WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MSC Mediterranean Shipping Company S.A. v. Ismael Correa, Industrial Ochagavialtda
Case No. D2018-0454
1. The Parties
The Complainant is MSC Mediterranean Shipping Company S.A. of Geneva, Switzerland, represented by SILKA Law AB, Sweden.
The Respondent is Ismael Correa, Industrial Ochagavialtda of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <msc-chile.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2018. On February 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2018.
The Center appointed Andrew F. Christie as the sole panelist in this matter on April 9, 2018. 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 a privately-owned global shipping organization operating a network of over 480 offices in 155 countries, employing over 70,000 people. It provides a range of container shipping services through its fleet of container vessels worldwide including, but not limited to, trade services, dry cargo services, intermodal transportation services, and warehousing and storage solutions. It was founded in 1970 and is based in Geneva, Switzerland. It maintains a local agent in Santiago, Chile.
The Complainant, or its parent company, owns several registrations for the word trademark MSC, including a European Union Trade Mark registration (Registration No. 007257314, registered on April 27, 2010) and a Chilean Trademark registration (Registration No. 1218381, effective from August 26, 2016). It also owns various registrations for domain names that include its registered trademark, including <msc.com> and <mscchile.com>, which are used to resolve to websites through which the Complainant informs potential customers about its products and services.
The disputed domain name was registered on June 15, 2017. The Complainant has provided an undated screenshot of the website resolving from the disputed domain name which contains the heading “MEDITERRANEAN SHIPPING COMPANY we deliver worldwide”. That website contains the Complainant’s logo and uses a color scheme of yellow and black similar to the color scheme of the Complainant’s website. At the time of the Panel’s decision, the disputed domain name continues to resolve to the website featured in the screenshot provided by the Complainant.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because: (i) it directly and entirely incorporates the Complainant’s well-known trademark MSC; (ii) the addition of the generic Top-Level Domain (“gTLD”) “.net” does not add any distinctiveness to the disputed domain name; and (iii) the inclusion of the geographic identifier “chile” does not serve to distinguish the disputed domain name from the trademark, but rather strengthens the confusingly similar element since the word is closely connected to the Complainant’s trademark and its agent and business activities in Chile.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) there is no bona fide offering of goods or services where a domain name incorporates a trademark which is not owned by the Respondent; (ii) the Respondent is not known by the name “msc”; (iii) the Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (iv) the disputed domain name is being used to induce consumers into visiting the website resolving from it under the misapprehension that it is endorsed by the Complainant; (v) at the bottom of the website resolving from the disputed domain name it states “Mediterranean Shipping Company (Chile) All Rights Reserved”, which is a clear indication that the Respondent claims to have rights in the name and purports to be the Complainant’s local agent in Chile; and (vi) the disputed domain name resolves to a website that aims to attract consumers to a false website by copying the design of the Complainant’s official website at “www.msc.com”, and tries to deceive Internet users into believing that they can safely rely on information provided by a trusted company (the Complainant) when in fact the website has no connection with the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent reproduced the Complainant’s website by adopting the Complainant’s logo and overall look with the intention to deceive Internet users into believing the website resolving from the disputed domain name was in fact operated by the Complainant; and (ii) since the registration of the disputed domain name the Respondent has been using it to resolve to an infringing website dedicated to shipping services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s registered trademark MSC, and adds (with a separating hyphen) the word “chile”. The distinctive component of the disputed domain name is the Complainant’s trademark. The addition of the geographic term “chile” does not lessen the confusing similarity of the disputed domain name with the Complainant’s trademark; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its MSC trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website that uses the Complainant’s name and adopts the look of the Complainant’s own website. The content of the website not only fails to identify the lack of any relationship between the Complainant and the operator of the website, it wrongly suggests the existence of such a relationship. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered some years after the Complainant first registered its MSC trademark. The evidence on the record provided by the Complainant with respect to the use of its MSC trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is 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 name <msc-chile.net> be transferred to the Complainant.
Andrew F. Christie
Date: April 23, 2018