WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nutricia International B.V. v. Milupa

Case No. D2002-0400

 

1. The Parties

The Complainant is Nutricia International B.V., c/o Numico Financial Services S.A., Place de líEurope 3, 1002 Lausanne, Switzerland, represented by Secretan Troyanov S.A. (Switzerland), Moscow representative Office, Ulitsa Usacheva 35, Moscow 119048, Russian Federation.

The Respondent is Milupa, Expresspost Ltd, p.o.box 172, St. Petersburg 193015, Russian Federation.

 

2. The Domain Name and Registrar

The Domain Name at issue is <milupa.com>.

The Registrar is Tucows Inc, 96 Mowat Avenue, Toronto, Ontario, M6K 3M1, Canada.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on April 30, 2002, and a hardcopy was received by the Center on May 6, 2002. The Center acknowledged the receipt of the Complaint on May 1, 2002.

On the same day, the Center sent to Tucows Inc. a request for verification of registration data. On May 2, 2002, Tucows Inc. confirmed that it is the Registrar, that Milupa is the Registrant of the domain name <milupa.com>, that the administrative, technical and billing contact is Milupa at the same address as the Respondent.

The Center verified that the Complaint satisfies the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment was properly made. The Panel is satisfied this is the case.

On May 8, 2002, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceeding commenced. On May 28, 2002, the Center received a Response by e-mail from the Respondent, and on June 3, 2002, a hardcopy of the Response and on May 29, 2002, the Center acknowledged receipt of the Response.

On June 13, 2002, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.

On June 18, 2002, the Panelist issued an Administrative Procedural Order, following which the Complainant and the Respondent submitted additional statements and evidence. Furthermore, the Respondent submitted on July 10, 2002, a belated Statement.

 

4. Factual Background

A. Complainant

The Complainant is the registered owner of trademarks for the word MILUPA, which formerly were owned and used by "Milupa AG", a German company, and continue to be used with the Complainantís authorization by Milupa GmbH & Co KG, a German subsidiary of the Complainant. Milupa is a leading manufacturer of infant food and related products. Amongst many other registrations, the Complainant is the owner of the international registration No 467879, based on a German registration for the word MILUPA and dating back to 1981, designating amongst many other countries the Russian Federation, and covering the international classes 03,05,07,08,11,16,20,21,24, 25,28,29,30,31,32,37,39,411,42. The Complainant has submitted copy of a letter of Rospatent (the Russian Patent- and Trademark Bureau) confirming that this international registration, together with several other international registrations of the Complainant, is still valid in the Russian Federation.

The MILUPA infant food products are sold internationally by different subsidiaries of the group, existing in about 15 countries. The Complainant submitted evidence for market shares in the year 2001 of the MILUPA products in the infant food markets in over 20 countries, showing e.g. a market share in Germany, Switzerland, Hungary, Turkey, Bosnia and Cyprus of over 30%, in Austria of 60% and in Slovenia of 85%. From these figures alone it can be deducted that MILUPA is an internationally well-known mark, enjoying a wide scope of protection. The Complainant has also submitted evidence for the enormous degree of brand awareness for the trademark MILUPA in Germany, which goes well beyond the level generally requested for a mark to be well-known.

MILUPA infant products have been on the market in Russia since 15 years. The Nutricia group bought in 1995 an infant food plant in Istra, Moscow Region. Today, a Russian based subsidiary of the group imports and sells infant food products under the Complainantís trademark MILUPA in important parts of the Russian Federation, in particular in Moscow, St. Petersburg, Nizhny Novgorod, Ekaterinburg, Novosibirsk, Samara, Rostov-on-Don, Voronezh, Krasnodar, Stavropol, Krasnoyarsk, Kazan, Pem and Ufa. These submissions of the Complainant have not been contested by the Respondent The Complainant has also submitted examples of four different packaging materials of products sold under the MILUPA trademark in Russia.

