WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Matson Navigation Company, Inc. v. Bobby McGee and Triton Logic
Case No. D2013-0182
1. The Parties
Complainant is Matson Navigation Company, Inc. of Oakland, California, United States of America (“US”), represented by Kilpatrick Townsend & Stockton LLP, US.
Respondents are Bobby McGee of San Clemente, California, US and Triton Logic of Lebanon, Missouri, US.
2. The Domain Names and Registrars
The disputed domain names <matsonautoshipping.com>, <matsonautotransport.com> and <matsoncarshipping.com> are registered with GoDaddy.com, LLC and Wild West Domains, LLC (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2013. On January 25, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 28, 2013 the Registrars transmitted by email to the Center their verification response confirming that Respondents are listed as the registrants and providing their 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on February 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 26, 2013.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on March 6, 2013. 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
Since 1882, Complainant has provided cargo shipping services, particularly throughout the Pacific and with a focus on the Hawaiian Islands. Today, Complainant services various Pacific islands and provides expedited service from China to California.
Complainant owns various United States registrations, as well as common law rights, in marks containing MATSON for transportation and supply chain logistics services,. Two of the marks are incontestable under the Lanham Act, 15 USC 1065.
Complainant registered its domain name, <matson.com>, on January 21, 1995 and continues to use it to promote its shipping services.
As of September 4, 2012, the websites associated with all three of the disputed domain names contained identical content and displayed the same toll-free phone number. (See Exhibit C to the Complaint). Respondents operated the websites under the business names “Matson Car Shipping” and “Matson Auto Transport.” (See Exhibit C to the Complaint).
As of the date of filing the Complaint, <matsoncarshipping.com> and <matsonautotransport.com> continued to display identical content, and the <matsonautoshipping.com> contained nearly identical content. (See Exhibit D to the Complaint). Respondents operate the websites under the business names “Hawaii Auto Transport” and “Hawaii Auto Shipping.” (See Exhibit D to the Complaint).
Respondent Triton Logic, owner of the <matsonautoshipping.com> disputed domain name, maintains a website at “www.tritonlogic.com”, which contains identical or nearly identical content as the websites at the disputed domain names and displays the same toll-free phone number mentioned above. (See Exhibit E to the Complaint).
All of the disputed domain names were registered between July and September 2011.
All of the websites to which the three disputed domain names revert offer services that compete with Complainant.
5. Parties’ Contentions
Complainant contends that Respondents are the same person or entity, or otherwise jointly control the disputed domain names due to the identical content displayed, particularly the same toll-free phone number. Similarly, Complainant notes that Respondent Triton Logic maintains a website at ”www.tritonlogic.com”, which also contains identical or nearly identical content as the disputed domain names, including the same toll-free phone number.
Complainant asserts that it has rights in the MATSON registered and common law marks. It contends that the disputed domain names are confusingly similar to Complainant’s marks because they consist of Complainant’s MATSON mark in its entirety, and that the only differences between Complainant’s mark and the disputed domain names are the addition of the general words “car,” “auto”, “shipping”, and “transport”. Complainant further alleges that Respondents have no rights or legitimate interests in the disputed domain name, and that they registered and use the disputed domain name in bad faith.
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest Respondents of the disputed domain names, Complainant must demonstrate each of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Complainant has operated cargo shipping services for over 130 years under the MATSON marks and name. Complainant owns several federal registrations for the MATSON mark. The disputed domain names are confusingly similar to Complainant’s MATSON mark. They contain Complainant’s MATSON mark in its entirety. The only difference between Complainant’s mark and the disputed domain names are the addition of the common words “car,” “auto”, “shipping”, and/or “transport”. Numerous previous UDRP decisions have held that the addition of a common word does not distinguish a domain name from complainant’s mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
Accordingly, the Panel finds that Complainant has rights in the MATSON mark and that the disputed domain names are confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has not authorized Respondents or anyone else to register and use the disputed domain names. Respondents are not affiliated with or related to Complainant, nor are Respondents licensed or authorized to use the MATSON mark. On the evidence before the Panel, Respondents do not appear to make any legitimate noncommercial or fair use of the disputed domain names.
The Panel is satisfied that Complainant has made a prima facie showing of Respondents’ lack of rights or legitimate interests in the disputed domain names.
Respondents are in default, and have not provided any evidence in their own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondents have no rights or legitimate interests in the disputed domain names, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that:
“for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
It is difficult to conceive that Respondents did not know of Complainant and its marks when the disputed domain names were registered. Complainant has operated cargo shipping services for over 130 years under the MATSON marks and name. Complainant and Respondents compete in the same market. Two of Complainant’s marks are incontestable under 15 USC 1065. Based on these facts, this Panel infers that Respondents were aware or must have been aware of Complainant’s marks when Respondents registered the disputed domain names, and therefore registered them in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”. Additionally, when both Complainant and Respondents reside in the United States, under 15 USC §1072, registration of the mark MATSON constitutes constructive notice of the mark. Respondents therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain names.
It is clear that Respondents, by using the disputed domain names, have intentionally attempted to attract, for commercial gain, Internet users to Respondents’ websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ websites or of a product or service on Respondents’ websites, thus using Complainant’s marks in bad faith. Complainant has offered cargo shipping services for over 130 years under the MATSON marks and name. Respondents’ services are directly competitive with Complainant’s services. As of September 4, 2012, Respondents offered cargo shipping services through the disputed domain names under the business names “Matson Car Shipping” and “Matson Auto Transport”, despite the fact that Respondents have no authorization from or affiliation with Complainant (See Exhibit C to the Complaint). Additionally, Complainant’s services are offered particularly in the Pacific and the Hawaiian islands. As of December 21, 2012, Respondents offered its services through the disputed domain names under the names “Hawaii Car Shipping” and “Hawaii Auto Transport,” which further reinforces the competitive nature and intent to use the disputed domain names in bad faith.
This Panel finds that Respondents registered and used the disputed domain names in bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.
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 <matsonautoshipping.com>, <matsonautotransport.com> and <matsoncarshipping.com> be transferred to Complainant.
Sandra A. Sellers
Date: March 14, 2013