WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MSC Mediterranean Shipping Company Holding S.A. v. Whoisguard Protected, Whoisguard, Inc. / HOSTER NODE
Case No. D2016-2105
1. The Parties
The Complainant is MSC Mediterranean Shipping Company Holding S.A. of Geneva, Switzerland, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama City, Panama / HOSTER NODE of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <msc-cargo.com>, <msc-delivery.com>, <msc-transport.com> are registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 17, 2016. On October 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 18, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 26, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 31, 2016.
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 Respondent of the Complaint, and the proceedings commenced on November 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 22, 2016.
The Center appointed Martin Schwimmer as the sole panelist in this matter on December 1, 2016. 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
MSC Mediterranean Shipping Company holds intellectual property rights on behalf of MSC Mediterranean Shipping Company and other affiliates within a MSC Group (collectively, "MSC" or "Complainant"). Complainant has been offering shipping and transport services under the MSC trademark since no later than 2001. Respondent registered the disputed domain names in 2015 and 2016 and maintains websites at "www.msc-delivery.com" and "www.msc-transport.com", which websites mimic Complainant's website, by purporting to offer shipping services, reproducing Complainant's logo and using several of Complainant's addresses. The third disputed domain name, <msc-cargo.com> is not resolving at this time.
5. Parties' Contentions
Complainant provides various shipping and transport services under the MSC and MSC logo trademarks. It owns registrations, including International Registration 927721 for the MSC word mark, which registration was filed in 2007. It owns registrations for a MSC logo (relevant to the discussion in Sections 6(b) and 6(C) below). Complainant utilizes the MSC word mark and logo in promotional materials, including its website at <msc.com>.
Respondent has no relationship with Complainant. Respondent is not commonly known by the MSC name. Respondent's infringing use of the MSC trademark is not legitimate or fair use.
Respondent's reproduction of the MSC logo and its identification of several of Complainant's locations, establish that Respondent must have known of Complainant, its trademarks and its services, when Respondent registered the disputed domain names in 2015 and 2016.
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has submitted registrations for the MSC trademark. It has provided evidence of use of the MSC trademark in relation to various shipping and transportation services.
Respondent's disputed domain names reproduce the MSC trademark in its entirety with the addition of the terms 'cargo', 'delivery' and 'transport.' That these terms describe Complainant's services exacerbates confusion. See American Automobile Association, Inc. v. Pablo Palermo, WIPO Case No. D2009-1742 (ordering transfer of <aaatravelreviews.com> due to, inter alia, the term "reviews" being "specifically associated with Complainant's area of business").
Furthermore, it is standard practice by UDRP panels to disregard the generic Top-Level Domain ("gTLD") suffix ".com", which does little if any to change the connotation of the second-level name.
Therefore, the Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant's Trademark.
B. Rights or Legitimate Interests
The second ground to be demonstrated by Complainant, according to the provisions of the Policy, is Respondent's absence of any rights or legitimate interests in the disputed domain name, per paragraph 4(a)(ii) of the Policy.
Previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case that the respondent does not hold rights or legitimate interests in the domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Panel is satisfied that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use Complainant's trademark in the disputed domain name or in any other manner. Complainant alleges that there is no such connection here.
The Panel notes that Respondent's name in the WhoIs database is 'Hoster Node', and thus there is no showing that Respondent is commonly known by any of the disputed domain names.
At this time, <msc-cargo.com> is not resolving, while <msc-delivery.com> and <msc-transport.com> resolve to pages that, as previously noted, mimic Complainant's website, reproducing Complainant's logo, purportedly offering shipping and cargo transport services, and identifying the addresses of several of Complainant's offices. It is clear that Respondent seeks to pass itself off as Complainant. Legitimate rights or bona fide use do not exist when there is deliberate infringement of another's rights, or when the domain name is used in bad faith to divert users through confusion, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937.
Respondent has not responded to the Complainant's contentions. Therefore, in light of Complainant's unrebutted prima facie case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Respondent has registered three domain names consisting of the MSC trademark and terms describing Complainant's services. As noted above, two of the disputed domain names resolve to pages that mimic Complainant's website, reproducing Complainant's logo, purportedly offering Complainant's cargo shipping services, and identifying several of Complainant's addresses. It is therefore beyond doubt that Respondent had prior knowledge of Complainant's rights and targeted Complainant in bad faith. Where a domain name is so obviously connected with a trademark, its very use by someone with no connection to the trademark suggests opportunistic bad faith (see, e.g., LEGO Juris A/S v. store24hour; WIPO Case No. D2013-0091; Lancôme parfums et Beauté & Cie, L'Oréal v 10 Selling, WIPO Case No. D2008-0226).
Additionally, the Panel may make negative inferences based on Respondent's failure to respond to Complainant's contentions, as well as Respondent's use of false WhoIs information.
In view of the above it is the Panel's holding that the disputed domain names were registered and are 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 disputed domain names, <msc-cargo.com>, <msc-delivery.com>, and <msc-transport.com>, be transferred to Complainant.
Date: December 7, 2016