WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) v. Simon Paul

Case No. D2017-1729

1. The Parties

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

The Respondent is Simon Paul, Goa, India.

2. The Domain Names and Registrars

The disputed domain names <migrosonline.info> and <migrosonline.org> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 7, 2017. On September 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 9, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 6, 2017.

The Center appointed Mihaela Maravela as the sole panelist in this matter on October 19, 2017. 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 states that it is a Swiss based umbrella organization of the regional Migros Cooperatives, known throughout Switzerland as one of the biggest department stores, offering a wide range of food,
non-food products and services (wellness, travel, catering). The Complainant was founded by Gottlieb Duttweiler in 1925 in Zurich and has now evolved into a Community of ten regional Cooperatives. The Complainant further adds that nowadays the Migros group is not only related to the food industry: it consists of 4 travel agencies, cultural institutions museum, magazines, restaurants, aqua/fitness/golf parks, several pension funds and foundations and a bank. Migros bank is a wholly owned subsidiary of Migros group, it was founded in 1958 by Gottlieb Duttweiler and is present in 67 locations in Switzerland.

The Complainant states it is the owner of several trademarks consisting of or containing the word "Migros" and "Migros Bank" and provides evidence to support such statement (e.g., trademark MIGROS registered under no. P-405500 in Switzerland as of September 20, 1993; trademark MIGROSBANK registered under no. 2P-414500 in Switzerland as of January 12, 1995).

The Respondent registered the disputed domain names on August 25, 2017. The domain name <migrosonline.org> initially directed to a website similar to the Complainant's website "www.migrosbank.com" and is suspended at the date of the Complaint. The domain name <migrosonline.info> has always been inactive.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain names directly and entirely incorporate the Complainant's well-known trademark and the addition of the generic Top-level Domain ".info" and ".org" do not add any distinctiveness to the disputed domain names. Migros is the most distinctive part of the disputed domain names and the addition of the generic word "online" does not diminish the overall likelihood of confusing similarity to the Complainant's trademark. The Complainant concludes that the disputed domain names should be considered as identical to the registered trademark MIGROS.

The Complainant further argues that the Respondent is not known by the name "migros" and has not provided any evidence of bona fide offering of goods or services. The Complainant contends that the disputed domain name <migrosonline.org> was used to point to a website that aimed to attract consumers to a false bank website copying the design of the Complainant's official website "www.migrosbank.com" and that the website to which the disputed domain name resolved was deceptively similar in layout, color and content to its website. The Complainant states it took measures to try and have the site removed and the following day the website was suspended. The Complainant shows that as far as it knows the disputed domain name <migrosonline.info> has always been inactive.

Further, the Complainant argues that given the active business presence of the Complainant it seems unlikely that the Respondent was not aware of the unlawful registration of the disputed domain names. With regard to the disputed domain name <migrosonline.org> the Complainant argues that the fact that the Respondent reproduced the Complainant's website by adopting the Complainant's logo and overall look was with the intention to deceive Internet users into believing that the website was in fact operated by the Complainant. Also, use of the same disputed domain name to resolve to an infringing website dedicated to banking services and offering the Internet users to contact the bank via email address incorporating the Complainant's trademark does not constitute good faith use of the disputed domain name. With regard to both disputed domain names, the Complainant argues that the presence of the word "online" demonstrates lack of good faith.

B. Respondent

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

6. Discussion and Findings

Noting the fact that the Respondent has not filed a response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

"A Panel shall 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", paragraph 15(a) of the Rules.

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

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the 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.

A. Identical or Confusingly Similar

The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Here, the Complainant proved trademark rights over MIGROS trademark (registered under no. P-405500 in Switzerland as of September 20, 1993) and over MIGROSBANK trademark (registered under no. 2P-414500 in Switzerland as of January 12, 1995).

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain names to the trademarks in which the Complainant holds rights.

Numerous UDRP decisions have recognized that incorporating a mark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. (See Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617). As held in previous UDRP decisions, "The addition of the elements 'b' and 'online' in the disputed domain name, while not identical to Complainant's trademark, do not negate their confusing similarity to that trademark." (see Migros-Genossenschafts-Bund v. James Okogb, Micrio, WIPO Case No. D2017-0647). See also Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

It is well accepted by UDRP panels that a generic Top-Level Domain (gTLD), such as ".info", or ".org" are typically ignored when assessing identity or confusing similarity between a trademark and a disputed domain name.

