WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Migros Genossenschaftsbund (Federation of Migros Cooperatives) v. Centro Consulenze Kim Paloschi

Case No. D2000-1171

 

1. The Parties

The Complainant is Migros Genossenschaftsbund (Federation of Migros Cooperatives), based at Limmatstr. 152, 8031 Zurich, Switzerland.

The Respondent is Centro Consulenze Kim Paloschi, P.O. Box 7531, 3001 Berne, Switzerland.

 

2. The Domain Name and Registrar

The domain name at issue is "migros.org" ("the Domain Name").

The Registrar with which the Domain Name is registered is Network Solutions Inc. ("NSI"), of Herndon, Virginia, United States of America.

 

3. Procedural History

The Complaint was received in hard copy and electronically by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") respectively on September 5 and 12, 2000.

On September 12, 2000, the Center acknowledged receipt of the Complaint.

On the same day, a request for Registrar verification was transmitted by WIPO Center to NSI to:

- confirm that the Domain Name at issue is registered with NSI;

- confirm that the person identified as the Respondent is the current registrant of the Domain Name;

- provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrarís WHOIS database for the registrant of the disputed Domain Name, the technical contact, the administrative contact and the billing contact for the Domain Name.

On September 14, the NSI responded to the Centerís request for Registrar Verification and confirmed that the NSI is the Registrar of the Domain Name: "migros.org". It also confirmed that this Domain Name was registered in the name of Centro Consulenze ("the Registrant") and indicated the contact details of the Registrant and the Administrative and Billing Contact.

The same day, all formal requirements for the establishment of the complaint were checked by the WIPO Center and found to be in compliance with the applicable ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and WIPO Supplemental Rules. The Panel accepts the WIPO Center checklist as evidence of proper compliance with the Rules regarding the initiation of the Complaint.

The Administrative Proceeding commenced on September 15, 2000.

On October 5, 2000, the Center received the Response.

On October 6, 2000, the Center acknowledged the receipt of the Response and informed the parties that it would proceed to appoint the Administrative Panel.

After receiving the necessary Declaration of Independence and Impartiality, the Center appointed the undersigned to serve as the sole Panelist in this administrative proceeding on October 12, 2000.

Upon verification of the documents received, the Panel noticed that the Response was filed by Mr. Kim Paloschi, whereas the official Registrant was still Centro Consulenze according to the Registrar's indications. Mr. Paloschi, an ex-employee of the Centro Consulenze, was only listed as the administrative contact.

On October 23, 2000, the Panel informed the Parties (via the Center) that it would consider Mr. Paloschi's submission as the Registrant's valid Response, subject to any immediate objection from Centro Consulenze.

For this purpose, the Panel issued a procedural ordinance and extended by 10 days the deadline to render its decision in conformity with Art. 15 (b) of the Rules.

In a fax dated October 24, 2000, the Centro Consulenze informed the WIPO Center that Mr. Paloschi was the only person responsible for the present case. Hence, the Panel accepts Mr. Paloschi's Response as that of the Respondent.

The Panel proceeds to its determination in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules and the applicable rules and principles of law on the basis of the Complaint, submitted on September 5 and 12, 2000, and the Response, submitted on October 5, 2000.

 

4. Factual Background

The Complainant, the Migros Genossenschaftsbund (Federation of Migros Cooperative), is the Swiss based umbrella organization of the regional Migros Cooperatives. Migros is known throughout Switzerland as one of the biggest department stores, offering a wide range of food and non-food products. Moreover, it is known that the Complainant is also engaged in promoting cultural activities by sponsoring for example diverse educational courses, concerts and exhibitions.

In the Complaint (Exhibits 10a-10k), the Complainant provides ample evidence of its rights to the trademark "Migros", which is protected not only in Switzerland but also in many other countries worldwide for a wide range of food and non-food products as well as services.

It appears from NSI's response to the Verification Request ("NSI's Response") that the Domain Name "migros.org" was registered in the name of "Centro Consulenze Kim Paloschi" on February 25, 1998. As can be inferred from the Response, the registration was carried out by Mr. Paloschi at a time when he was working for Centro Consulenze. At the time when the Domain Name dispute arose, he was no longer employed by the Centro Consulenze, nor was he bound to Centro Consulenze by any other contractual relationship.

