Complainant is Media-Saturn Holding GmbH of Ingolstadt, Germany, represented by Boehmert & Boehmert, Germany.
Respondent is Stefan Meyer, Cista of Eurasburg, Germany; WhoisGuard, Protected WhoisGuard of Los Angeles, California, United States of America.
The disputed domain name <wwwmediamarkt.pw> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2013. On July 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2 and 5, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 6, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On August 6, 2013, the Registrar sent an email communication stating “neither WhoisGuard nor NameCheap.com is the registered owner of the domain in question”, and requested Complainant to amend its Complaint “to reflect the true registered owner of the domain”. The Center acknowledged receipt of this email communication on August 7, 2013. Complainant filed an amendment to the Complaint on August 7, 2013.
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 Respondent of the Complaint, and the proceedings commenced on August 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2013.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 9, 2013. 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.
Complainant is Europe’s largest consumer electronic retailer headquartered in Germany with retail stores throughout many European countries.
Complainant has submitted evidence that it is the registered owner of numerous trademarks relating to the designation MEDIA MARKT, including the following:
• Word mark MEDIA MARKT, German Patent and Trademark Office (DPMA), Registration Number: 30555757, Registration Date: September 28, 2005;
• Word mark MEDIA MARKT, Office for Harmonization in the Internal Market (OHIM), Registration Number: 009699406, Registration Date: July 29, 2011;
• Design mark MEDIA MARKT, World Intellectual Property Office (WIPO), Registration Number: 655158, Registration Date: December 7, 1995.
The disputed domain name <wwwmediamarkt.pw> was registered on May 9, 2013. Complainant has submitted further evidence that at some point before the filing of this Complaint, the disputed domain name redirected to a website at “www.wwwmediamarkt.pw” which had an appearance very similar to Complainant’s official website at “www.mediamarkt.de” and promoted a special gift card on the occasion of Complainant’s 30th anniversary.
Complainant requests that the disputed domain name be transferred to Complainant.
Complainant asserts that it is particularly known for its many extensive and eye-catching promotional campaigns and marketing efforts relating to the MEDIA MARKT trademark for which it spends up to EUR 500 million every year. Complainant concludes that as a result of these high advertising expenditures, Complainant’s Media Markt sales brand has become Europe’s best-known and largest retail brand for consumer electronics.
Complainant suggests that the disputed domain name is confusingly similar to Complainant’s MEDIA MARKT trademark, because (1) the disputed domain name incorporates the MEDIA MARKT trademark in its entirety and (2) both the prefix “www” as well as the country code top level domain “.pw” must be excluded from any identity or confusingly similar considerations as being mere generic or functional components of the disputed domain name.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has neither authorized nor licensed or permitted Respondent to register or use the disputed domain name or to use the MEDIA MARKT trademark or any similar mark; (2) Complainant has prior rights in the MEDIA MARKT trademark which precede Respondent’s registration of the disputed domain name by many years; and (3) Respondent uses the disputed domain name for fraudulent purposes, since (a) Respondent seemingly offered Complainant’s own gift cards with reference to Complainant’s 30th anniversary by using Complainant’s own corporate design and figurative MEDIA MARKT trademark, thus Respondent cannot have a legitimate interest in using a domain name that causes the risk of confusion to one of Europe’s best-known retail brands; and (b) in order to acquire those gift cards, users had to follow certain instructions given on the website at “www.wwwmediamarkt.pw” which finally redirected the respective users to another website at “www.topverdienst.me” with further information which had no relation with Complainant and Complainant’s business whatsoever.
Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith since Respondent’s offering of Complainant’s own gift cards with reference to Complainant’s 30th anniversary by using Complainant’s own corporate design and figurative MEDIA MARKT trademark allows the conclusion that Respondent was well aware of Complainant’s Media Markt retail business and obviously chose the disputed domain name for the very only purpose to deceive customers about the source of its website or at least to create a proximity to Complainant’s retail business, thus primarily has registered and is using the disputed domain name for the purpose of attracting for commercial gain Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant’s well-known MEDIA MARKT trademark as to the source or affiliation of Respondent’s website.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
The Panel concludes that the disputed domain name <wwwmediamarkt.pw> is confusingly similar to the MEDIA MARKT trademark in which Complainant as shown to have rights.
The disputed domain name incorporates the MEDIA MARKT trademark in its entirety. Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of Panel Views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the Panel finds that the mere addition of the prefix “www” (for “World Wide Web”) is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant’s MEDIA MARKT trademark into the disputed domain name. Such finding is reinforced by the fact that the disputed domain name obviously includes a popular typo-squatting (arising from the omission of the standard dot behind “www”) and that typo-squatted domain names are in fact intended to be confusing so that Internet users, who unwillingly make common type errors, will enter the typo-squatted domain name instead of the correctly spelled trademark (see e.g. National Association of Professional Baseball Leagues, Inc., d-b-a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011).
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate, noncommercial or fair use without intent for commercial gain.
Complainant has produced evidence that the disputed domain name at some point before the filing of this Complaint redirected to a website at “www.wwwmediamarkt.pw” which had an appearance that somehow copied the appearance of Complainant’s official website at “www.mediamarkt.de” and even displayed Complainant’s design trademark MEDIA MARKT. This website promoted Complainant’s own gift cards on the occasion of Complainant’s 30th anniversary. However, in order to acquire those gift cards, users had to follow certain instructions given on the website at “www.wwwmediamarkt.pw” which finally redirected the respective users to another website at “www.topverdienst.me” with further information which had no relation with Complainant and Complainant’s business whatsoever. The Panel, therefore, concludes that Respondent – irrespective of the alleged high reputation and recognition of the MEDIA MARKT trademark – apparently was aware of the said trademark at the time of the registration of the disputed domain name and that the latter obviously alludes to Complainant’s trademark and business.
Therefore, it is reasonable to find that such use of the disputed domain name neither fulfills the requirements of a bona fide offering of goods or services nor is any other reasonable explanation apparent why Respondent should rely on the designation “Media Markt” other than for the purpose of exploiting the MEDIA MARKT trademark’s reputation without permission to do so.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on August 9, 2013.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s MEDIA MARKT trademark, to a website which apparently copied the appearance of Complainant’s official website at “www.mediamarkt.de” and, furthermore, directly referred to a gift card promotion set up by Complainant on the occasion of its 30th anniversary without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to track, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s MEDIA MARKT trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent made use of a privacy service which is certainly not illegal as such but under the circumstances in the case at hand apparently was meant to conceal Respondent’s true identity in order to hide away from possible legal measures to be taken against Respondent’s fraudulent making use of the disputed domain name, thus at least supports the Panel’s finding of a registration and use of the disputed domain name in bad faith.
Therefore, the Panel concludes that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
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 <wwwmediamarkt.pw> be transferred to Complainant.
Stephanie G. Hartung
Sole Panelist
Date: September 16, 2013