B. Respondent

The Respondent, acting under the name "Milupa" with a postbox address in St. Petersburg, registered on November 11, 2000, the domain name <milupa.com>. Also the domain name <milupa.spb.ru> was registered (the Panelist ignores whether this domain name was registered by the Respondent or by somebody else). On December 8, 2000, Ms. Milkova, Mr. Lubnin and Mr. Pavlov signed an Agreement on intents, according to which the parties to that agreement agreed to found an enterprise under a Russian name with the English translation "Milupa" (the English translation of the name being expressly mentioned in the original Agreement in Russian language). The name Milupa is composed of the first two letters of the names of these three persons. The purpose of the enterprise was listed as follows:

- an enterprise for processing metals, plastic and wood

- a non-banking credit organization for attracting the credit and financial resources with the purpose of production development

- a mutual insurance Company for protection of their proprietary interests

- an enterprise for rendering the appropriate services in the field of telecommunications.

On January 25, 2001, a letter was written by Mr. Lubnin on behalf of the three before mentioned persons to Mr. Roshal, business director of ExpressPost Ltd, asking whether that company could act as a department named "Milupa", until a legal entity named Milupa would be incorporated by the state authorities. Under the same date a further agreement of intentions was signed between the "Milupa group" (consisting of Ms Milkova, Mr. Lubnin and Mr. Pavlov) and ExpressPost Ltd, represented by its business director, providing for the establishment of a department of ExpressPost Ltd, named Milupa, with the purpose to promote the business activities already listed in the Agreement dated December 8, 2000. Furthermore, that agreement provided that ExpresPost Ltd would apply for the registration of a trademark MILUPA with Rospatent in classes 36,38 and 40 and the corresponding domain name, in order to make use of the opportunity of transacting business through the Internet on an international scale. On February 1, 2001, the business director of ExpressPost Ltd ordered that an investment Department named Milupa should be established within the Company, with three persons on the staff (holding their respective offices as side-lines to their major occupation), and declared that he himself assumed charge of supervision of executing that order.

On February 21, 2001 ExpressPost Ltd applied with Rospatent for registration of the trademark MILUPA in classes 36,38, and 40. Rospatent decided to register that trademark on June 18, 2002 (the Respondent has in a belated submission provided for a copy of the registration, which the Panelist has no problem to accept as evidence).

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that (1) the domain name <milupa.com> is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent submits that it has own rights in the trade name and the trademark MILUPA and that it has not registered and is not using the domain name <milupa.com> in bad faith.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:

1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the domain name; and

3) the domain name has been registered and is being used in bad faith.

1) Confusing Similarity with a Mark in which the Complainant has Rights

The domain name <milupa.com> is identical to a mark in which the Complainant has rights in many countries, including the Russian Federation.

2) Legitimate Rights or Interests in Respect of the Domain Name

The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. Furthermore, the Respondent does not purport to use the domain name in connection with a bona fide offering of goods or services and it has not demonstrated or evidenced any real preparations for such use. Whilst the Respondent has submitted that the department Milupa of ExpressPost Ltd has become well-known under its name to customers since 2001, it has not submitted any evidence for that submission (despite an express request of the Panelist in a Procedural Order).

The Respondent submits that the name Milupa has been chosen by the three persons having agreed to establish that business unit by using the first two letters of their names (Milkova, Lubnin and Palov).

The Respondent furthermore submits that it is the owner of a trademark registration in classes 36, 38 and 40, and concludes that it has a right to use that trademark as domain name.

The Panelist notes that the domain name <milupa.com> was registered on November 11, 2000, by the Respondent, of which only a postbox address in St. Petersburg was given.

Still in December 2001, the address of the Respondent and its administrative, technical and billing contact was "Milupa, IP Department, p.o. box 549, St. Petersburg (Annex 3 to the Complaint). Apparently in 2002 (probably on March 20, 2002, the date mentioned by Tucows Inc in the verification of registration data) the record was updated and the address now is: Milupa, ExpressPost, p.o. box 172, St. Petersburg. However, at the time of registration the mutual agreement of December 8, 2000, between the three persons listed in that Agreement, establishing an enterprise under the name "Milupa" was not concluded, nor was the department, named "Milupa" of ExpressPost Ltd established. In the Agreement dated January 25, 2001, it was agreed that ExpressPost Ltd would, acting for the enterprise, respectively department " Milupa of its Company", apply for registration of the trademark MILUPA, and it would also apply for the corresponding domain name in order to make use of the opportunity to make use of transacting business through the Internet on an international scale. The Response gives no explanations as concerns the relationship between the Respondent at the one hand, and the enterprise respectively department of ExpressPost Ltd, named "Milupa", at the other. Whilst ExpressPost Ltd has applied with Rospatent for the registration of the trademark MILUPA in classes 36,38 and 40, it apparently did not apply for registration of the domain name <milupa> in a gtld, nor has the original registrant, acting under the name "Milupa", transferred the domain name at issue to ExpressPost Ltd. Legally it is therefore doubtful whether the Milupa Department of ExpressPost Ltd can really be considered to be the registrant of the domain name <milupa.com>. Consequently the Panelist has doubts whether the "Respondent" in whose name the Response has been submitted, is the rightful Respondent. However, even if the Panelist assumes in favor of that "Respondent" that it is the registrant of the domain name <milupa.com>, registered on November 11, 2000, or its successor in title, it arrives at the conclusion that the Respondent has no right or legitimate interest in that domain name:

