CSI Leasing Mexico, S. de R.L. de C.V. v Team Work, CSI Leasing

WIPO Case No. D2024-2486

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

CSI Leasing Mexico, S. de R.L. de C.V. v. Team Work, CSI Leasing

Case No. D2024-2486

1. The Parties

The Complainant is CSI Leasing Mexico, S. de R.L. de C.V., Mexico, represented by 101domain.com, United

States (“U.S.”).

The Respondent is Team Work, CSI Leasing, U.S.

2. The Domain Name and Registrar

The disputed domain name <csileasingus.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 June 18, 2024. connection with the disputed domain name. On June 19, 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 (Information not available on WHOIS) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 20, 2024, 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 amended Complaint on June 25, 2024.

The Center verified that the Complaint together with the amended 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 June 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2024.

The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on July 25, 2024. 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.

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4. Factual Background

The Complainant is CSI Leasing Mexico, S. de R.L. de C.V., a subsidiary of the U.S. company, CSI Leasing, Inc. The Complainant is established and has been operating in Mexico since 2002 in the Mexican leasing market. For over 22 years the Complainant has operated under the primary domain name <csimexico.com>, registered in March 2002. This provides an online marketplace for companies to subscribe to the Complainant’s financial and leasing services, all of which are directly rendered under the Complainant’s trademark CSI LEASING.

The Complainant’s U.S. parent company was established in 1972 and has more than 70 offices worldwide, maintaining an international reputation as one of the largest independent equipment leasing specialists in the industry. The domain name <csileasing.com> was registered on May 28, 1996.

The Complainant has been operating in the financial and business leasing industry since 2002 and has built a globally recognized trademark CSI LEASING, through the promotion of an extensive range of services under this brand name. The Complainant’s primary domain name <csimexico.com> provides an online marketplace for companies to subscribe to the Complainant’s financial and leasing services, all of which are directly rendered under the Complainant’s trademark CSI LEASING (Annex 4).

The Complainant registered trademark CSI LEASING before the Mexican Institute of Industrial Property
(“IMPI”) on July 29, 2005, registration number 893978. Proof of this registration is attached to the Complaint

as Annex 3.

The Complainant maintains an extensive portfolio of over 50 domains consisting of ccTLD and gTLD
variations of the trademarked term CSI LEASING including <cslleasing.com>, <csileasing.co>, and

<csileasing.net>.

The disputed domain name <csileesing.com> was registered on April 15, 2024.

The disputed domain name was directed to the Complainant’s primary domain <csileasing.com> and contained mx records with active e-mail services. Following a formal complaint to the registrar, the disputed domain name was suspended. At the time of the decision, the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

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

Notably, the Complainant contends that the disputed domain name is confusingly similar to the
Complainant’s mark registered and used worldwide.

The Complainant alleges that the Respondent does not have rights or legitimate interests in the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Complainant alleges that the Respondent is using the disputed domain name in connection with a
fraudulent phishing scheme designed to lure consumers into believing that they are dealing with the
Complainant.

Hence the Complainant concludes that the disputed domain name was registered and is being used in bad faith.

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B. Respondent

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

6. Discussion and Findings

The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a
Complainant to obtain relief. These elements are:

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

(ii)       the Respondent has no rights or legitimate interests in respect to the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

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

Notably, the Complainant contends that the disputed domain name is confusingly similar to the CSI
LEASING trademark, as it is entirely incorporated in the disputed domain name.

The Complainant has presented consistent evidence of ownership of the trademark CSI LEASING in jurisdictions throughout the world, by presenting a Mexican trademark registration for it, as well as comprehensive evidence of the use of the trademark.

The use of the trademark CSI LEASING with the country code “us” in the disputed domain name does not prevent a finding of confusing similarity with the trademark. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing

similarity under the first element.

Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant.

B. Rights or Legitimate Interests

Given the clear evidence that trademark CSI LEASING is registered in the Complainant’s name in Mexico (as well as in the name of the Complainant’s U.S. parent company in other jurisdictions); considering that this trademark is widely known as identifying the Complainant’s activities, and that the Complainant has not

licensed this to the Respondent, the Panel finds that the Complainant has established prima facie case that
the Respondent has no rights or legitimate interests in the disputed domain name.

In the absence of a Response, the Respondent has not rebutted such prima facie case. Furthermore, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. Additionally, the use of the Complainant’s U.S. parent company name to register the disputed domain name as evidenced by the WhoIs, falsely suggests affiliation with the Complainant and points to an intention to confuse Internet users by leading them to think that the disputed domain name belongs to the Complainant or to one of the Complainant’s group of companies.

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Furthermore, the fact that the disputed domain name consists of the Complainant’s trademark along with the geographic abbreviation “us” carries a risk of implied affiliation, potentially conveying to unsuspecting Internet users the false belief that any website related thereto would be associated or endorsed with the

Complainant’s official products and services. See WIPO Overview 3.0, section 2.5.1.

The Respondent is not using the disputed domain names for a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use of the disputed domain names - the Respondent was redirecting the disputed domain name to the Complainant’s website; further to an abuse complaint presented by the

Complainant to the registrar it is currently suspended and consequently does not resolve to an active site.

The Panel, thus, finds for the Complainant under the second element of the Policy.

C. Registered and Used in Bad Faith

Given the circumstances of this case, the facts outlined in sections A and B above can also evidence the

Respondent’s bad faith in the registration and use of the disputed domain name.

The Respondent intended to give an overall impression that the disputed domain name is associated with
the Complainant, and the Panel accepts that the disputed domain name is likely intended to capitalize on the
fame and goodwill of the Complainant’s trademark. Besides, the disputed domain name reproduces the
Complainant’s mark CSI LEASING with the addition of the country code “us”.

The composition of the disputed domain name points towards the Respondent’s likely intent to give an impression that the disputed domain name is associated with the Complainant or to confuse internet users. In the absence of any reasonable explanation for the selection of the disputed domain name by the Respondent, and in the circumstances of this case, the Panel finds that it is more likely than not, that the disputed domain name has been registered to take advantage due to the value of the trademark owned by the Complainant.

According to the evidence provided by Annex 6 to the Complaint, and unrefuted by the Respondent, prior to the present proceeding the disputed domain name was used in connection with the Complainant’s own website. In addition, the disputed domain name contained MX records with active e-mail services.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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” is
evidence of registration and use in bad faith.

Here, the Panel notes the distinctive and well-known nature of the Complainant’s trademark CSI LEASING, the failure of the Respondent to submit a Response, and the implausibility of any good faith use to which the disputed domain name may be put, support a finding of bad faith.

In the totality of the circumstances, the Panel finds the Respondent has registered and is using the disputed domain name in bad faith.

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 <csileasingus.com> be transferred to the Complainant.

/Alvaro Loureiro Oliveira/
Alvaro Loureiro Oliveira
Sole Panelist
Date: August 8, 2024