This was already the case in June 2000, when a first contact was established between an employee of the legal department of the Complainant and Mr. Paloschi. According to the Complainant, Mr. Paloschi attempted to sell the Domain Name for a sum ranging between 3000 to 4000 Swiss Francs (Complaint Exhibit 3), which is denied by Mr. Paloschi (Response Exhibit 6). In July 2000, the Complainant's counsel contacted Mr. Piscopo, the director and authorized representative of the Centro Consulenze, attempting to convince him to turn over the Domain Name to the Complainant. For this purpose, various letters were exchanged between Mr. Piscopo and Complainant's counsel, and a meeting was held in Berne. It was also attended by Mr. Paloschi, who was, according to Mr. Piscopo, the "true Domain Name holder" because the registration of the Domain Name had been the result of his personal initiative (Complaint Exhibit 5; Response Exhibit 1).

After no agreement was reached on the transfer of the Domain Name to the Complainant, Mr. Piscopo and Mr. Paloschi took steps to transfer the Domain Name from the Centro Consulenze to the latter. According to the NSI's Response, the transfer had not been completed by the time of the commencement of these Administrative Proceedings. For the duration of these Administrative Proceedings, the transfer is on hold according to paragraph 8 of the Policy.

It was Mr. Paloschi who submitted a Response to the WIPO Center on October 5, 2000, without any indication that he was acting as an authorized representative of the official Registrant, the Centro Consulenze. To assure that these Administrative Proceedings take place with due expedition and respect of principles of due process, the Panel rendered a procedural ordinance on Monday, October 23, according to which it would consider the submission of Mr. Paloschi as the Registrantís valid Response, unless Centro Consulenze notified the Center of its objection by Tuesday, October 24, 2000. In response to the procedural ordinance, Centro Consulenze sent a fax to the Center on October 23, stating that Mr. Paloschi was the only person responsible for the present case.

This point of view does not change the fact, however, that Centro Consulenze remains the official Registrant of the Domain Name. Therefore, it has to be considered as the Respondent in this case. Centro Consulenze having raised no objection to the submission of the Response by Mr. Paloschi, this Panel will consider the same as the Respondentís valid Response for purposes of this case.

As both Mr. Piscopo, the Respondent's authorized representative, and Mr. Paloschi, according to Mr. Piscopo the "true Domain Name holder", played an important role in the on-going domain name dispute and were both in contact with the Complainant, the Panel considers the acts of both persons as being binding on the Respondent.

 

5. Partiesí Contentions

(i) Complainant

The Complainant contends the following:

- Respondent is holding a Domain Name in which Complainant has rights.

- the Domain Name is identical to the trademark of the Complainant.

- Respondent has no rights or legitimate interests in the Domain Name.

- Respondent is not commonly known under the Domain Name.

- Respondent has provided no evidence of using the Domain Name for a non-commercial purpose or fair use.

- Respondent has registered the Domain Name in bad faith because he was aware of Complainantís rights in the name when he carried out the registration.

- Respondent is using the Domain Name in bad faith: he attempted several times to sell it to Complainant or to a third party. Moreover, he attracts the public to his website by consciously creating a confusion with Complainantís trademark.

- Respondentís refusal to transfer the Domain Name prevents Complainant from using the same Domain Name, in which Complainant has a legitimate interest.

Consequently, Complainant asks the Panel to transfer the Domain Name to it.

(ii) Respondent

Respondent does not deny that the Domain Name is identical or confusingly similar to the trademark in which the Complainant has a right.

Respondent contends that he, as an individual, is commonly known by the Domain Name and that there is evidence of his use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services.

Respondent alleges that his website pursues a legitimate non-commercial or fair use, which consists in the defense of free speech.

He denies that he has ever attempted to sell the Domain Name to Complainant or a competitor. He also denies any other commercial use of the Domain Name, stressing that he did not attract the public to the website in order to engage in a commercial activity.

Respondent rejects Complainantís argument that the public was attracted to his website because of the identity of Complainantís trademark and the Domain Name. In his opinion, there was no risk of confusion because it was indicated on the top of the homepage that the site was "the unofficial Internet site of the Migros Organization."

 

6. Discussion and Findings

To succeed in its complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:

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

(ii) Respondent has no rights or legitimate interests in the Domain Name;

(iii) the Domain Name has been registered and used in bad faith.

(i) Identity or Confusing Similarity

The Domain Name in dispute is "migros.org". The second level Domain Name (i.e. "migros") is identical to the trademark of Complainant. The first level domain (."org") is of no importance as to the question of identity or similarity.

(ii) Rights or Legitimate Interests

It is not disputed by any of the parties that Complainant has neither licensed nor otherwise permitted Respondent to use its trademark or to apply for the Domain Name incorporating this mark.

Respondentís claim that it is commonly known by the Domain Name and that it has used, or undertaken demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services is not supported by any evidence.