a) With reference to the enterprise concluded on December 8, 2000, (four weeks after the registration of the domain name <milupa.com>) under the name Milupa, the Respondent has submitted that the administrative procedures to establish a legal company in Russia are very complicate and time consuming, but that the business unit has started preparations for its credit organization, fund association and material fabricating enterprise, is negotiating with potential partners and investors, and that it searches suitable offices. The Panelist asked both parties for additional submissions and evidence in order to be able to better weight the arguments submitted in the Complaint and in the Response. The Complainant indeed submitted all additional evidence required to sustain its claim. As concerns the Respondent, the Panelist requested:

"The Respondent has stated that the name "milupa" has been composed of the first two letters of business partners, however has not submitted explanations nor evidence as to the relationship between these businessmen and the Respondent"Ö

"The Respondent has also stated that it has started preparations for its credit organization, fund association and material fabricating enterprise, is negotiating with potential partners and investors, searches suitable office etc., all under its name "Milupa". However the Respondent has submitted no evidence for these statements. "

The Respondent was given amply time to submit the requested additional statements and evidence relating to these aspects.

However, the Respondent submitted no further explanations, nor any evidence in that context (the evidence submitted following the Procedural Order is restricted to documents referring to the establishment of the department "Milupa" of ExpressPostLtd).

As will be discussed later in more detail, the website of the Respondent offered "in view of the liquidation of the Respondentís intellectual property rights" the domain name <milupa.com> for sale. The Panelist concludes therefore that in reality the Respondent, respectively the enterprise agreed upon under the name "Milupa" never undertook any steps which would have been necessary for it to become a legal person nor has it started any preparations for entering into the purported business. This is the more likely when considering the extremely ambitious business purposes listed in the agreements, whose realization require enormous amounts of capital investment No doubt, no business man will intend to establish such business without having concrete ideas about the possibilities to finance it. In that context the Respondent itself in its Response refers to the fact that the procedure of state registration of credit and insurance organizations is rather complicate and that the investment of substantial financial resources is required. Only to form chartered capital and to receive the special licenses for running such kind of business a minimum of 500 000 Euro is said to be required.

Again no statements or evidence whatsoever have been submitted as to the expected sources of such capital and the measures undertaken to achieve such capital.

In view of the amounts of necessary investment at issue, it is not at all natural (as the Respondent intends to make believe) that due to the lack of own financial resources ("in order to realize the initial idea on establishing of the provident society and nonbank credit organization"!), it offered for franchising and for sale its intellectual property rights, only about one year after registration of the domain name (Perhaps earlier, anyhow even less time after the application for the registration of the trademark MILUPA was made). These rights, if they had any notable value, had no doubt a value to be neglected if compared to the sums needed for investing in the "intended" enterprise. The Panelist considers therefore the submitted agreement relating to the establishment of an enterprise under the name "Milupa" to be an attempt to justify the registration of the domain name <milupa.com>, which cannot be taken serious and therefore must fail.

