WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MSC Mediterranean Shipping Company S.A. v. Private Registrant, Dream Host Customer/ Andrew Cater/ David Wheeler
Case No. D2015-0922
1. The Parties
Complainant is MSC Mediterranean Shipping Company S.A. of Geneva, Switzerland, represented by Crowell & Moring, LLP, Belgium.
Respondent is Private Registrant, Dream Host Customer of Brea, California, United States of America / Andrew Cater of Gaythorne, Queensland, Australia / David Wheeler of Mackay, Queensland, Australia.
2. The Domain Names and Registrar
The disputed domain names <mscaustralialtd.com> and <msccargouk.com> are registered with New Dream Network, LLC dba DreamHost.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 1, 2015. On June 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 6, 2015, 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 June 22, 2015 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 June 25, 2015.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on July 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 22, 2015.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on July 27, 2015. 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
Complainant, MSC Mediterranean Shipping Company S.A., is a global container shipping company and provider of an integrated network of road, rail and sea transport services with over 480 offices in 150 countries. Complainant owns and uses the MSC name and trademark and has submitted as Annexes to the Complaint a copy of its International trademark registration for the mark MSC, which issued on March 21, 2007 and extends to several countries, including the European Union and Australia, and a copy of an International trademark registration for a figurative version of the MSC mark, which issued on June 30, 2005 and likewise extends to a number of countries, including the European Union and Australia. Complainant also owns the domain name <msc.com> which it has used to promote its services under the MSC mark.
The disputed domain name <msccargouk.com> was registered on or about November 11, 2014 and the disputed domain name <mscaustralialtd.com> was registered on or about January 12, 2015. Currently, the disputed domain names do not resolve to any web pages.
5. Parties' Contentions
Complainant argues that Respondents, Andrew Cater and David Wheeler, are the same registrant or under common control of a single Respondent and that, as such, consolidation of the Complaint against multiple Respondents is proper.
Complainant asserts that its MSC mark is well-known internationally and that it has obtained International trademark registration for its MSC mark for shipping, transportation and related services that extend to multiple jurisdictions internationally.
Complainant contends that the disputed domain names are confusingly similar to Complainant's MSC mark because they contain the MSC mark in its entirety. Complainant also contends that the inclusion in the disputed domain names of descriptive terms such as "cargo" and "ltd" and geographical terms such "Australia" and "UK" heightens the confusion because the terms relate to Complainant's business and involve countries that Complainant operates in.
Complainant argues that because it has established prior rights in and to the MSC mark, and has not licensed or authorized Respondent to register the disputed domain names, Respondent lacks any rights or legitimate interests in the disputed domain names. Complainant further contends that Respondent is not commonly known by the disputed domain names, is not in any way affiliated with Complainant, and has not used the disputed domain names for a bona fide offering of goods or services or for a legitimate noncommercial or fair use, but has merely registered and used the disputed domain names to advertise transport services and to promote unrelated third parties.
Finally, Complainant asserts that Respondent registered and has used the disputed domain names in bad faith since Respondent must have known of Complainant's MSC mark given that Complainant's MSC mark is well-known all over the world and given that Respondent copied and used Complainant's figurative MSC trademark on its website. Complainant further asserts that Respondent's use of the disputed domain names is in bad faith as Respondent has used the disputed domain names, which are confusingly similar to Complainant's MSC mark, for a website that offers services that directly compete with Complainant's services and which prominently features Complainant's MSC figurative trademark.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i)the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii)Respondent has 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.
Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states:
"4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
Consensus view: A respondent's default does not automatically result in a decision in favor of the complainant … the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding."
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Consolidation of Respondents
In this proceeding the Registrar has identified the names of two individuals, Andrew Cater and David Wheeler, as the registrants of the disputed domain names. Consolidation of respondents in a proceeding has generally been permitted where "the domain names or the websites to which they resolve are subject to common control, and the consolidation would be fair and equitable to all parties." See, e.g., paragraph 4.16, WIPO Overview 2.0.
On the basis of the evidence provided by Complainant including, inter alia, evidence and assertions which demonstrate commonalities in the registration details and use of the websites, none of which has been contested by the individual Respondents, the Panel concludes that, on the preponderance of the evidence, the disputed domain names are either the creation of one entity (identity unknown) or are under the common control of that entity. Either way, the Panel finds that the Complaint is properly formulated and treats the two named Respondents as one (hereinafter referred to as the "Respondent"). The Panel is satisfied that in so doing the Panel is causing no disadvantage or unfairness to either party or any of the parties, as the case may be.
B. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 2.0, paragraph 1.1. Complainant has provided evidence that it owns International trademark registrations for the MSC mark that extend to multiple jurisdictions.
With Complainant's rights in the MSC mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain ".com") are identical or confusingly similar with Complainant's mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain names are confusingly similar to Complainant's MSC mark as they incorporate the MSC mark in its entirety at the head of each disputed domain name. The addition of the geographical terms "Australia" or "UK" does not distinguish the disputed domain names from Complainant's MSC mark and in fact heightens the confusion by suggesting that the disputed domain names are related to Complainant's MSC services offered in Australia or the United Kingdom of Great Britain and Northern Ireland (the "United Kingdom"). See, e.g., Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. Moreover, the addition of generic terms such as "cargo" or "ltd" after the MSC mark is likewise of no import and does not distinguish the disputed domain names from Complainant's MSC mark, particularly as in this case the word "cargo" relates directly to the business of Complainant. Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the MSC mark and in showing that the disputed domain names are identical or confusingly similar to that trademark.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, thoughthe burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent does not have any rights or legitimate interests in the disputed domain names. Respondent has not made any bona fide or fair use of the disputed domain names in connection with any products or services. Rather, Respondent has merely placed a web page at the disputed domain names that includes an exact copy of Complainant's MSC figurative mark and which offers competing transportation services and advertising for parties unrelated to Complainant. Such use is likely meant to profit from Complainant's MSC mark and does not constitute a bona fide use or legitimate interest.1
In addition, beyond the fact that the available evidence of record shows that Respondent has no connection or affiliation with Complainant, and has never obtained any permission to register or use the disputed domain name, it is inconceivable that Respondent was not aware of Complainant's MSC shipping and transportation services. A simple search of any popular search engine would have quickly revealed Complainant's rights in the MSC name and mark. Thus, in light of Respondent's registration of disputed domain names consisting of Complainant's MSC mark with geographic indicators and generic terms that relate to Complainant's business and/or certain countries where Complainant operates, it is likely that Respondent was well aware of Complainant's MSC mark and transportation services when it registered the disputed domain names.
Given that Complainant has established with sufficient evidence that it owns rights in the MSC mark, and given Respondent's above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
In sum, the Panel finds that in this case Complainant has established a prima facie case showing that Respondent has no rights to or legitimate interests in the disputed domain names. As Respondent, although given an opportunity to present its case, has decided not to submit a response and put forward arguments as to why it should be regarded as having rights or legitimate interests in the disputed domain names, the Panel concludes that, based on the available record, Respondent has not rebutted Complainant's prima facie case. Complainant thus prevails on this element of the Policy.
D. Registered and Used in Bad Faith
The Panel finds that Respondent's actions indicate that Respondent registered and is using the disputed domain names in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(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 web site 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 your website or location or of a product or service on your website or location."
In the present case, Respondent has registered the disputed domain names that fully incorporate Complainant's MSC mark with geographic terms, such as "Australia" and "UK," along with generic terms, such as "cargo" or "ltd". Such combination of geographic and generic terms with Complainant's MSC mark creates a likelihood of confusion by suggesting to consumers that the disputed domain names concern Complainant's shipping or transportation services in Australia or the United Kingdom. Given that Respondent more than likely was aware of Complainant and its MSC mark when Respondent registered the disputed domain names, it is inconceivable that Respondent registered such confusing domain names by chance. If anything, the evidence suggests that Respondent specifically targeted Complainant and its MSC mark, and did so opportunistically and in bad faith.
Moreover, given that the evidence of record shows that Respondent's only use of the disputed domain names has been with web pages that feature Complainant's MSC figurative mark along with competing transportation services and advertising for unrelated third parties, the Panel can only conclude that Respondent's actions have been undertaken in bad faith. The Panel also finds that Respondent's decision to default in this proceeding is further evidence of Respondent's continued bad faith in this matter.
Accordingly, the Panel finds that Complainant succeeds under this element 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 <mscaustralialtd.com> and <msccargouk.com> be transferred to Complainant.
Date: August 10, 2015
1 The Panel also notes that in correspondence between the Center and the Registrar during the course of the Compliance Review stage of case administration pursuant to paragraph 4(a) of the Rules, the Registrar advised that the accounts of Respondent were suspended on the grounds that stolen credit cards had been used to pay for registration and hosting services from the Registrar. Such activities cast further doubt on the legitimacy of Respondent's activities in registering and using the disputed domain names.