CGI Inc. v Christophe Schmidt

WIPO Case No. D2024-5269

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

CGI Inc. v. Christophe Schmidt

Case No. D2024-5269

1. The Parties

The Complainant is CGI Inc., Canada, represented by Fieldfisher LLP, United Kingdom.

The Respondent is Christophe Schmidt, Germany.

2. The Domain Name and Registrar

The disputed domain name <de-cgi.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2024. On December 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2024, 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 (Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 2, 2025, 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 January 6, 2025.

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 January 8, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 28, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 29, 2025.

page 2

The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on January 31, 2025. 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 was founded in 1976 and is among the world's largest providers of information technology and business consulting services, employing over 90,000 professionals across approximately 400 offices worldwide.

The Complainant is the registered proprietor of various trademark registrations for CGI around the world including Canadian Reg No. TMA750348 for CGI in Classes 9, 16, 35, 36, 42, registered on October 15, 2009; United States of America Trademark Reg No. 3539769 for CGI in classes 9, 35, 41, 42, registered on

December 2, 2008; and European Union Trademark Reg No. 012007051 for CGI in Classes 9, 35, 37, 38,
39, 42, registered on December 17, 2013.

The Complainant operates the website “ but also operates individual websites for different markets including Germany at “

The disputed domain name was registered on January 22, 2024, and redirects to the Complainant’s official website. Moreover, the record shows at least one email address connected to the disputed domain name has been used to fraudulently make purchases of goods from third parties on behalf of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the nondistinctive hyphen and descriptive term “de”, which is the ISO alpha-2 code for Germany.

The Complainant furthermore contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent’s name does not bear any resemblance with the word “CGI” nor has the Complainant licensed or otherwise authorized the Respondent to use its trademark or to

register any domain name.

The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. Given the reputed and distinctive nature of the Complainant and its CGI mark, and the activities undertaken by the Respondent it is clear the Respondent had actual notice of the Complainant’s trademark at the time he registered the disputed domain name. In addition to this the disputed domain name redirects to the Complainant’s legitimate website and an email address connected to the disputed domain name has been used to fraudulently make purchases of goods from third parties on behalf of the Complainant.

The Complainant requests that the disputed domain name be transferred to the Complainant.

page 3

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here, “de”, and a hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such term and a hyphen does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegitimate activity as in this case by impersonating the Complainant in emails to third parties can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

page 4

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Given the circumstances of the case, in particular the way the disputed domain name has been used, it is obvious to the Panel in the current circumstances that the Respondent registered the disputed domain name in bad faith.

It is equally obvious to the Panel that the Respondent uses the disputed domain name as part of a sophisticated attempt to deceive customers of the Complainant by creating a likelihood of confusion with the Complainant and with the Complainant’s mark as to the source of the Respondent’s activities. This constitutes bad faith use under the Policy, see section 3.4 of the WIPO Overview 3.0.

The Panel finds that the Complainant has established the third element of the Policy.

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 <de-cgi.com> be transferred to the Complainant.

/Richard C.K. van Oerle/
Richard C.K. van Oerle
Sole Panelist
Date: February 10, 2025