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A.P. Møller - Mærsk A/S v. Bich Vy Le Ngoc/An Phuoc Minh - Vietnam [2005] GENDND 410 (5 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

A.P. Møller - Mærsk A/S v. Bich Vy Le Ngoc/An Phuoc Minh - Vietnam

Case No. D2005-0079

1. The Parties

The Complainant is A.P. Møller - Mærsk A/S, Copenhague, Denmark, represented by Bech-Bruun Dragsted, Denmark.

The Respondent is Bich Vy Le Ngoc/An Phuoc Minh - Vietnam, Ho Chi Minh, Viet Nam.

2. The Domain Names and Registrar

The disputed domain names:
<maerskairlines.com>;
<maerskcargo.com>;
<maerskglobal.com>;
<maerskgroup.com>;
<maerskliners.com>;
<maersklines.com>;
<maerskmarine.com>;
<maerskmoller.com>;
<maerskshipping.com>;
<maersktanker.com>;
<maersktravel.com>;
<apmsingapore.com>;

are all registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2005. On January 25, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On January 25, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for all the domain names and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 18, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced February 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response March 20, 2005. Respondent filed a Response with the Center was on March 18, 2005.

The Center appointed Wolter Wefers Bettink, Knud Wallberg and Tony Willoughby as panelists in this matter on April 21, 2005. The Panel finds that it was properly constituted. Each member of 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 is engaged in the exploration for and production of oil and gas, in container shipping, including tankers, trampers, offshore and other shipping activities, in shipbuilding, aviation, industry and supermarkets. Complainant employs over 60,000 people worldwide and has offices in more than 125 countries.

Complainant is the owner of the trademark MAERSK, registered in the European Union (see application No. 3483039, dated October 30, 2003), internationally (Il registration No. 717987, dated August 9, 1999), in Vietnam (application No. 24941, dated 11 July 1996) and in Canada (registration No. TMA213401, dated October 25, 1974). Complainant is also the owner of the trademarks MAERSK LINE, registered in the United States (application No. 1043766, dated February 21, 1975) and MAERSK SEALAND, registered in the United States (application No. 274959, dated May 9, 2001).

One of Complainant’s group companies, A.P. Møller Singapore Pte. Ltd., has been operating in Singapore since 1974.

Complainant uses the letters APM, reflecting the initials A.P. Møller, in various company names belonging to its group, among which APM Terminals.

Respondent registered the domain names:

<maerskairlines.com>;
<maerskcargo.com>;
<maerskglobal.com>;
<maerskgroup.com>;
<maerskliners.com>;
<maersklines.com>;
<maerskmarine.com>;
<maerskmoller.com>;
<maerskshipping.com>;
<maersktanker.com>;
<maersktravel.com>;
<apmsingapore.com>;

on April 14, 2004.

Respondent has used (at least) the domain name <maerskgroup.com> in order to offer all the domain names at issue for sale.

On October 14, 2004, Complainant sent a Cease and Desist Letter to Respondent. In answer to a reply by Respondent, Complainant stated by letter of November 9, 2004, that it was prepared to defray the actual expenses of the registration of the domain names at issue. By email of November 10, 2004, Respondent replied that it was prepared to transfer all the domain names at issue for 10,000 United States dollars. Respondent also wrote: “The cost is not as expensive as you may think for all the time, labour, etc. (…) you may get when bringing this case to WIPO.”

On November 11, 2004, Complainant replied that it was prepared to buy the domain names at issue from Respondent for USD 9.99 per domain, since this was the actual cost for registration for Respondent.

On November 11, 2004, Respondent replied that he was not prepared to transfer the domain names at issue under those conditions.

On October 28, 2004, Respondent 1 (Bich Vy Le Ngoc) transferred the domain name <apmsingapore.com> to a certain An Phuoc Minh-Vietnam. For the reasons set out below the Panel regards Bich Vy Le Ngoc and An Phuoc Minh as one and the same and hereinafter refers to both as “Respondent”, or, where appropriate, “Respondent 1” and “Respondent 2”.

