Complainant is Matson Navigation Company, Inc. of Oakland, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
Respondents are Wet Web Design, LLC of Lewes, Delaware, United States of America; and Triton Logic, LLC, of Lebanon, Missouri, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , and (the “Disputed Domain Names”) are registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2015. On December 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on December 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2016. Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 11, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 19, 2016. 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 states that it was founded in 1822 and is “one of the leading ocean carriers in the U.S., providing cargo shipping services throughout the Pacific, with a long-time focus on the Hawaiian Islands.” Complaint further states that it acquired Horizon Lines, Inc., in 2015 and “continues to carry on its Alaska Business.” As a result, Complainant states that its “transportation offerings now span the globe from Shanghai to Savannah and encompass everything from providing a vital lifeline to the economies of Hawaii, Alaska, Guam, Micronesia and the South Pacific to delivering a wide range of multi-modal services throughout North America.”
Complainant states, and provides evidence to support, that it is the owner of the following trademarks: MATSON (the “Matson Trademark”); HORIZON LINES (the “Horizon Lines Trademark”); and SHIPMYVEHICLE (the “ShipMyVehicle Trademark”), including (among many others) the following registrations:
- U.S. Reg. No. 3,614,741 for MATSON for use in connection with, inter alia,“transportation logistics services” (first used in commerce March 1987; registered May 5, 2009).
- U.S. Reg. No. 2,874,905 for HORIZON LINES for use in connection with, inter alia, “freight transportation services by truck in connection with ocean shipping” (first used in commerce February 24, 2003; registered August 17, 2004).1
- U.S. Reg. No. 3,063,226 for SHIPMYVEHICLE for use in connection with, inter alia, “providing consumer information in the field of freight shipping transportation services” (first used in commerce February 21, 2003; registered February 28, 2006).2
The Disputed Domain Names were registered on the following dates:
- : February 27, 2012
- : February 27, 2012
- : July 17, 2011
- : June 22, 2011
Complainant further states, and provides evidence to support, that the Disputed Domain Names are being used in connection with websites that “mimic[ ] the content” at Complainant’s own websites “and purport[ ] to offer overlapping shipping services.” Complainant also states that it previously prevailed in a proceeding under the Policy against the same Respondents as here, Matson Navigation Company, Inc. v. Bobby McGee and Triton Logic,WIPO Case No. D2013-0182 (transfer of , and ). 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- Complainant has rights in and to the Matson Trademark, the Horizon Lines Trademark and the ShipMyVehicle Trademark as a result of the trademark registrations cited above. Complainant further contends that each of the Disputed Domain Names is confusingly similar to one of these trademarks because, inter alia, the domain name “fully incorporates” the Matson Trademark and “[t]he mere addition of the common and descriptive phrases ‘vehicle shipping’ to the MATSON mark is of no import”; the and domain names “incorporate the most recognizable and prominent element of the HORIZON LINES mark”; “[t]he mere addition of the common and descriptive phrases ‘vehicle shipping’ and ‘car shipping’ to the HORIZON LINES mark is of no import”; the domain name “incorporates SHIPMYVEHICLE with the lone addition of an ‘ing’”; and “[t]he mere exchange of ‘shipping’ instead of ‘ship’ is of no import.”
- Respondents have no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “[w]here, as here, Complainant’s marks are so well known and recognized, there can be no legitimate use by Respondent[s]”; “[t]here is no relationship between Complainant and the Respondent[s] giving rise to any license, permission, or other right by which Respondent[s] could own or use any domain name incorporating” any of the relevant trademarks; and Respondent[s] registered the Disputed Domain Names “to use Complainant’s [trademarks] to profit from the web traffic generated by consumers seeking to obtain information about Complainant’s services, or from the association and goodwill between the” Disputed Domain Names and Complainant’s trademarks.
- The Disputed Domain Names were registered and are being used in bad faith because, inter alia,Respondents are using each of the Disputed Domain Names “in connection with a website that purports to offer shipping services that are identical to those offered by Complainant”; “Respondent[s’] conduct makes clear that [they] intend[ ] to profit from deceiving Internet users as to [their] affiliation with Complainant”; “Respondent[s] sought to extract a payment from the Complainant” when approached about one of the Disputed Domain Names; and Respondents have engaged in a pattern of conduct as shown by Complainant’s previous proceeding against Respondents under the Policy, Matson Navigation Company, Inc. v. Bobby McGee and Triton Logic, supra. B. Respondents
Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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. Policy, paragraph 4(a). A. Preliminary Issue: Consolidation
Complainant has requested consolidation, that is, to allow a single proceeding with respect to all of the Disputed Domain Names despite the fact that the WhoIs records identify two ostensibly different registrants for the Disputed Domain Names – that is, Wet Web Design, LLC, for and Triton Logic, LLC, for , and . Paragraph 4.16 of the WIPO Overview 2.0 states that UDRP panels have allowed consolidation where “(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.”
