Complainant is Matson Navigation Company, Inc. of Oakland, California, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is James Lin of City of Industry, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2017. On April 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 12, 2017.
The Center appointed Martin Schwimmer as the sole panelist in this matter on May 19, 2017. 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 Matson Navigation Company, Inc. has provided transportation and transportation logistics services under the MATSON and MATSON-formative marks, since its founding in 1882. Complainant has provided evidence that it is the owner of several trademarks registered with the United States Patent and Trademark Office, including Registration Nos. 2682632 and 3614741 for MATSON, registered respectively on February 4, 2003 and May 5, 2009, and with the mark’s first use in commerce dated to 1901. The disputed domain name was created on February 29, 2002. Respondent is hosting click-through ads promoting logistics and related services at the disputed domain name. 5. Parties’ Contentions A. Complainant
Founded in 1882, Complainant operates a shipping company under MATSON and MATSON-formative marks. It provides cargo shipping, storage and logistics services, and utilizes “Matson Logistics” as a trading name for one of its subsidiaries.
Complainant has proffered numerous trademark registrations incorporating the MATSON trademark (the “Trademark”), covering various services relating to cargo transport, cargo storage, and supply chain logistics. It operates a website promoting such services at “”.
Complainant contends that the disputed domain name is identical or confusingly similar to the MATSON trademark.
Complainant denies that Respondent has any license, permission, or authorization to use the Trademark, it is not referred to or commonly known as “matson” or “matson logistics”, has not made a bona fide offering of goods or services and, accordingly, that Respondent does not have any rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent has used the disputed domain name to link to advertisements promoting the shipping and services of competitors. Such use constitutes registration and use in bad faith.
Complainant alleges that in response to Complainant offering USD 600 for the disputed domain name, Respondent requested USD 6000 to transfer the disputed domain name.
Complainant alleges that Respondent has registered other domain names that reflect famous trademarks and the term “logistics,” such as and . B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has established rights in the MATSON trademark, as evidenced by its registrations and its proof of use. It has proffered evidence of its use of the MATSON trademark in connection with logistics services. The Panel concludes that the disputed domain name is confusingly similar because it incorporates Complainant’s MATSON mark in its entirety, adding only a descriptive term related to Complainant’s business, namely “logistics,” and the generic Top-Level Domain (“gTLD”) “.com”.
Consequently, the Panel finds that Complainant has met the first element of the Policy B. Rights or Legitimate Interests
The second ground to be demonstrated by Complainant, according to the provisions of the Policy, is Respondent’s absence of any rights or legitimate interests in the disputed domain name, per paragraph 4(a)(ii) of the Policy.
Previous UDRP panels have consistently held that a complainant must make out a prima facie case that the respondent does not hold rights or legitimate interests in the domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant asserts that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the Trademark in a domain name or in any other manner. There is nothing in the case file to suggest that Respondent is commonly known by the Domain Name. The Panel confirms that the disputed domain name resolves to a page that evidences no legitimate or fair use of Complainant’s Trademark, specifically, Respondent is running click-through ads promoting services competitive to those of Complainant.
In addition, Respondent has not submitted any reply to Complainant’s contentions.
Therefore, in light of Complainant’s unrebutted prima facie case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Respondent clearly targeted Complainant by selecting a name that embodies Complainant’s trading name and mark MATSON LOGISTICS.
The Panel notes that Complainant has established that it has been using the MATSON trademark at least since March 1967. Particularly given that the website at the disputed domain name contains links to Complainant’s competitors, it is beyond coincidence that Respondent would select without prior knowledge of Complainant’s use of its Trademark.
Complainant evidences its allegation that Respondent’s home page contains advertisements to services competitive to its own. Complainant also evidenced its allegation that Respondent requested USD 6,000, an amount most likely in excess of any documented out-of-pocket costs directly related to the domain name. Additionally, Complainant has evidenced its allegation that Respondent has engaged in a pattern of cybersquatting by, for example, registering the domain names and .
Finally, the Panel may make negative inferences based on Respondent’s failure to respond to Complainant’s contentions.
Complainant has demonstrated multiple bases for the Panel to conclude that Respondent registered the disputed domain name with knowledge of Complainant’s mark, to take advantage of Complainant’s reputation in that mark, and has registered and used the disputed domain name in bad faith. 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 name be transferred to Complainant.
Martin Schwimmer
Sole Panelist
Date: June 6, 2017
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