WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A.P. Møller - Mærsk A/S v. “maersk drilling uk”
Case No. D2010-1420
1. The Parties
The Complainant is A.P. Møller - Mærsk A/S of Copenhagen, Denmark, represented internally.
The Respondent is identified as being “maersk drilling uk” of London, Great Britain.
2. The Domain Name and Registrar
The disputed domain name <maerskdrillinguk.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2010. On August 24, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On August 30, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 20, 2010. On September 8, 2010, the Center received a Request for Suspension from the Complainant in order to attempt to settle the dispute with the Respondent. Therefore, on September 8, 2010, the Center notified the parties that the proceedings were suspended until October 8, 2010. On October 6, 2010, the Center received a request for resumption of the proceedings by the Complainant, stating that the parties were unable to reach a settlement. On October 11, 2010, the Center informed the parties that the proceedings had been re-installed and that the corresponding date for the response was October 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2010.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 4, 2010. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is active worldwide in a wide range of industries, primarily within the transportation and energy sectors. The Complainant is the world’s largest container ship and supply vessel operator, employing more than 120,000 people in 130 countries.
The Complainant is registered owner of numerous trademarks containing the term “maersk”, including Community registration no. 003483039 MAERSK, registered on June 27, 2006 (hereinafter referred to as the “MAERSK Mark”). Furthermore, the Complainant is registered owner of the domain names <maersk.com> and <maersk-drilling.com>.
The disputed domain name was registered on April 25, 2010 and is being used to forward emails with job offers to potential applicants for jobs in the Maersk Drilling organization, which contain false and non-existing job offers and require the candidates to pay a number of fees (in the region of USD 2,000 to USD 3,000.00) related to obtaining visas, work permits, etc. as a prerequisite for being hired by Maersk Drilling. The Complainant has been contacted by frustrated candidates who paid the fees but never heard from the fraudsters again.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant states that the disputed domain name is confusingly similar to the MAERSK Mark as it fully includes the MAERSK Mark. The Complainant contends that users of the disputed domain name will mistakenly believe that such name belongs to the Complainant despite the additional words “drilling” and “uk”.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as it has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, as it is not making a legitimate non commercial or fair use of the domain name but uses the disputed domain name for illegitimate activities and as it is not commonly known by the name “Maersk” or “Maersk Drilling/Maersk Drilling UK”.
(3) The disputed domain name has been used for illegitimate purposes, namely attempts of fraud, and therefore in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; 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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s MAERSK Mark, in which the Complainant has exclusive rights.
The additional words “drilling” and “uk” following the term MAERSK in the disputed domain name are merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “drilling” or “uk” (cf. A.P. Møller-Mærsk A/S v. Walter Surhand, WIPO Case No. D2010-0447 (<maersk-driling.com>); Oceaneering International, Inc. v. None a/k/a olateju jide, NAF Claim No. 1333874 (<oceaneeringdrilling.com>); Roche Products Inc. v. Dion Rodriguez, WIPO Case No. D2010-1153 (<buyvalium-uk.net>); Morgan Stanley v. Adewale Sala, NAF Claim No. 869418 (<morganstanley-uk.com>); Dermalogica, Inc. and The International Dermal Institute, Inc. v. Express Beauty, NAF Claim No. 841179 (<dermalogica-uk.com>)).
Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s fraudulent use of the disputed domain name cannot confer any rights or legitimate interests therein onto him.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 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 its 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 its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the MAERSK Mark. The disputed domain name is composed of the Complainant’s MAERSK Mark, the word “drilling”, which describes one of the Complainant’s business activities, and the acronym “uk” (for United Kingdom). Given the high distinctiveness of the Complainant’s MAERSK Mark and the actual use of the disputed domain name by the Respondent (i.e., to forward emails with false job offers to potential applicants for jobs in the Maersk Drilling organization), it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the MAERSK Mark.
The Panel is further satisfied that the disputed domain name has been used in bad faith. It is well established that the use of a disputed domain name in connection with the distribution of fraudulent email spam is to be considered as bad faith under the Policy (cf. B & H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc. / Jackie Upton, WIPO Case No. D2010-0841; The Prudential Assurance Company Limited v. Domain Place, domainplace, WIPO Case No. D2009-1014; Bernardo M. Cremades Sanz-Pastor, B. Cremades & Asociados, S.L. v. Patrick Lucas, WIPO Case No. D2009-0566; Capstone Mortgage Co. v. Joshua Shook or J. Shook, Inc., WIPO Case No. D2004-0395; XO Communications Inc. v. XO Network Operations Center Inc., NAF Claim No. 150786; Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367).
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <maerskdrillinguk.com> be cancelled.
Dated: November 18, 2010