Complainant has argued that both registrants are “simply related companies owned by Bobby McGee, who owns and controls all four of the” Disputed Domain Names. In a Request for Consolidation submitted with the Complaint, Complainant argues that “multiple domain name registrants controlled by a single person or entity may be treated as a single respondent for purposes of the Policy and the Rules.” In support thereof, Complainant notes that, inter alia, the registrar of all four Disputed Domain Names is the same; that the websites associated with all four Disputed Domain Names “contain identical or nearly identical content”; and that the Disputed Domain Names’ WhoIs records contain identical information in some of the administrative contacts.
Respondent (or Respondents, as the case may – or may not – be) has not disputed any of the facts or conclusions set forth by Complainant.
Accordingly, the Panel determines that consolidation is appropriate. See, e.g., Educational Testing Service v. Domains by Proxy Inc. / Zhao Zhihui / Chen keqing,WIPO Case No. D2008-0993 (allowing consolidation where “[t]he evidence shows that the Respondents are so closely intertwined with each other in relation to the disputed domain names that a conclusion of common control and ownership of the disputed domain names is inescapable” and “[t]he Respondents did not object to the consolidation of the disputed domain names under the Complaint. Further the Respondents jointly communicated with the Center and jointly submitted the Response in relation to all the disputed domain names”).
The Panel will refer to a single Respondent for the remainder of the Decision. B. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the Matson Trademark, the Horizon Lines Trademark and the ShipMyVehicle Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the Matson Trademark, the Horizon Lines Trademark and the ShipMyVehicle Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only, as it is well-established that the top-level domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview 2.0, paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
Notably, each of the Disputed Domain Names contains one of Complainant’s trademarks in its entirety or a prominent portion of such a trademark. Previous panels have found that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Oki Data Americas, Inc. v. A,WIPO Case No. D2001-0903. See also Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov,WIPO Case No. D2011-1474 (“when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy”).
In addition, each of the Disputed Domain Names contains one or more additional words or abbreviations that are associated with Complainant’s services. The addition of certain words, as here, can “exacerbate[ ] the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase[ ] the risk of confusion between the Domain Name and the…trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill,WIPO Case No. D2010-2124 (citing Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC,WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”))).
Here, because the words “car”, “vehicle” and “shipping” are associated with Complainant’s trademarks, these words increase the confusing similarity between the Disputed Domain Names and Complainant’s trademarks. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
This same conclusion regarding similar domain names has been reached by a previous panel in a proceeding initiated by the same Complainant as here, Matson Navigation Company, Inc. v. Bobby McGee and Triton Logic, supra.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. C. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia,“[w]here, as here, Complainant’s marks are so well known and recognized, there can be no legitimate use by Respondent”; “[t]here is no relationship between Complainant and the Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating” any of the relevant trademarks; and Respondent registered the Disputed Domain Names “to use Complainant’s [trademarks] to profit from the web traffic generated by consumers seeking to obtain information about Complainant’s services, or from the association and goodwill between the” Disputed Domain Names and Complainant’s trademarks.
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Based on the facts and contentions set out above, the Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. D. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location. Policy, paragraph 4(b).
In this case, Complainant in effect argues that bad faith exists pursuant to Policy paragraph 4(b)(iv), for the reasons set forth above.
As numerous panels under the Policy have made clear, using a disputed domain name under the facts of this proceeding in connection with a website that offers services similar to or competitive with the complainant’s constitutes bad faith because it “has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.” See, e.g., Hilton Worldwide, Hilton Hotels Corporation, HLT Domestic IP LLC and HLT International IP LLC v. Steve Alek, Niagara Falls Corp,WIPO Case No. D2010-1063 (“[t]he inevitable conclusion is that Respondent registered the domain names in full knowledge of Complainants’ rights and reputation and in the expectation that it could profit from the identity or confusing similarity between those trademarks and the respective domain names”).
Finally, the Panel finds that, by its registration of the four Disputed Domain Names in this proceeding as well as three domain names in a previous proceeding (Matson Navigation Company, Inc. v. Bobby McGee and Triton Logic, supra, Respondent has engaged in a “pattern” of conduct that also constitutes bad faith, pursuant to paragraph 4(b)(ii) of the Policy.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy. 7. Decision
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 , , and be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: January 22, 2016
1 Although this registration is in the name of Horizon Lines, LLC, Complainant provides a copy of a relevant trademark license agreement and also states: “Through its recent acquisition of Horizon Lines, Complainant is the owner of all trademark rights in the HORIZON LINES and HORIZON LINES-formative marks.” Paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) notes as follows: “In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP.”
2 Although this registration is in the name of Horizon Lines, LLC, Complainant provides a copy of a relevant trademark license agreement and also states: “Through its recent acquisition of Horizon Lines, Complainant is the owner of all trademark rights in the SHIPMYVEHICLE mark.”
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