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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) v. Hulmiho Ukolen / Domain Admin, Whois protection

Case No. D2015-0974

1. The Parties

The Complainant is Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) of Zürich, Switzerland, represented by BrandIT Legal AB, Sweden.

The Respondent is Hulmiho Ukolen of Helsinki, Finland; Domain Admin, Whois protection of Praha, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <migrosmagazin.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co. Ltd dba HebeiDomains.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2015. On June 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 15, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 15, 2015.

On June 15, 2015, the Center transmitted an email to the parties in English and Finnish regarding the language of proceeding. On June 15, 2015, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondent did not submit comments within the specified due date.

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" 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 the Respondent of the Complaint, and the proceedings commenced on June 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 13, 2015.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on July 22, 2015. 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

The Complainant is the proprietor of the trademark MIGROS, registered as International Trademark Registration Nos. 315524 and 397821 since 1996 and 1973, respectively. The disputed domain name was created in 2006 and has since been transferred to the Respondent.

5. Parties' Contentions

A. Complainant

The language of this administrative proceeding should be English. The Respondent has used English in communications preceding the lodging of the Complaint. The disputed domain name uses Latin script and includes copyright notice and privacy policy in English. It will cause undue delay to proceed in a language other than English.

The disputed domain name is confusingly similar to the Complainant's trademark as it entirely incorporates the Complainant's trademark and would be perceived as descriptive of a website for information about the Complainant's magazine. The Complainant operates its website at <migrosmagazin.ch>.

The Respondent has no rights or legitimate interests in the disputed domain name. There is no relationship between the Complainant and the Respondent that could give rise to any permission by which the Respondent could use the disputed domain name. The Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making legitimate noncommercial or fair use of the disputed domain name.

The disputed domain name is offered for sale at an auction site for USD 5,750. The website also includes a link to one of the Complainant's competitors. The Respondent must have been aware of the Complainant's trademark when obtaining the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

A. Language of the Proceeding

The language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, or the panel determines otherwise under paragraph 11 of the Rules. In this case, the language of the registration agreement is Finnish. According to the Complainant, the Respondent has used English in pre-commencement correspondence and thus familiar with English.

The Respondent has not rebutted these statements and has not objected for English to be the language of the proceeding. Accordingly, in view of the circumstances of this case, the Panel determines that the language of the proceeding shall be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

The Complainant has submitted evidence that it is the proprietor of the registered trademark MIGROS, and that it has registered and is using the domain name <migrosmagazin.ch>. The disputed domain name incorporates the Complainant's trademark in its entirety. The trademark is combined with the term "magazin" in the disputed domain name. This may lead Internet users to believe that the disputed domain name would relate to magazines provided by the Complainant. The Panel finds that the addition of "magazine" to the Complainant's distinctive trademark is insufficient to avoid a finding of confusing similarity. Accordingly, the Complainant has established that the disputed domain name is confusingly similar to its trademark.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establishes that the Respondent has no rights or legitimate interests in the disputed domain name.

The consensus view among UDRP panels is that once a complainant has made a prima facie case indicating the absence of the respondent's rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

The Complainant has submitted that it is not affiliated with the Respondent, it has not authorized the Respondent to use the trademark MIGROS in the disputed domain name, that the Respondent is not commonly known by the disputed domain name, that the Respondent is not making legitimate noncommercial use of the disputed domain name and that it is not used for a bona fide offering of goods or services. The Respondent has not rebutted these arguments.

The Panel finds that the Complainant has made out a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is fulfilled.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

"(i) circumstances indicating that the respondent has registered or 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 your 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 you have engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business or competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on his website or location."

The Complainant has referred to previous UDRP decisions in which it has successfully challenged several domain names that include the trademark MIGROS. The Complainant has submitted evidence that the disputed domain name resolves to a pay-per-click website with at least one link to a competitor of the Complainant. The Complainant has also submitted evidence that the disputed domain name is offered for sale for USD 5,750.

The Panel finds that the Respondent must have been aware of the Complainant's trademark and the Complainant's operation of its website at the domain name <migrosmagazin.ch> when obtaining the disputed domain name. It is also clear that the disputed domain name is used to attract Internet users to websites that are competing with the Complainant. Furthermore, the disputed domain name is clearly offered for sale for valuable consideration in excess of the Respondent's out-of-pocket costs related to the disputed domain name.

Therefore several of the examples in paragraph 4(b)(i) of the Policy are fulfilled. The Panel finds that the disputed domain name was registered and is being used 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 <migrosmagazin.com> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: August 4, 2015

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