Complainant is MSC Crociere S.A. of Geneva, Switzerland, represented by Pennisi Studio Legale, Italy.
Respondent is Gustavo Carlos Turano of Milano, Italy.
The disputed domain name is <mscexcursions.com> which is registered with Cronon AG.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2011. On June 14, 2011, the Center transmitted by email to Cronon AG, a request for registrar verification in connection with the disputed domain name. On June 14, 2011, Cronon AG, transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On June 22, 2011, the Center sent an email communication to Cronon AG, in order to confirm the specific language of the registration agreement. On the same date, Cronon AG, confirmed that the language of the registration agreement was English.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2011.
On July 5, 2011, Respondent sent an email communication to the Center. On July 7, 2011, via email, the Center acknowledged receipt of Respondent’s email communication and informed Respondent that the due date for the filing of a Response was July 17, 2011.
On July 7 and 27, 2011, Respondent sent an email communication to the Center stating that Respondent had sold the disputed domain name. On July 18, 2011, the Center sent an email communication to Respondent stating that Respondent appeared as the holder of the disputed domain name. On the same date, via email, Cronon AG, informed the Center that, due to a software-error, Respondent managed to make an Owner-Update and confirmed that Respondent was again the owner of record of the disputed domain name.
Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 18, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on July 26, 2011. This Panel finds that it was properly constituted. This 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.
Complainant is a shipping cruise line marketing tourist and luxury cruises worldwide.
Complainant has rights over several trademarks incorporating the MSC characters, such as: MSC YACHT CLUB, registration No. 0985490 with The Office for Harmonization in the Internal Market of the European Union (OHIM), registered in 2008, classes 39, 41 and 43; MSC SHOPPING ISLAND, registration No. 0980683 with the OHIM, registered in 2008, classes 35 and 39; and MSC AUREA, registration No. 0956999 with the OHIM, registered in 2008, class 44. Complainant’s affiliate company MSC Mediterranean Shipping Company Holding S.A. also holds several trademark registrations that incorporate the characters MSC as well, such as: MSC, registration No. 0927721 with the OHIM, registered in 2007, classes 39, 41 and 43; and MSC LIRICA, registration No. 0930564 with the OHIM, registered in 2007, classes 39, 41 and 43.
The disputed domain name was created on December 18, 2010.
Complainant’s assertions may be summarized as follows:
Complainant is a shipping cruise line marketing tourist and luxury cruises worldwide since 1988. Since its establishment, Complainant has been widely marketing cruises all over the world, including in Italy, spending several millions of Euros in advertising and other marketing activities.
Complainant runs its business through eleven fully equipped ships: “MSC Melody”, “MSC Armonia”, “MSC Sinfonia”, “MSC Lirica”, “MSC Opera”, “MSC Musica”, “MSC Orchestra”, “MSC Poesia”, “MSC Magnifica”, “MSC Fantasia” and “MSC Splendida”.
Complainant offers its services all over the world and its ships sail in the Mediterranean Sea (visiting the principal ports and famous sea resorts, including Italy), South America, South Africa, Caribbean Sea, North America and Northern Europe.
Complainant extensively uses MSC and MSC CROCIERE trademarks and trade name to distinguish, promote and market its cruises and related services (such as excursions organised during the stop of ships in various ports) through various channels, including web sites, brochures and newspapers. Further, all of Complainant’s ships carry the MSC mark on their bodywork.
Complainant came to know that a certain Ms. O. Zasyedko registered the disputed domain name, whose website has been hosting just a courtesy page. On April 6, 2011, Complainant’s attorney sent a cease and desist letter to Ms. Zasyedko by registered mail; however, the recipient resulted “unknown” at the address indicated in the WhoIs report and the letter was returned to Complainant’s attorney. A few days before submitting the Complaint, Complainant’s attorney came to know that disputed domain name had been apparently transferred to someone else (i.e. Respondent) and thus on May 19, 2011, Complainant’s attorney sent a cease and desist email communication to Respondent, which was returned as “Delivery failed”. On May 24, 2011, Complainant’s attorney sent said cease and desist letter to Respondent also by registered mail, but the letter was returned to Complainant’s attorney since the intended recipient resulted in having already moved.
The disputed domain name is confusingly similar to the trademarks over which Complainant has rights.
Complainant has rights over several trademarks registered directly by Complainant or indirectly through its affiliate company MSC Mediterranean Shipping Company Holding S.A. and used by Complainant under intragroup agreements.
Respondent’s disputed domain name incorporates the words “msc”, which is the distinctive part of the trademarks over which Complainant has rights, and “excursions”, one of the main services provided by Complainant to its customers during cruises.
Complainant’s trademarks are very well known worldwide in relation to the cruise and touristic industry, which includes excursions as one of the main services provided by Complainant.
Considering that the gTLD does not affect the evaluation of the requirement identity/similarity between a trademark and a domain name, Complainant respectfully submits that the disputed domain name is identical or however confusingly similar to Complainant’s trademarks.
Respondent has no rights or legitimate interest in the disputed domain name.
Respondent does not have any right or legitimate interest with respect to the disputed domain name and its registration is a typical case of abusive registration.
Respondent is neither an agent nor a licensee of Complainant and has no connection or affiliation with Complainant. Complainant has never licensed, authorized or otherwise permitted Respondent to register a domain name incorporating the MSC trademark, nor to make any use of it.
Respondent has not been commonly known by the disputed domain name, and has not acquired any trademark or service mark rights in respect to the disputed domain name.
