WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MSC Mediterranean Shipping Company Holding S.A. v. Registration Private / Sedo GmbH / Paul Kocher
Case No. D2014-0694
1. The Parties
The Complainant is MSC Mediterranean Shipping Company Holding S.A. of Geneva, Switzerland, represented by Frank J. Ciano, United States of America (“USA”).
The Respondent is Registration Private of Scottsdale, Arizona, USA; Sedo GmbH of Cologne, Germany, represented by Jeremiah Johnston, USA; and/or Paul Kocher of San Francisco, California, USA, self-represented.
2. The Domain Name and Registrar
The disputed domain name <msc.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on Apri 28, 2014. On April 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2014, the Complainant filed a first amended Complaint correcting the misspelling of the Complainant’s name. On May 2, 2014, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on May 6, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In addition, in response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amended Complaint on May 15, 2014.
On May 7, 2014, the Center received an informal communication from the Respondent, Paul Kocher.
On May 16, 2014, the Center received another informal communication from the Respondent, Paul Kocher.
The Center verified that the Complaint together with the amended Complaints 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 the Respondent of the Complaint, and the proceedings commenced on May 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2014. On May 20, 2014, the Center received an informal Response from the Respondent Sedo GmbH, as the registrant of the disputed domain name confirmed by the Registrar. No further formal response was filed from this Respondent within the due date. On May 22, 2014 the Center received an informal communication from the Respondent, Paul Kocher. On May 23, 2014, the Center received an informal communication from the Complainant regarding the identity of the Respondent. A formal Response from the Respondent, Paul Kocher, was received by the Center on June 9, 20141 .
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 13, 2014. 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
The Complainant is the intellectual property holding company of what, for present purposes, can be described as the MSC group. An operating member of the MSC group is MSC Mediterranean Shipping Company SA – “Shipping Company”.
The Shipping Company was founded in 1970 when it commenced operations with one ship. By 1977, it was providing shipping services throughout northern Europe, Africa and the Indian Ocean. In the 1980s, it extended its operations to North America and Australia. According to the Complaint, it is currently the second largest container carrier by terms of vessel capacity. It serves 270 ports with offices in most parts of the world. Since 1989, it has also operated cruise ships.
According to the Complaint, the Shipping Company displays the letters “MSC” prominently on the sides of it ships.
It has provided evidence of registered trademarks for, or based on, MSC in Switzerland, the European Union, USA and Canada. The earliest registration is for MSC in a stylized form. It was registered in Switzerland on April 12, 2001 for services in International Classes 37 and 39. There are counterpart registrations in the other jurisdictions except Canada. The Complainant has also obtained registrations for MSC in plain block capitals in all jurisdictions in at least International Class 37 or Class 39.
The disputed domain name was first registered on January 22, 1993. It was acquired, however, by the Respondent Paul Kocher, in December 2013 through a public auction conducted by Sedo.com. The Respondent apparently paid EUR 35,000 (or approx. USD 48,000).
At the time the Complaint was filed, the disputed domain name redirected to the website at “www.paulkocher.com” which contained an image of a dragonfly, personal and work email addresses through which to contact Mr. Kocher and the URL of his “work” website. It would appear, amongst other things, that Mr. Kocher engages in providing services related to cryptography.
Before the Complaint was filed, the Complainant submitted to a domain broker an offer to buy the disputed domain name for USD 50,000. The broker reported back that this amount was not accepted and that the Respondent wanted substantially more.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
In his informal communications, the Respondent Paul Kocher, sought clarification about which version of the Complaint required to be addressed. The second amended version was filed on May 15, 2014. The Notification of Deficiency dated May 11, 2014 allowed the Complainant 5 days to submit any proposed amendment. The second amended Complaint, therefore, was filed in time. In any event, the amendment was to correct the spelling of the word Mediterranean. Given the nature of the amendment and its submission before the Respondent had been required to submit any Response, it is difficult to see what prejudice, if any, the Respondent would suffer. The Respondent has not identified any. Accordingly, if necessary, the Panel would allow the amendment pursuant to the Panel’s powers under paragraphs 10(c) and (d) of the Rules.
On the other hand, the Complainant questions who is in fact the respondent in the proceedings. The public WhoIs information showed the registrant as “Registration Private, Domains by Proxy”. The Registrar confirmed, however, that the registrant was in fact Sedo.com. By email dated May 20, 2014, Sedo.com stated that the disputed domain name should in fact be in the name of Paul Kocher. Sedo.com stated that it held the disputed domain name only temporarily as part of the transfer to Mr. Kocher. Mr. Kocher also communicated that he was in fact the registrant. As noted above, the disputed domain name resolves to a website at “www.paulkocher.com” which appears to be a page related to Mr. Kocher. On the record in this case, therefore, the Panel finds that Mr. Kocher is the proper Respondent.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to above. These include a number of registrations for MSC in block capitals alone. There are also others in which MSC is presented in stylized form or with other words such as “Mediterranean Shipping Company” or names which appear to be the names of ships.
On the question of confusing similarity, the Respondent relies on the narrow classes in which the Complainant’s trademarks are registered and what it says are the large number of other users of “MSC” unrelated to the Complainant’s group. These matters, however, are not relevant to the inquiry under this head of the Policy.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trade marks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks for “MSC” alone. It is also confusingly similar to the registrations for “MSC” in stylized form. The requirement under the first limb of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is not derived from the Respondent’s name. Further, the Complainant contends that the very limited nature of the website to which the disputed domain name resolves and the use of the privacy or proxy service to register the disputed domain name shows that there is no legitimate use being made of the disputed domain name. The Complainant further contends that the limited nature of the website indicates that the Respondent registered the disputed domain name to divert web users from the Complainant’s group and to prevent the Complainant from registering its trademark as a domain name.