5. Applicable Rules

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

“(i) the domain name at issue is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4(a)(iii) above.

Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interests to the domain name for the purpose of paragraph 4(a)(ii) above.

6. Parties’ Contentions

A. Complainant

Complainant is engaged in exploration for and production of oil and gas, in container shipping, including tankers, trampers, offshore and other shipping activities, in shipbuilding, aviation, industry and supermarkets. Complainant employs over 60,000 people worldwide and has offices in more than 125 countries.

Complainant is the proprietor of the trademark MAERSK as well as trademarks incorporating the element ‘maersk’, such as MAERSK LINE and MAERSK SEALAND.

Complainant’s trademark rights are based on the extensive worldwide use of the MAERSK trademark and variations of that trademark in connection with its shipping business; this use extending for a period of almost 90 years. Complainant currently owns trademark applications and/or registrations for the MAERSK and variations of that mark in almost 100 countries. Furthermore, the MAERSK trademark is extremely well-known and qualifies for extended protection as a well-known mark. Respondent’s registration of the domain names at issue incorporating the name ‘maersk’ therefore constitutes an infringement of Complainant’s well-known trademark rights on the basis of article 6bis of the Paris Convention.

Complainant contends that there is confusing similarity between Complainants registered, use based and well-known trademark MAERSK and the domain names registered by Respondent which incorporate the name ‘maersk’. The domain name <apmsingapore.com> reflects the initials A.P. Møller and the place of its business activity i.e. Singapore, where one of the group companies - A.P. Møller Singapore Pte. Ltd - is incorporated and has been operating since 1974.

The disputed domain names merely consist of Complainant’s trademark MAERSK followed by generic terms. The generic terms refer to some of the goods identified by Complainant’s trademark and to Complainant’s activities.

Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name at issue. Complainant has not licensed or otherwise permitted Respondent to use its MAERSK trademark or to apply for any domain name incorporating this mark.

The domain names at issue were registered and are being used in bad faith. The MAERSK trademark is well-known. The construction and content of Respondent’s website under “www.maerskgroup.com” gives the impression that the entity behind “maerskgroup.com” is part of Complainant’s group of companies, thereby causing confusion and uncertainty among internet users and Complainant’s customers.

In response to a Cease and Desist Letter Respondent replied that he was willing to offer the domain names at issue for sale to Complainant for 10,000 United States dollars. Respondent’s refusal to accept Complainant’s offer to purchase the domain names at issue by reimbursing the reasonable expenses connected with official registration of the domain names, indicates bad faith.

Complainant contends that Respondent 1 and Respondent 2 are one and the same. Even after the alleged transfer of the domain name <apmsingapore.com> from Respondent 1 to Respondent 2, the domain name <apmsingapore.com> still appears to be offered for sale on the website “maerskgroup.com”. Complainant points out that Respondent 1 and 2 have the same postal address.

B. Respondent

Respondent 1 has not put forward any defence as to Complainant’s contentions with respect to the domain names:

Respondent 2 has put forward the following contentions with regard to the domain name <apmsingapore.com>. Respondent 2 claims to have acquired this domain name on October 28, 2004, from Respondent 1 together with the acquisition of a number of other domain names, among which <apmvietnam.com>, <apmthailand.com>, <apmeurope.com> and <apmfashion.com>.

The Ho Chi Minh City Council has granted Respondent 2 permission to establish a company named An Phuoc Minh Private Enterprise. Respondent 2 has legal reasons for acquiring the domain name <apmsingapore.com>.

Complainant’s claim that the domain name is identical or confusingly similar to a trademark of service mark in which Complainant has rights is groundless. Complainant’s registration of the domain name <apmsingapore.com.sg> has nothing to do with Respondent 2’s registration of <apmsingapore.com>. APM is just an abbreviation, with no specific meaning. Therefore there is no reason to argue that An Phuoc Minh (APM Vietnam) has no rights to register its own domain. There is no valid reason why Respondent 2 cannot obtain a domain name consisting of a combination of APM and Singapore.