Respondentís main argument that it has rights or legitimate interests in using the Domain Name is based on the freedom of speech. It alleges that the website was intended to serve as a discussion forum between clients, Migros members and employees.

Freedom of speech being a fundamental right, the Panel is of the opinion that it has to be taken into consideration as a defense against a claim for transfer of the disputed Domain Name under the Policy.

To be admitted as a valid defense, it is not sufficient, however, that the website was occasionally used by the public to communicate ideas and opinions. Respondent needs to demonstrate that the exercise of free speech is the main aim of the registration and the use of the Domain Name and that the website has effectively been used for this purpose.

Respondent submits no conclusive evidence that the website was designed for and is effectively used as a discussion forum. Neither did it provide any excerpts (screenshots) of the website, nor has the Panel been able to check its present use and function, because it is not active. From the Response, it can be inferred that the website has been de-activated for more than a year (see p. 4 of the Response).

The only documentary evidence submitted by the Respondent is a copy of a letter which illustrates that the website was used to publish an initiative demanding the conversion of the Migros Cooperatives into a shareholderís corporation (Respondent Exhibits 15 ff). As the aim of the initiative has evident substantial financial implications, it is the Panelís view that it is principally in essence a commercially oriented activity rather than a genuine act of free speech.

Even if the Panel admitted that the aim of the website was to serve as a discussion forum, it is of the opinion that the exercise of the right of free speech does not require the use of a Domain Name identical to the trademark of the Complainant. Respondent could have easily chosen a Domain Name which would indicate clearly to the public that the site is not Complainant's official website, but a discussion forum on Complainantís activities. As the Panel held in the decision No. D2000-0299 (Monty and Pat Roberts, Inc. v. Bill Keith):

"[Ö] the right to express oneís views is not the same as the right to use anotherís name to identify oneís self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify oneís self as the New York Times or Time Magazine. [Ö] the Panel does not dispute Respondentís right to establish and maintain a website critical of Complainant [Ö]. However, the panel does not consider that this gives Respondent the right to identify itself as Complainant."

The Panel thus concludes that Respondent has not demonstrated a fair use of the Domain Name, nor any other legitimate interest.

 

(iii) Bad Faith

Migros being a well-known trademark in Switzerland, the Panel considers that there is no doubt that Respondent was aware of Complainantís right in this name when it registered the Domain Name.

To satisfy the conditions set out in art. 4 let. a (iii) of the Policy, Complainant has not only to prove that the Domain Name was registered, but also that it is being used in bad faith. As a circumstance which indicates registration and use in bad faith, the Policy explicitly refers to Domain Names which have been registered or acquired "primarily for the purpose of selling, renting, or otherwise transferring the Domain Name" (art. 4 let. b (i)).

In the present case, the Panel considers that Complainant has submitted sufficient evidence that there were attempts to sell the Domain Name to Complainant. The main evidence in support of this finding is a letter from Mr. Piscopo, the director of the Respondent, to the attorneys of Complainant dated August 28, 2000, informing them that "Mr. Paloschi requests the sum of CHF 7000 in order to conclude the case in question on a definitive basis." Moreover, this claim for money, which far exceeds out of pocket costs directly related to the registration of the Domain Name, was urged on the basis that Mr. Paloschi intended to leave Switzerland in the near future, which would further complicate the settlement of the whole issue (Complaint Exhibit 7). Since this communication of August 28, 2000, is the last one from Respondent, the Panel concludes that it overrides any other previous and to some extent contradictory, exhibits submitted by the parties relating to the issue of bad faith.

Based on this evidence, the Panel holds that the Domain Name has been registered and used in bad faith in the sense of Art. 4a (iii) of the Policy.

Consequently, the Domain Name "migros.org" must either be (i) cancelled or (ii) transferred to the Complainant. The top-level domain, ".org" is in usage by non-profit or "miscellaneous" entities and not by an enterprise like a supermarket chain such as Complainant's (see World Internet law Report, 10/2000, p. 20 ff.). However, it is well known that Complainant undertakes many non-profit actions as stated hereinabove and has therefore an obvious and legitimate interest that the Domain Name "migros.org" should not be cancelled, but rather should be transferred to it.

For all these reasons, the Panel decides to transfer the disputed Domain Name to Complainant.

 

7. Decision

In the light of the foregoing, the Panel concludes and decides that:

(i) the Domain Name of Respondent is identical to the trademark in which Complainant has the right;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name;

(iii) the Domain Name has been registered and is being used in bad faith;

(iv) the Domain Name "migros.org" shall be transferred to the Complainant.

 

 


 

 

Dr. Thomas Legler
Sole Panelist

Dated: November 6, 2000