The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:

(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in Section 2.1 of the WIPO Overview 3.0, which states: "[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any rights or legitimate interests. The Complainant has established that it holds rights over the trademark MIGROS, and claims that the Respondent has not provided any evidence of its use of, or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. There is no evidence indicating that the Respondent is commonly known by the disputed domain names or the name "migros". See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

According to the evidence put forward by the Complainant, the disputed domain name <migrosonline.org> was used to direct Internet traffic to a bank website similar in layout, colour and content to its website and the disputed domain name <migrosonline.info> has always been inactive. This does not represent bona fide offering of goods or services that would demonstrate rights to and legitimate interests in the disputed domain names as required by the Policy (Section 2.9 of the WIPO Overview 3.0).

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain names. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain names' registration and use in bad faith.

The fact that the disputed domain names are confusingly similar with the Complainant's trademarks and that the said trademarks have been used for a long period of time prior to the registration of the disputed domain names indicate not only that the Respondent was aware of the Complainant's business and trademarks at the time of registration, but also that it registered the disputed domain names to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant's services.

The Complainant's MIGROS trademark, included in the disputed domain names, has been used in commerce for more than 20 years prior to the registration of the disputed domain names, such that it is unlikely that the Respondent was unaware of the Complainant's rights when it registered the disputed domain names. See Comerica Bank v. WhoisGuard Protected, WhoisGuard, Inc. / Ryan Murray, WIPO Case No. D2016-0062. The well known character of the MIGROS trademark was acknowledged by previous UDRP panels (Migros-Genossenschafts-Bund v. James Okogb, Micrio, supra; Migros-Genossenschafts-Bund v. Patrizio De Bortoli, MediaEtCetera GmbH, WIPO Case No. D2017-0980).

Moreover, the addition of generic terms in the disputed domain names that relate to the Complainant's area of business serves to reinforce the association with the Complainant's trademarks.

The Respondent provided no explanations for why it registered the disputed domain names.

Moreover, the Respondent has failed to make to date any genuine use of the disputed domain names. The absence of any bona fide use of the domain name at the very least results in a failure to rebut the inference noted above. See for a similar finding Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186.

From the evidence put forward by the Complainant it results that the domain name <migrosonline.org> was used to redirect Internet traffic to a bank website that copied the design of the Complainant's website "www.migrosbank.com". Under these circumstances, the Panel agrees with findings of previous UDRP panels that "The Respondent's bad faith registration and use of the disputed domain name is reflected in the Respondent's intention to mislead Internet users into believing that the Respondent is the Complainant, or that the Respondent is acting for the Complainant. The Respondent's bad faith is particularly evident in creating a website with the same look and feel as the Complainant's website devoted to online banking, 'www.migrosbank.com'. In this regard, the Panel finds, at the very least, that the Respondent intends to mislead Internet users into accessing its website in the false belief that they were accessing Complainant's website, and that it did so by registering and using the disputed domain name, which is confusingly similar to Complainant's trademark, and including Complainant's trademark MIGROS in the website to which the disputed domain name resolved. […] The fact that the Respondent's website was not active at the time of the filing of the Complaint does not negate the Respondent's bad faith registration or use of the disputed domain name. Rather, it is reasonable to determine that, in creating a website with the same look and feel as that of the Complainant, the Respondent intends to secure a financial benefit from bad faith in registering and using the disputed domain name." See Migros-Genossenschafts-Bund v. James Okogb, Micrio, supra.

In the Panel's view these circumstances represent evidence of registration and use in bad faith of the disputed domain name <migrosonline.org>.

With respect to the disputed domain name <migrosonline.info>, it does not feature any active content at the moment. However, there is no evidence in the record to indicate that the Respondent has used the disputed domain name or intends to use the disputed domain name in connection with a bona fide offering of goods and services. As established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) of the Policy if the circumstances of the respondent's behaviour are indicative of bad faith.

Other factors which were considered by the Panel as indicative of bad faith registration and use of the disputed domain name are:

- The Respondent's lack of response to the Complaint. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.

- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy.

- Any use of the disputed domain name would lead the public to the conclusion that it is, together with its connecting website, associated with the Complainant.

- Also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant's trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.

Therefore, the Panel finds that the Respondent also registered and is using the disputed domain name <migrosonline.info> in bad faith.

Consequently, the Panel ascertains that the disputed domain names were registered and are 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 names <migrosonline.info> and <migrosonline.org> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: November 2, 2017