The acquisition of the domain name at issue was legal, i.e. with an authorized register and Respondent 2 paid the full registration fee, thereby entitling Respondent 2 to ownership of <apmsingapore.com>.

It is clear that had Complainant needed the domain name <apmsingapore.com> it would have registered it a long time ago.

Respondent 2 has rights and legitimate interests to the domain name <apmsingapore.com>. Respondent 2 uses this domain name for the website of his company An Phuoc Minh Vietnam.

Respondent 2 has not used or registered the domain name <apmsingapore.com> in bad faith. APM is an abbreviation of An Phuoc Minh Private Enterprise and Singapore an indication of the target market. There is no trademark registration for a combination of the letters APM and the geographic name Singapore.

7. Discussion and Findings

Complainant must provide evidence of all elements of paragraph 4(a) of the Policy.

A. Trademark rights

Complainant has provided sufficient evidence of its rights to the trademark MAERSK.

In relation to APM, the Panel has taken note that Respondent does not contest Complainant’s trademark rights to APM, but only states that APM is an abbreviation that could mean anything.

The Panel is satisfied that Complainant has common law trademark rights to the name APM. Common law rights come into existence when a party can establish goodwill or a reputation in and to a name. (See e.g. David Gilmour, David Gilmour Music Limited and David Gilmour Music Overseas Limited v. Ermanno Cenicoll, WIPO Case No. D2000-1459 (December 15, 2000), <davidgilmour.com>.) Complainant has provided evidence of such goodwill and reputation. It uses APM as part of the name of several companies belonging to its group, including APM Holding Australia Pty Ltd, APM Terminals Shanghai Co. Ltd and APM Saigon Shipping Company Limited. Complainant has a fully owned company in Singapore called A.P. Moller Singapore Pte. Ltd, and is apparently using the indication APM in the domain name <apmsingapore.com.sg>. The Panel finds that Complainant has provided sufficient evidence of its common law trademark rights to the name APM.

B. Identical or Confusingly Similar

<maerskairlines.com>, <maerskcargo.com>, <maerskglobal.com>, maerskgroup.com>, <maerskliners.com>, <maersklines.com>, <maerskmarine.com>, <maerskshipping.com>, <maersktanker.com>, <maersktravel.com>.

These domain names are clearly confusingly similar to Complainant’s trademark MAERSK. The suffix “.com” indicates that the domain names at issue are registered in the “.com” gTLD. All these domain names incorporate Complainant’s well-known trademark MAERSK with the addition of various generic words that are related to Complainant’s business. The combination of a well-known and distinctive trademark and a descriptive word is sufficient to establish confusing similarity with the trademark for the purposes of the Policy. The addition of a generic word does not alter the likelihood that the public will connect this domain name with the MAERSK trademark.

The Panel therefore finds that the above mentioned domain names are confusingly similar to Complainant’s trademark MAERSK.

<maerskmoller.com>

The domain name <maerskmoller.com> is confusingly similar to Complainant’s trademark MAERSK. The suffix “.com” indicates that the domain name is registered in the “.com” gTLD. The dominant element of this domain name is ‘maersk’. This element is identical to Complainant’s trademark MAERSK. The addition of the word ‘moller’ only creates a greater likelihood that the public will connect this domain name with the MAERSK trademark, as the Complainant’s company name is A.P. Møller Maersk A/S. The Panel therefore finds that the domain name <maerskmoller.com> is confusingly similar to Complainant’s trademark MAERSK.

<apmsingapore.com>

The domain name <apmsingapore.com> is confusingly similar to Complainant’s trademark APM. The suffix “.com” indicates that the domain name is registered in the “.com” gTLD. As Respondent has confirmed, the suffix Singapore refers to the city state Singapore. The dominant element of the domain name is APM. This element is identical to Complainant’s trademark APM, so that the domain name <apmsingapore.com> is confusingly similar to Complainant’s trademark APM.

C. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, Respondent may demonstrate that it has a right or a legitimate interest to the domain name for the purpose of paragraph 4(a)(ii), inter alia, by providing evidence of any of the following circumstances:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

“(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

“(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

<maerskairlines.com>, <maerskcargo.com>, <maerskglobal.com>, <maerskgroup.com>, <maerskliners.com>, <maersklines.com>, <maerskmarine.com>, <maerskmoller.com>, <maerskshipping.com>, <maersktanker.com>, <maersktravel.com>.

Respondent has used the domain name < maerskgroup.com> for a website which suggests that Respondent is part of the A.P. Møller Maersk group. This website not only depicts the MAERSK trademark and the MAERSK logo, but also provides links to a number of Maersk websites, operated by (a company from the group of companies of) Complainant. At the bottom of this website Respondent offers the domain names at issue for sale.

Respondent has neither provided evidence that it is a representative of Complainant nor that Complainant has licensed it to use the trademark MAERSK. Even if Respondent was an authorized representative or licensee of Complainant, this in itself is not sufficient to give Respondent the right to use the MAERSK trademark as a domain name.

As was held by the panels in, inter alia, Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 (April 20, 2000); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 (April 13, 2000); Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 (October 18, 2001) and Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292 (January 20, 2002), a licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark. As decided by the panel in Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 (April 20, 2000): “the use of a mark as a domain name clearly goes further than what is required merely to resell products.”

In OKI Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903 (November 6, 2001) (<okidataparts.com>) the Panel held that in order to have rights and/or a legitimate interest in a domain name the reseller must actually offer the trademark goods, must use the site only for the sale of the trademark goods, must accurately disclose the relationship with the trademark holders and must not try to corner the market in similar domain names. Even if Respondent could be considered an authorized representative or licensee of Complainant, the registration and use of the domain name at issue does not meet these standards.

The Panel also notes that the offering for sale of a number of domain names which incorporate Complainant’s well-known trademark cannot be considered as a bona fide offering of goods or services.

In light of the above the Panel finds that Respondent has no right or legitimate interest in any of the above mentioned domain names.

<apmsingapore.com>

As set out above, on October 14, 2004, Complainant sent a Cease and Desist Letter to Respondent 1 who then held all the domain names at issue, including <apmsingapore.com>. On October 28, 2004, Respondent 1 transferred the latter domain name to Respondent 2. Therefore, when Complainant filed the Complaint against Respondent 1 on January 25, 2005, the domain name <apmsingapore.com> had been transferred to Respondent 2. When the Center was informed by the Registrar that the domain name <apmsingapore.com> had indeed been transferred to Respondent 2, it notified Complainant that the Complaint was administratively deficient. Upon the Center’s invitation, the Complainant amended the Complaint by adding Respondent 2 and stating that Respondents 1 and 2 were in fact the same.

Paragraph 3(c) of the Rules provides that a Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. This raises the questions whether Respondent 1 and 2 are separate companies or persons or are in fact the same.

The Panel notes that Respondent 1 and 2 have the same contact details and postal address. Respondent 2 claims to be a company operating under the name of An Phuoc Minh. However, Respondent has not submitted any evidence of the existence of this company. Respondent has noted in its Response that the Ho Chi Minh City Council has granted it permission to establish a company under this name and has referred to the website “www.hochiminhcity.gov.vn”. However, the Panel has not found any indication on this website that this company is registered with the Ho Chi Minh City Council. On this basis, the Panel has not been convinced that Respondent 1 and 2 are separate entities or persons. The Panel therefore decides that it will treat Respondent 1 and Respondent 2 as one and the same Respondent.

Respondent presently uses the domain name <apmsingapore.com> for a website on which it claims to sell and repair Italian vintage scooters. However, Respondent has not refuted Complainant’s statement that this website was established after Complainant filed its Complaint. Prior to the notification of this dispute, Respondent was using the domain name <apmsingapore.com> only as part of an offer for sale of all the domain names at issue on its website under “www.maerskgroup.com”. As set out above, this offer for sale cannot be considered as a bona fide offering of goods or services, so that this does not give Respondent a legitimate interest under paragraph 4(i) of the Policy.