The Respondent says he was unaware of the Complainant or its trademarks when he acquired the disputed domain name. The Respondent points to the fact the disputed domain name is comprised of 3 letters plus the generic Top-Level Domain. The Respondent says that 2 letter and 3 letter domain names of this kind are intrinsically valuable in their own right and he purchased it for that reason. Apparently, he has registered a small number of such domain names.
It is also relevant in this context that a search of the USPTO’s trademark site returns some 210 matches for “MSC”. The Panel notes that not all of the records returned are still “live” or active. Nonetheless, there are many indicated as “live”. Wikipedia also has numerous terms for which MSC is an abbreviation or acronym.
In the context of this case, it is unnecessary for the Panel to determine finally whether or not these factors give rise to rights or legitimate interests2 as these matters are also directly relevant to the issues raised under the third requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the Respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the Complainant.
The Complainant relies on what it says is the inactive nature of the disputed domain name and the registration of the disputed domain name anonymously in support of its claim that the disputed domain name has been registered and used in bad faith.
This case is very different to Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case No. D2000-0003. First, the disputed domain name in that case was <telstra.org>. Unlike the acronym in this case, “MSC”, “Telstra” was a coined term and distinctive in its own right. That difference in itself is critical in the present context.
Secondly, the respondent in that case was never identified and the learned panelist accepted evidence that the registration had been obtained using fraudulently obtained credit card details. In the present case, the Respondent did use a proxy service, but the disputed domain name has at all times (since he acquired it) resolved to a webpage which plainly identified him. The Panel is not prepared to accept that use of a proxy service is in and of itself bad faith.3 The Respondent has in fact come forward and sought to defend his actions and has not hidden behind the proxy service.
The Complainant’s invocation of the inactive use of the disputed domain name since 1993 does not assist it. The Panel accepts that the use (or non-use) made of a domain name before the relevant respondent acquired it can be relevant to proper characterization of the registration and use in question. The usual point of reference, however, is the point where the Respondent acquired the disputed domain name.
In the present case, the Respondent has submitted evidence from the Wayback Machine which shows that for a number of years the disputed domain name resolved to a webpage or webpages for Molecular Structure Corporation. That business would appear to have been acquired and ceased use of the name and acronym in due course. Subsequently, the acquirer of the business released it back on to the market. Before the Respondent acquired it, therefore, the disputed domain name appears to have had a legitimate use quite independent of the Complainant’s group.
Since the Respondent acquired the disputed domain name, it has resolved to his website as described above. The Complainant characterizes this as a mere placeholder and analogises it to a pay-per-click “search” page. The website, however, does not appear to have “pay-per-click” links on it. In the second case relied on by the Complainant, General Motors LLC v Carol Schadt WIPO Case No. D2012-2106, Ms. Schadt admitted knowledge of the complainant’s GM trademark – as one would expect for a USA citizen and that particular trademark. In addition, she had held the domain name for at least 8 years without making the use of it which she claimed she had registered it for – apparently for a website providing resources for general management and the sale of domain names.
The present case is different. The Respondent has stated that he was not aware of the Complainant’s group or trademarks when he acquired the disputed domain name. In the context of the present case and on the present record, that is not implausible. The disputed domain name is comprised of a 3 letter alphanumeric string. It has lots of potential applications quite unassociated with the business of the Complainant’s group whose trademarks are registered for a limited range of services.
The Complainant does also invoke its extensive use of “MSC” in addition to its registrations as trademarks. The Panel accepts that the Complainant does appear to have such use in its field. However, the record in this case does not permit an inference to be drawn that the Respondent must have known of the Complainant’s group’s use and sought to take advantage of it. It is not apparent that the Respondent has any involvement in the shipping industry. Also, the evidence in the record does not demonstrate that the Complainant’s trademark has been so extensively advertised and promoted to the public that the Respondent must have been aware of it. In this respect, it may be contrasted with the use and promotion of GM for General Motors’ products in the USA.
The present dispute has more in common with the decisions on which the Respondent relies4 than the decisions on which the Complainant relies. Ultimately, however, the result must depend on the particular facts established on the record. Having regard to nature of the trademark as comprised of 3 letters and the comparatively limited field for which it is registered, there is in this case not sufficient material to infer that the Respondent has in fact registered the disputed domain name to take advantage of its status as the Complainant’s trademark.
The third requirement not having been established, the Complaint must fail.
D. Reverse Domain Name Hijacking
The Respondent seeks an order that the Complainant has engaged in reverse domain name hijacking. The fact that the disputed domain name was registered in 1993 before the Complainant acquired any registered trademarks is not relevant to this issue. The Respondent has only relatively recently acquired the disputed domain name in or about December 2013 which, on the record in this case, is the relevant date for any assessment as the Respondent is wholly unassociated with the predecessor owner and uses.
The Panel is not prepared to find that the bringing of this Complaint was so abusive as to warrant the finding requested by the Respondent. The Complainant has clear trademark rights and is entitled to seek to protect them. In the Panel’s view, it was not inevitable that the Complainant must fail. While there have been many complaints about 3 letter domain names which have failed, they do not establish a rule that all such complaints must fail. Each case must be decided on the particular facts in its record.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: June 22, 2014
1 The Panel notes that the Respondent Paul Kocher is located in San Francisco and that the Response was timely within that time zone.
2 The Panel notes the division of opinion on this question in AGL Energy Limited v. James M. van Johns,1 WIPO Case No. D2014-1817.
3 See in this regard WIPO Overview 2.0, paragraph 3.9
4 For example, AGL Energy Limited v. James M. van Johns, supra.