WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A.P. Møller v. Web Society
Case No. D2000-0135
1. The Parties
The complainant is A.P. Møller, a Danish corporation, with its principal place of business at Esplanaden 50, Copenhagen 1098 Denmark.
The Respondent is Web Society, of 301 Galmadong Seoku, Daejun, Korea.
2. The Domain Names and Registrar
The domain names at issue are maersksealand.com and maersk-sealand.com.
The registrar in each case is Network Solutions, Inc. of Herndon, Virginia, U.S.A.
3. Procedural History
a. The complaint was received by the WIPO Arbitration and Mediation Center ("the Center") on March 7, 2000, by email and in hardcopy on March 9, 2000. The Center acknowledged receipt of the complaint on March 9, 2000 and that day sought registration details from the registrar.
b. On March 10, 2000, the registrar, inter alia, confirmed that it is the registrar of the domain names maersksealand.com and maersk-sealand.com; identified the respondent as the current registrant and stated its "5.0 Service Agreement" is in effect. That agreement incorporates and requires the registrant to comply with the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted on October 26, 1999, by the Internet Corporation for Assigned Names and Numbers ("ICANN").
c. The complainant paid the fee required by the Center.
d. The Center verified that the complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 ("the Supplemental Rules"). Accordingly, on March 13, 2000, (by post/courier, email and fax, with copies to the complainant, the registrar and ICANN), the Center notified the respondent and its registered administrative, technical and zone contacts of the complaint and of the formal commencement on that day of an administrative proceeding under the Policy.
e. The respondent submitted a response to the complaint within the prescribed time. It was received by the Center on March 27, 2000, and acknowledged to the parties by email on March 29, 2000.
f. On April 4, 2000, the Center appointed Mr. Alan L Limbury sole panelist and that day notified the parties of the appointment and of the projected decision date of April 18, 2000. Mr. Limbury on April 2, 2000, submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence.
g. The panel agrees with the Centerís assessment that the complaint complies with the Policy, the Rules and the Supplemental Rules and finds the complaint was properly notified to the respondent in accordance with paragraph 2(a) of the Rules.
4. Factual Background (non-contested facts)
The trademarks and service marks on which this complaint is based are MAERSK and SEA-LAND. The marks are used in connection with transportation and shipping services in International Class 39, including the marine transport of goods and passengers, railway and truck transport of goods, air transport of goods and passengers, transport of oils and gases by pipeline, storage of goods, shipping of goods, container rental, and similar services.
"Maersk" is a Danish surname whose origins date back to the beginning of the sixteenth century. The name arose in the geographic area of modern Denmark, and is thought to describe the marshlands in which the inhabitants lived ("Marsk" is translated as "marsh" in Danish). The complainantís own use of the name "Maersk" is as part of the surname of the complainantís founders, Captain Peter Maersk Møller (the "Captain") and his son, Arnold Peter Møller, derived from the surname of the Captainís mother.
The complainant is the owner of the MAERSK and SEA-LAND trade names and marks and the maersk.com and maersk-sealand.net domain names. It has been using the MAERSK mark and variations of that mark in connection with its shipping business throughout the world for almost 90 years. It currently owns trademark applications and/or registrations for the MAERSK mark and variations of that mark in almost 100 countries worldwide.
Until July 1999, Sea-Land Service, Inc., ("Sea-Land") another large international shipping company, was the owner of the SEA-LAND trade name and mark. In July 1999, the complainant acquired part of Sea-Landís business and all trade names and marks related to it, including the SEA-LAND mark. The complainant is now trading under the name "Maersk Sealand" and has registered the domain name maersk-sealand.org under that name. The complainant is thus the registered owner of the domain names maersk-sealand.net and maersk-sealand .org.
The complainant, through its predecessor in interest, has been using the SEA-LAND mark and variations of that mark in connection with its shipping business throughout the world for over 40 years. The complainant currently owns, by assignment from Sea-Land, trademark applications and/or registrations for the SEA-LAND mark and variations of that mark in almost 100 countries worldwide. It has applied to register the assignment at the United States Patent and Trademark Office.
The MAERSK and SEA-LAND names and marks have become famous worldwide in the international shipping industry.
Merger negotiations between A.P. Møller and Sea-Land began in the (northern hemisphere) autumn of 1998. The respondent registered the disputed domain names on December 14, 1998. The respondent is not known by a name similar to either of the disputed domain names. The respondent has not been and is not involved in any business using the disputed domain names.
