MSC Mediterranean Shipping Company Holding S.A. of Geneva, Switzerland, just lost its attempt to grab the domain name MSC.com
Its an interesting case because the domain name was acquired by the domain holder Paul Kocher, in a Sedo auction for $48,000 in December 2013 Actually Jeremiah Johnston of Sedo represented the domain holder.
After the auction the trademark holder offered to buy the domain for $50,000 which the domain holder rejected and the UDRP was filed.
Here are the relevant facts and findings by the three member panel:
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
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 “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.
“”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 interests 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.
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.
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.””
