In the present case, Manila Industries is trading on the value established by Cap Gemini in its trademarks to attract users who misspell or mistype the Complainant’s trademarks when entering the URL. Indeed, the term “capgemni” is identical to the CAP GEMINI trademarks, except for the omission of an “i”. This is one of the most common misspellings of the CAP GEMINI trademarks and of the <capgemini.com> domain name, which as such is sufficient to demonstrate bad faith.

Manila Industries is deriving economic benefit from this practice by attracting users to its web site and by the receipt of compensation from the owners of other web sites for delivering users to those sites through sponsored links. This constitutes bad faith registration and use for the purpose of the Policy.

Cap Gemini is not affiliated in any way with Manila Industries, and has not authorized the Respondent to use the CAP GEMINI trademarks in any way in its domain name.

Given the fact that Cap Gemini operates it business in Europe, the Americas and Asia, that it has over 60,000 employees, and that it registered its French Trademark on October 21, 1996, its Community Trademark on April 3, 1997, its US Federal Trademark on April 21, 1997, and the <capgemini.com> domain name on October 17, 1995, Manila Industries was fully aware of the Complainant’s mark when it registered the <capgemni.com> domain name on May 28, 2005.

Manila Industries has therefore registered and is using the <capgemni.com> domain name in bad faith.

It is therefore clear (i) that the <capgemni.com> domain name is confusingly similar to the CAP GEMINI trademarks or service marks, (ii) that Manila Industries has no rights or legitimate interests in respect of the <capgemni.com> domain name and (iii) that the <capgemni.com> domain name has been registered and is being used in bad faith.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of several trademark registration for the trademark CAP GEMINI throughout the world.

The domain name <capgemni.com> is identical to the trademark CAP GEMINI, except for the omission of the letter “i” and the addition of “.com”.

The practice of “typosquatting”, that is, registering a domain name with a slight alphabetical variation from a registered trademark, has been found to constitute confusing similarity. See Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299 (finding that the misspelling of the complainant’s name by omission of a letter amounted to confusing similarity).

The “.com” suffix denoting second-level domain status in the Respondent’s domain name does not affect the fact that the name is identical to the Complainant’s mark pursuant to Policy, paragraph 4(a)(i). See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

In view of the above it is the Panel’s opinion that the domain name <capgemni.com> is confusingly similar to the trademark CAP GEMINI, in which the Complainant has rights.

B. Rights or Legitimate Interests

Given the Respondent’s failure to submit a Response, the Respondent has not proven that it has any prior rights or legitimate interests in the domain name. The Complainant has asserted that it has not authorized the Respondent’s activities, nor does it have any control over these activities.

Based on the prima facie case established by the Complainant that the Respondent has no rights or legitimate interest in the domain name, the Panel finds that the prerequisites in the Policy, paragraph 4(a)(ii) are fulfilled.

C. Registered and Used in Bad Faith

Given the Respondent’s failure to file a Response, the Panel accepts as true all the allegations of the Complaint. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Respondent’s default does not, however, translate into an automatic ruling for the Complainant. To the contrary, the Complainant still must establish a prima facie showing that, under the Policy, it is entitled to transfer of the domain name.

The circumstances mentioned in paragraph 4(b) of the Policy, if found by the Panel to be present, are examples of facts which constitute evidence of the registration and use of a domain name in bad faith.

Given the fact that the Complainant is a global and well-known company with several trademark registrations it is likely that the Respondent was fully aware of the Complainant’s trademark when the domain name was registered on May 28, 2005. The domain name is slightly misspelled and the Respondent is clearly trading on the value established by the Complainant in its trademarks to attract users who misspell or mistype the Complainant’s trademarks when entering the URL.

In view of the above the Panel finds that the Respondent has registered and used the domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy. Therefore, all the prerequisites for cancellation or transfer of the domain names according to paragraph 4(i) of the Policy are fulfilled.

The Complainant has requested transfer of the domain name.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <capgemni.com>, be transferred to the Complainant.


Jonas Gulliksson
Sole Panelist

Dated: May 16, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0027.html

 

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