WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Midsona AB v. Domain Administrator, See PrivacyGuardian.org / dennis cabrera

Case No. D2019-1336

1. The Parties

The Complainant is Midsona AB, Sweden, represented by Nordisk Media Utveckling AB, Sweden.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / dennis cabrera, Cameroon.

2. The Domain Name and Registrar

The disputed domain name <abmidsona.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2019, 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 19, 2019 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 25, 2019.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2019.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on July 29, 2019. 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 Midsona AB, a company based in the Nordic region developing and selling products for health and wellbeing back to the 1890’s and operating since 2010 under the current name “Midsona”.

The Complainant owns registrations for the mark MIDSONA in the European Union in classes 3, 5, 10, 29, 30 and 32, including the registrations no. 009168709, filed on June 11, 2010 and registered on September 9, 2011, and no. 012345419, filed on November 12, 2013 and registered on March 24, 2014.

The main website operated by the Complainant is through the domain name <midsona.com>, registered on June 7, 2010.

The disputed domain name was registered on November 16, 2018. At the time of filing of the Complaint, the disputed domain name resolved to a website offering for sale what appeared to be the Complainant’s products and the website is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to its trademarks and that the addition of the two letters “ab” does not serve to differentiate them, since “ab” is the abbreviation of the Swedish company form “Aktiebolag” that means “limited company”.

The Complainant alleges that the Respondent has no authorization to use its trademarks, that it is not commonly known by the disputed domain name and that the disputed domain name was registered without any rights or legitimate interests.

In addition, the Complainant says that the Respondent was using the disputed domain name for commercial gain by misleading consumers as to the origin of the website and the association with the MIDSONA trademark, by pointing to a website reproducing the name of a wholly owned subsidiary of the Complainant, Midsona Sverige AB on different places and including the Respondent’s telephone number and email address ([…]@abmidsona.com) instead. The website also showed images of food and health products, which are related to the Complainant’s business activities.

Also, according to the Complainant, one of its business partner was approached by the Respondent impersonating a sales manager at Midsona Sverige AB with the request of transferring funds for sample boxes to the Respondent’s bank account. The partner contacted the Complainant through email to verify the details, which therefore confirmed that the Respondent’s intention was to attract Internet users to the Respondent’s website and email address related to the disputed domain name, for commercial gain.

The Complainant adds that on May 27, 2019 it sent a cease and desist letter to the Respondent which was not responded.

According to the Complainant, the Respondent is not authorized to register and use the disputed domain name, and the disputed domain name was registered with full knowledge of the Complainant’s rights in the mark MIDSONA.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

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

(ii) the 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.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of trademark registrations for MIDSONA in the European Union, in classes 3, 5, 10, 29, 30 and 32.

The Complainant’s trademarks predates the disputed domain name registration.

The disputed domain name incorporates the Complainant’s trademark MIDSONA in its entirety. The addition of the letters “ab”, which refers to the abbreviation of “limited company” in Swedish, does not indeed avoid confusing similarity between the disputed domain name and the Complainant’s trademarks. In this regard, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words 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 (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001‑0110).

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademarks or to register domain names containing the trademark MIDSONA.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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. Instead, the Complainant showed evidence that the disputed domain name was used to mislead users with the intention of fraudulent for commercial gain.

The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademarks, does not correspond to a bona fide use of the disputed domain name under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark MIDSONA is registered by the Complainant in the European Union and has been used for some time. Also, the Complainant registered and operates its main website using the domain name <midsona.com>.

The disputed domain name incorporates the Complainant’s trademark MIDSONA in its entirety and the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant’s MIDSONA mark is distinctive and known by consumers in its field of activity in the Nordic region. Thus, a domain name that comprises such a mark is suggestive of the registrant’s bad faith.

In addition to the above, the Complainant showed evidence that the disputed domain name was used by the Respondent to mislead users into believing that the corresponding website was related to the Complainant, by reproducing the name of a wholly owned subsidiary of the Complainant and mark with the purpose of profiteering and deceit.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that its website belongs to or is associated with the Complainant.

This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark MIDSONA as described in paragraph 4(b)(iv) of the Policy has been demonstrated. In addition, the Panel notes that the Respondent used the disputed domain name to send fraudulent emails, which is further evidence of bad faith.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been 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 <abmidsona.com> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: August 12, 2019