All of the above clearly show the lack of any legitimate interest and the opportunistic conduct of Respondent whose sole and real goal is to retrieve an unfair advantage from the registration of the disputed domain name and/or to disrupt Complainant’s business.
Respondent registered and is using the disputed domain name in bad faith.
Because of Complainant’s intense and continuous use and advertising of its trademarks to distinguish its services in the world cruises market, Complainant has acquired high goodwill and reputation in the MSC trademarks and trade names all over the world, especially in Italy. For instance, by searching on “Google” the words “msc excursions”, all results are related to Complainant (being the first result the official web site of Complainant), while there are no results connected with Respondent.
Registering a domain name identical and confusingly similar to the trademarks of a renowned Company, like Complainant, constitutes bad faith per se.
The disputed domain name is so obviously connected with Complainant’s activities and services that its registration and use by someone other than Complainant suggests opportunistic bad faith.
At the moment of registering the disputed domain name, Respondent could not ignore that Complainant’s MSC trademark was and is one of the most famous trademarks in cruises and tourism industry, identifying also excursions services. Therefore, the registration of the disputed domain name was made with the full knowledge of Complainant’s trademarks and business. Registration in bad faith implies that any possible use of the disputed domain name would be in bad faith. Respondent’s false address is further evidence of bad faith.
Respondent has never used the disputed domain name, and the web page related to the disputed domain name has always been hosting just a courtesy page, being definable this conduct as passive holding. In view of all the circumstances above, the passive holding of the disputed domain name by Respondent constitutes a further evidence of bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions. However, on July 5, 2011, Respondent filed with the Center an email communication stating the following: “[...] we don’t understand who made this complainant. The domain is even empty. We would like to have more information about that [...]”. On July 7 and 27, 2011, Respondent filed with the Center another email communication stating that the disputed domain name had been sold to a third party.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Even though Respondent’s email communication of July 5, 2011 was filed with the Center within the 20 calendar day period to submit a response, it cannot be deemed as an official response since it does not comply with the requirements set forth in the Rules, paragraph 5(b) 1. The Center invited Respondent to file something more formally, however, Respondent did not reply to Complainant’s contentions. Thus this Panel has decided not to take into account such email communications from Respondent.
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant2. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
It is undisputed that Complainant has rights over several marks that incorporate MSC, which have been registered in several jurisdictions. It is also undisputed that Complainant’s services are well-known internationally under such marks in the tourism industry.
The disputed domain name incorporates the characters “msc”, which is the distinctive part in all of Complainant’s marks, and the word “excursions” which is one of the services provided by Complainant to its customers during cruises3. The addition of the descriptive suffix “excursions” is not enough to neither avoid similarity nor prevent the confusing similarity.
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s marks.
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has never licensed, authorized or otherwise permitted Respondent neither to register a domain name incorporating the MSC mark nor to make any use of it. Further, Complainant states that Respondent is neither an agent nor a licensee of Complainant and has no connection or affiliation whatsoever with Complainant, and that Respondent has never been commonly known by such mark.
Complainant asserts that the disputed domain name was directed to a non active website. The fact that the disputed domain name does not resolve to any active webpage indicates that Respondent has not made any use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
The fact that the disputed domain name combines Complainant’s mark with a term “excursions” descriptive of the services marketed by Complainant may lead the public to assume that the disputed domain name is in some way connected to Complainant.
There is no evidence in the file of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which incorporates Complainant’s mark, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name4.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
Taking into consideration the registration, prolonged use, extensive advertisement and international recognition of Complainant’s marks, this Panel is of the view that Respondent should have been fully aware of the existence of Complainant’s marks at the time it obtained the registration of the disputed domain name.
The fact that the actual registrant has changed just before or close to the date the Complaint was filed with the Center does not affect the above finding: this Panel is of the view that, under the Policy, registration of a domain name encompasses later acquisitions of the same.
The concept of a domain name "being used in bad faith" is not limited to positive action5. Passive holding in relation to a domain name registration can, in certain circumstances, constitute a domain name use in bad faith where, like in this case, there are several factors that in the aggregate lead to no other conclusion6. In this case (i) Complainant’s marks are well known, as evidenced by its prolonged and international use; (ii) Complainant’s marks have been registered since at least 2007, years before the registration of the disputed domain name; (iii) the disputed domain name incorporates another’s mark, coupled with just the addition of descriptive term directly associated with Complainant’s activities; (iv) Respondent’s failure to respond to Complainant’s cease and desist letters7; (v) the fact that Respondent appears to have provided false contact details8; (vi) Respondent’s attempt to transfer the disputed domain name after the Complaint was filed with the Center; and (vii) Respondent’s failure to appear at this proceeding.
In light of the above, this Panel finds that the disputed domain name was 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, this Panel orders that the disputed domain name <mscexcursions.com> be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Dated: August 9, 2011
1 Similar situations in LEGO Juris A/S v. Charlie Carmichael, WIPO Case No. D2010-1507 and in World Wrestling Entertainment, Inc. v. Ki Sung, WIPO Case No. DMX2009-0005, where this Panel also declined to take into account as official response an email communication.
2 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “[…]the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
3 See Margadarsi Marketing Private Ltd. v. BitraNet India, WIPO Case No. D2000-1209, Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431.
4 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
5 See Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055.
6 See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615.
7 See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487, Wachovia Corporation v. Peter Carrington WIPO Case No. D2002-0775.
8 See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487, Wachovia Corporation v. Peter Carrington WIPO Case No. D2002-0775, Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362.