In October 1999 the complainant offered to purchase the disputed domain names from the respondent. The respondent offered to sell to the complainant the maersk-sealand.com domain name for US $300,000 and the maersksealand.com domain name for US $350,000. In a telephone call, the respondent said its proposed prices reflected the actual value of the domain names and that it could sell them to a third party at those prices.
5. Partiesí Contentions
A. The complainant
The disputed domain names are virtually identical to the famous names and marks in which the complainant owns long-standing rights, both in their separate components, MAERSK and SEA-LAND, and in their combined form under which the complainant now trades, "Maersk Sealand". The respondentís registration of the maersksealand.com and maersk-sealand.com domain names has prevented the complainant from registering those domain names.
The respondent has no legitimate interest in the domain names.
The respondent is not commonly known by any name that is identical or even remotely similar to the domain names or any component of the domain names. In addition, the respondent does not operate a business under the MAERSK or SEALAND or MAERSKSEALAND mark, either under the domain name or otherwise.
The respondent has registered the domain names in bad faith.
The respondent registered the disputed domain names apparently in order to trade on the high profile acquisition of Sea-Land by the complainant. In April 1999 the complainant asked the respondent to relinquish the domain names but the respondent did not reply.
In July 1999, the complainant asked the registrar to initiate its domain name dispute resolution proceeding. The registrar replied that, because the complainantís registered trademark and the respondentís domain name were not identical, as required under the registrarís previous domain name dispute resolution policy, the registrar could not invoke its policy.
In October 1999, the complainant sought to initiate discussions on transferring the disputed domain names to the complainant. A representative of the respondent denied any confusion between the complainantís marks and the disputed domain names.
The complainant has seen no evidence of use of either domain name in connection with an active web site, nor any evidence that the respondent has used the names in connection with any business. The facts strongly suggest the respondent learned of A.P. Møllerís proposed acquisition of the Sea-Land business when negotiations between A.P. Møller and Sea-Land began in the autumn of 1998, and registered the domain names only to transfer them to the complainant or to a third party for a price far exceeding the respondentís out-of-pocket costs relating to those domain names.
The respondentís registration of the disputed domain names is beyond argument and its rights to the two domain names should be protected.
The complainantís claim that the respondentís registrations violate the complainantís rights is groundless because:
a. the complainantís registration of the domain names maersk-sealand.net
and maersk-sealand.org has nothing to do with the respondentís registration
b. the respondent properly registered its domain names with the registrar and paid the full fee which entitles the respondent to their ownership; and
c. the complainantís claim the respondent is using the domain names in bad faith is remote from the truth.
The complainantís claim that the disputed domain names are identical to the complainantís marks
There is no rule or anything stipulating that the domain name holder of all three top-level domains com, net and org should be the same person. The fact that the complainant is the domain name holder of the domain names maersk-sealand.net and maersk-sealand.org is irrelevant to the registration of the domain name maersk-sealand.com. If the complainantís claim is correct, the same logic should apply in reverse; the domain name holder of maersk-sealand.com should be able to have maersk-sealand.net and maersk-sealand.org.
The respondent registered the disputed domain names well before the complainantís merger, which means the respondent has the preemptive right to the domain name[s], not the complainant, who wants to use a domain name which has been registered by someone else.
The complainantís claim that the respondent has no legitimate interest in the disputed domain names
This claim is unacceptable. The respondent registered its domain names in the proper manner according to the registrarís directions and paid the full registration fees. The complainant is in no position to question this. This is the most important determinant of the legitimacy of the respondentís interest in the domain names.
The fact that the respondent has not been or is not involved in any business using the registered domain name has nothing to do with the complainant since it is totally the respondentís business decision when to start its business using the registered domain names. Not everybody registers domain names for what they are doing at the time they register. Anybody can register a domain name for future use for a private, business or organizational purpose.
The allegation of registration in bad faith
It was the complainant who made an offer to buy the names for money. The respondent intended to use the domain name for its business purpose so it replied with a carefully calculated amount. The respondent believes if it can sell the domain name at a higher price than expected future cash-flow using the registered domain name, it is worth selling the domain name rather than make all the effort to make that much money. It is not in its best interests to sell the domain name when it can start a profitable business. This kind of business decision is none of the complainantís business and nobody can claim it as bad faith.