b) Even more the trademark application for MILUPA in classes 36, 38 and 40 by ExpressPost Ltd shows that the Respondent tries to justify the illegitimate registration of the domain name <milupa.com> with maneuvers executed after the registration. First of all, the trademark was applied for registration three months after the registration of the domain name <milupa.com> and till today there exists no enterprise (whether a legal company or a department of ExpresPost) under the name Milupa, which would exercise activities in the field covered by the application (as said before, there was apparently never any intention to establish and promote an enterprise under that name). Furthermore, the Respondent, respectively ExpressPost Ltd, cannot have ignored the protection of the Complainantís international registration No. 467879 MILUPA in Russia, dating back to 1981, and covering amongst others the international classes 37,39,41 and 42. Otherwise it would not have chosen exactly those classes for its trademark application, which are not covered by the registration of the Complainant. Again it does not speak for the Respondent when it refers to searches made after receipt of the Complaint at the WIPO Express data base, where for the above cited registration only class 03 is mentioned, which as for all the other registrations of the Complainant listed in Annex 1 to the Response, is simply the first class of the classes for which the mark is registered (no doubt the lawyers of the Respondent were aware of that fact, otherwise they would have been negligent), whilst the Respondent very easily could have checked with Rospatent for the registered trademarks of the Complainant which are protected in Russia, at the time when it applied for registration of its own trademark MILUPA. No doubt, Rospatent would have given the same information to the Respondent about the international registration No 467879 which it gave to the Complainant, that the registration is in Russia validly registered for classes 03,05,07,08,11,16,20,21,24,25,28,29,30, 31,32,37,39,411,42. These facts are the more typical for the kind of argumentation of the Response as on page 10 the Respondent sees doubts in the good faith of the Complainant because the Complainant had not considered "checking Rospatent for registered trademarks milupa that the Respondent might be a holder of". The Complainant, having had for over 20 years trademark registrations for its internationally well-known trademark MILUPA protected in Russia, is accused not to have checked the register of Rospatent in order to find out about the trademark application of ExpressPost Ltd, whilst the Respondent, respectively ExpressPost Ltd did not care to make a search about possible earlier rights before applying for the trademark MILUPA. Contrary to the submissions of the Respondent, the Panelist is therefore convinced that the Respondent was fully aware of the trademark rights of the Complainant, when registering the domain name <milupa.com> and when filing the trademark application for MILUPA in exactly those classes which are not covered by the Complainantís trademark rights. This conclusion is the more justified as the products of the Complainant have been on the market in St. Petersburg for many years, and the Respondent chose for its registration of the domain name <milupa.com> the gtld ".com" and established under that name a web site with contents in English language. Why should the Respondent have acted in that manner if not in order to attract visitors from countries in which the trademark MILUPA of the Complainant is known to the consumers.

Under the circumstances, neither the enterprise established under the name Milupa, nor the trademark application MILUPA of ExpressPost Ltd (which only after the initiation of the present proceeding matured into a registration) can justify the registration of the domain name <milupa.com>. The Panelist is therefore satisfied that the Respondent, be it "Milupa ExpressPost Ltd", be it "Milupa", has no right or legitimate interest in that domain name.

3) Registration and Use in Bad Faith

For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith. As an example, the Policy section 4(b) (i) mentions registration of 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 a mark or to a competitor of that Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name.

A generally applied test is therefore whether a Respondent has attempted to sell the domain name for a sum in excess of the Respondentís out of pocket expenses in registering the domain name.

In that context, the Complainant has submitted the following arguments:

In December 2001, the Complainant became aware of the Respondentís website, containing the following announcement:

"milupa

for sale

Votum Ltd, a law firm, Saint-Petersburg, Russia, is in charge of the liquidation of the intellectual property rights connected with "MILUPA" brand and its previous holders. The next objects are offered for interested parties (either separately or as a whole):

1. Rights in the trademark MILUA (Russian Federation)

2. Alpha version of MILUPA software kit and internet marketing tools

3. MILUPA personnel recruiting psychological tests®

4. Domain names milupa.com and milupa.spb.ru

All objects are free of any claims from third parties. Company name franchising also discussible.

For inspection of items 1 Ė3 a non-refundable deposit of $ 500 is required.

If you are interested, please send an e-mail to liquidation@mail.milupa.com. When contacting us, please introduce your company and mention your phone and fax numbers. A trained paralegal or a lawyer will deal with your request".

The Complainant has submitted a copy of the website as Annex 17 to the Complaint.

The Representatives of the Complainant sent an e-mail to the address indicated at the website, referring to the trademark MILUPA of the Complainant and inquiring about the reasons for the Respondent to offer the trademark MILUPA for sale. The Complainant received no response, and a few days later the website became inoperative.