Both Respondent 1 and Respondent 2 are not, and have not been, commonly known by the domain name at issue. Respondent 2 has claimed to have established a company named An Phuoc Minh Private Enterprise, but has failed to provide any evidence thereof. Furthermore, Respondent has not provided any evidence that it is or has been commonly known under the name APM or APM Singapore. Respondent has allegedly been using the domain name at issue for a business dealing in the repair and selling of Italian vintage scooters, but only after it received a Cease and Desist Letter from Complainant. This does not create a right or legitimate interest in the sense of either paragraph 4(c)(ii) or (iii) of the Policy.

In light of the foregoing the Panel finds that Respondent has no rights or legitimate interests in the domain name at issue.

D. Registered and Used in Bad Faith

<maerskairlines.com>, <maerskcargo.com>, <maerskglobal.com>, <maerskgroup.com>, <maerskliners.com>, <maersklines.com>, <maerskmarine.com>, <maerskmiller.com>, <maerskshipping.com>, <maersktanker.com>, <maersktravel.com>.

The Panel finds that Complainant has provided sufficient evidence that Respondent has registered and used the domain names at issue in bad faith. Based on the content of Respondent’s website it is clear that Respondent knew the trademark MAERSK when registering the domain names at issue. Furthermore, the links on this website to Complainant’s websites indicate that Respondent has deliberately included Complainant’s trademark in the domain names at issue in order to attract business. By its use of the domain names at issue, Respondent has created the (incorrect) impression of endorsement by or affiliation with Complainant. The content of this website, together with the domain names at issue may create the (incorrect) impression that Respondent is part of Complainant’s group of companies, or at the very least that Complainant has approved the use of these domain names.

The public that is familiar with Complainant’s trademark - which is the public most likely to search for these websites - will expect to find a website belonging to Complainant under the domain names at issue. The fact that Respondent is using these domain names for his own website will, therefore, misleadingly divert customers to Respondent’s website. This further proves that Respondent has intentionally used the goodwill of Complainant’s trademark to create traffic to its website operating under the domain names at issue.

Finally, Respondent has offered the domain names at issue for sale to Complainant for 10,000 United States dollars. This asking price is significantly in excess of Respondent’s out-of-pocket registration expenses. An excessive price is not necessarily an indication of bad faith, but in the particular circumstances of this case (as related above) the Panel finds this to be an additional clear indication of bad faith.

The Panel therefore concludes that Complainant has provided sufficient evidence that Respondent’s registration and use of the above mentioned domain names has been made in bad faith.

<apmsingapore.com>

Respondent has offered this domain name (together with the other domain names at issue) for sale to Complainant for 10,000 United States dollars. This asking price is significantly in excess of Respondent’s out-of-pocket registration expenses and in the particular circumstances of this case in the view of the Panel constitutes evidence of registration and use in bad faith of this domain name.

The Panel also notes that a dubious (fake) transfer of a domain name after receipt of a Cease and Desist Letter to an apparently non-existing third party, may be a further indication of bad faith.

The Panel therefore concludes that there is sufficient evidence that Respondent’s registration and use of the domain name <apmsingapore.com> is in bad faith.

8. Decision

On the basis of the foregoing the Panel decides that Complainant has provided the required evidence for the requested order transferring the domain names at issue from Respondent to Complainant. Accordingly, pursuant to paragraphs 4(i) of the Policy the Panel orders that the registration of the domain names:

<maerskairlines.com>;
<maerskcargo.com>;
<maerskglobal.com>;
<maerskgroup.com>;
<maerskliners.com>;
<maersklines.com>;
<maerskmarine.com>;
<maerskmoller.com>;
<maerskshipping.com>;
<maersktanker.com>;
<maersktravel.com>;
<apmsingapore.com>;

be transferred to Complainant.

Dated: May 5, 2005