6. Discussion and Findings
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The respondent is correct that the identity of the registrant of the domain names maersk-sealand.net and maersk-sealand.org is irrelevant to the registration of the domain name maersk-sealand.com. The relevant test is in paragraph 4(a)(i) of the Policy.
Identity or confusing similarity
The disputed domain names are not identical to the registered trademarks. However, it is clear that they are both confusingly similar since each incorporates the primary, distinctive elements of both of the relevant trademarks of the complainant. The complainant has proved element 4(a)(i).
The name MAERSK might originally have been descriptive in Danish but it has long since become distinctive of the complainant and its goods and services. While the words SEA and LAND are descriptive words of general application, the mark SEA-LAND has become distinctive of the complainantís predecessor in interest and, by assignment, of the complainant. Hence both names have been accepted worldwide for registration as trademarks. There is no dispute that both marks have, through use, become famous worldwide.
On the material before it, the panel concludes that, before the merger negotiations began, the idea of putting the two names together would have been far-fetched even for the complainant and Sea-Land. It is not credible that the respondent, whose name is Web Society, registered the domain names maersksealand.com and maersk-sealand.com in December 1998 without knowledge that the complainant was negotiating to merge with Sea-Land. The panel finds the respondent did have such knowledge.
That knowledge would not, of itself, necessarily lead to the conclusion that the respondent has no legitimate interest in the names. However, the respondent has not been and even today is not involved in any business using those domain names. It has offered no evidence of the kind contemplated by paragraphs 4 (c) (i), (ii) or (iii) of the Policy to demonstrate its rights or legitimate interest in the names. It relies instead on the fact that it complied with the requirements of the registrar and paid the appropriate fee.
The Policy, however, provides a mechanism for cancellation or transfer of registered domain names even though the requirements of the registrar have been complied with and even though the required fees have been paid. The respondentís registration was subject to the dispute resolution policy of the registrar, as amended from time to time. Since the respondent registered the disputed domain names, that policy has been amended to incorporate the Policy. Accordingly, contrary to the respondentís submission, due registration and payment of fees do not determine ownership.
The Panel finds the respondent has no rights or legitimate interests in either of the disputed domain names. The complainant has proved element 4(a)(ii).
Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b)(i) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith, namely:-
"circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name".
There is no dispute that:
a. the complainantís MAERSK and SEA-LAND names and marks are famous;
b. merger negotiations between the complainant and Sea-Land began in the autumn of 1998;
c. the respondent registered the disputed domain names on 14 December 1998;
d. the respondent is not known by a name similar to either of the disputed domain names;
e. since December 1998 the respondent has not been and is not now involved in any business using the disputed domain names;
f. in response to an approach from the complainant, the respondent offered to sell to the complainant the maersk-sealand.com domain name for US $300,000 and the maersksealand.com domain name for US $350,000;
g. the respondent said its proposed prices reflected the actual value
h. the respondent believes if it can sell the domain name at a higher price than expected future cash-flow using the registered domain name, it is worth selling the domain name rather than make all the effort to make that much money.
In light of these facts, the Panel has already found, in considering the issue of legitimate interest, that the disputed domain names, which are unusual and are distinctive of the complainant, could not plausibly have been registered when they were unless the respondent knew about the merger negotiations.
That timing indicates a desire on the part of the respondent to register the names before the complainant itself did so.
Being first to register is not itself evidence of bad faith. However, the following factors lead to the conclusion that the respondent's desire to be the first to register sprang from a purpose on its part to sell the names to the complainant should the opportunity arise. These are:
(a) the distinctive and unusual nature of the complainant's famous marks;
(b) the likelihood that anyone other than the complainant trading under the disputed domain names would infringe those marks;
(c) the respondent's failure since December 1998 to use the disputed domain names in any business;
(d) the respondent's offer to sell the disputed domain names to the complainant for sums in excess of its out-of-pocket costs related to the names; and
(e) the large amounts sought from the complainant, which appear to pay no regard to factor (b).
Although the respondent has not used the disputed domain names openly in any business, it has used them in seeking to sell them to the complainant.
Accordingly the Panel finds that the disputed domain names were registered and are being used in bad faith. The complainant has proved element 4(a)(iii).
Pursuant to paragraph 4 (i) of the Policy, the Panel requires the registrar to transfer the domain names maersksealand.com and maersk-sealand.com to the complainant.
Alan L Limbury
Dated: April 15, 2000