Some time later the Complainant discovered that the website had again become operative and contained (still at the time when the Complaint was deposited) the following announcement (as evidenced by Annex 24 to the Complaint):

Milupa

For FranchsingFranchising / Sale

Due to its financial situation holder of the trademark MILUPA (Russian Federation) will negotiate sale or franchising of its rights for the trademark Milupa as well as other rights related to Milupa brand: domain names, Milupa branded software, other copyrighted material. Please contact us franchising@mail.milupa.com.

All objects are free of any claims from third parties. When contacting us, please introduce your company and mention your phone and fax numbers. A trained paralegal or a lawyer will deal with your request".

These announcements are clear evidence that the Respondent offered the domain name <milupa.com> for sale, no doubt in excess of out of pocket expenses (as can be deducted from the simple fact that in the first website announcement a sum of $ 500 was requested only for inspection of the intellectual property rights offered for sale). Therefore, no doubt the Respondent is using the domain name primarily for selling or renting it for valuable consideration in excess of out-of-pocket costs directly related to the domain name. Normally, from these considerations it can be deducted that the Respondent has also registered the domain name in bad faith.

In view of the arguments submitted by the Respondent, the Panelist will, however, consider more in detail whether the Complainant is correct in submitting that the Respondent also has registered the domain name <milupa.com> primarily for selling or renting it for valuable consideration in excess of out-of-pocket costs directly related to the domain name.

As has been noted before, the Respondent has submitted that the name "Milupa" was chosen as a combination of the two first letters of the names of three persons having agreed to establish a business under that name (copy of the respective agreement has been submitted as annex of the Response) and that a trademark MILUPA has been applied for (and recently been registered by Rospatent) in Russia in the classes 36, 38 and 40. It has also submitted evidence of the establishment of a department of the company ExpressPost Ltd under the name "Milupa".

However, the Panelist is not convinced that these arguments establish fair business considerations, for the following reasons:

a) The Respondent (whoever that is) applied for registration of the domain name <milupa.com> at a time when no business unit at all existed under that name. The Panelist is satisfied that the Respondent at that time was aware of the well-known trademark MILUPA, also being used for products on the market in St. Petersburg, and its international importance for the products sold in many countries and being market leader in a number of European countries. Why should the Respondent otherwise, in addition to the registration of the domain name <milupa.spb.ru> have applied for registration of the domain name <milupa> in the ".com" domain and have established a website in English language, in which already one year after its registration (if not earlier) the domain name was offered for sale?

b) The fact that the Respondent was able to find three persons (or perhaps two, if one of the three persons was behind the application for registration of the domain name <milupa.com>), whose names could be used for the creation of the word "Milupa", for it alone does not speak in favor of the Respondent for the reasons, explained under 2a).

The following may be added to these considerations:

In view of the amounts of money at issue, it is not at all natural (as the Respondent intends to make believe) that due to the lack of own financial resources ("in order to realize the initial idea on establishing of the provident society and nonblank credit organization"!), it offered for franchising and for sale its intellectual property rights, since these rights, if they had any notable value, had no doubt a value to be neglected if compared to the exorbitant sums needed for investing in the "intended" business. This offer for sale is, on the contrary, again a strong indication that from the very outset the domain name was registered with the sole purpose to offer it for sale to the Complainant or any other interest person. The Panelist is the more satisfied that this is true as the contents of the second website is in contradiction to the contents of the first website where the impression was given that all intellectual property rights, including the domain name <milupa.com> had been transferred to the "Votum Law firm" (which was said to be in charge of liquidation of the intellectual property rights of the previous holders). This announcement was anyhow wrong since the Respondent never transferred the domain name to any other person (it only provided for a change of address, a fact to be considered another manipulation in the context of the attempt to justify the registration of the domain name), nor transferred ExpressPost Ltd the trademark application to another person. The contents of the first website was therefore confusing and the Respondent no doubt has acted in such manner on purpose.

c) For the reasons already given under 2b) also the application for the registration of the trademark MILUPA by ExpressPost Ltd in classes 36.38 and 40, does not establish good faith of the Respondent. In that context the following considerations may be added:

In view of the fact that the trademark MILUPA of the Complainant is internationally well-known, its use on the different websites which were established under the domain name <milupa.com> is also an infringement of the rights of the Complainant in its trademark. Offering for sale or for franchising of rights in the mark MILUPA, including the domain name <milupa> on a website in the ".com" domain, and in English language, has clearly a commercial effect in the countries where the trademark of the Complainant is well-known, such a Germany and Austria, and therefore infringes the rights in that mark (See the WIPO Joint Recommendation on the Use of Signs on the Internet of October 2001). This is another sign of bad faith of the Respondent. The WIPO Recommendation provides or an exemption from liability where the infringer has a trademark right in another country. However, when the Respondent used the trademark MILUPA on its websites it did not have any right in a registered trademark. On the contrary, it purports to have referred to its intellectual property rights in the name Milupa, however, already when only a trademark application of ExpressPost Ltd was pending.

Furthermore, in view of the international fame of the Complainantís trademark MILUPA, a visitor of the Respondentís website from one of the countries where the Complainantís trademark is well-known, faced with the English language text on that website, would normally not expect that the owner of that website refers to intellectual property rights in Russia of a person not related to the Complainant, the more as no explanation as to the ownership of the offered intellectual property rights is made. A person, wishing to find out about that ownership, had first of all to make a payment of $ 500. Therefore, the arguments of the Respondent that the website never referred to the Complainantís intellectual property rights, rather to its own rights, are not convincing.

Taking all these considerations together, the Panelist is satisfied that the Respondent not only used but also registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or to a competitor of that Complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name. Consequently it has registered and is using the domain name in bad faith.

d) Only additionally may be stated that the Respondent, by using the domain name <milupa.com> for a website in the gtld ".com" and using at that website the trademark MILUPA, without referring to its Russian trademark application (and without any statement making it clear that it was not related to the Complainant) the Respondent created a likelihood of confusion with the Complainantís well-known trademarks as to source, sponsorship, affiliation and endorsement of the Respondentís website. That the Respondent used the website to attract Internet users for commercial gain is clear from its contents.

The Respondent repeatedly hints to the different business activities covered by the respective Russian trademark applications/registrations. In that context it overlooks that it uses the domain name <milupa.com> in the gtld ".com" and therefore addresses itself (apparently intentionally, as can be seen from the contents of the websites in English language) to visitors from countries where the trademark MILUPA of the Complainant enjoys the protection of a well-known mark, which is not restricted to identical or similar goods or services. Even if the Respondent had been the owner of a registered trademark MILUPA in Russia in classes 36, 38, 40, when it registered the domain name <milupa.com> that registration would, in view of the lacking intentions of good faith present or future use for offering goods or services listed in these classes, as such not have justified the registration of the domain name <milupa> in the ".com" domain. Therefore it is clear that the trademark MILUPA, applied later and registered now in the name of ExpressPost Ltd, cannot justify the use of the domain name <milupa.com> and cannot therefore exclude bad faith of the Respondent.

A last remark may be made to the Respondentís submission that the Complainant had chosen the Mutual Jurisdiction (the United States) with the purpose of complicating the Respondentís filing an appeal in case of an unfavorable decision.

In that context the Respondent overlooks that itself has chosen to register its domain name at a Registrar located in Canada (NOT the United States) and as a consequence of that decision of the Respondent, the Complainant has according to Rule 3(b) (xiii) submitted to mutual jurisdiction in Canada. Had the Respondent chosen a Registrar located in the Russian Federation, he could submit an appeal to a court in Russia.

In conclusion the Panelist is satisfied that the Respondent either registered the domain name <milupa.com> in order to sell it for a sum in excess of the Respondentís out of pocket expenses, or it intended to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of its web site and the goods and services offered for franchising or sale on that web site, or it pursued both intentions in parallel. The facts and evidence submitted by the Complainant therefore prove registration and use of the domain name <milupa.com> by the Respondent in bad faith.

 

7. Decision

The Panel decides that the Complainant has proven each of the three elements of paragraph 4(a) of the Policy.

Pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel requires that the registration of the domain name <milupa.com> be transferred to the Complainant.

 


 

Dr. Gerd F. Kunze
Sole Panelist

Dated: July 16, 2001