WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Metro Cash & Carry GmbH v. Business Information Services

Case No. DBIZ2002-00285

 

1. The Parties

The Complainant is Metro Cash & Carry, c/o Metro AG, 40235 Düsseldorf, Germany, represented by Eileen Hudson, Düsseldorf., Germany.

The Respondent is Business Information Services, London SE13 5 AX, United Kingdom.

 

2. The Domain Name and Registrar

The Domain Name at issue is <metro.biz>. The Registrar is Easyspace Ltd., International Administration Center, Surrey, United Kingdom.

 

3. Procedural History

The STOP Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 2, 2002, and a hard copy was received by the Center on September 4, 2002. On the same day the Center acknowledged the receipt of the Complaint.

On September 9, 2002, the Center verified that the Complaint satisfies the Start-up Trademark Opposition Policy for .biz, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP") and the Rules for Start-up Trademark Opposition Policy for .biz, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (the "WIPO Supplemental STOP Rules"), and that payment was properly made. The Panel is satisfied this is the case.

On September 9, 2002, the Center notified the STOP Complaint and the administrative proceeding commenced. Since no Response was received by the Center within the time limit set, on October 2, 2002, the Center sent a Notice of Default to the Respondent.

On October 4, 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.

No further submissions were received by the Center or the Panel.

 

4. Factual Background

A. Complainant

The Complainant is an affiliated company of Metro AG, one of the worldís largest trading groups operating in 25 countries with over 2 200 outlets and around 230 000 employees. It is the worldwide leader in the wholesale business operating 384 stores. It is the owner of a number of registrations for the mark METRO for a large list of goods and services, such as international registration 627 390, dated September 30, 1994, and international registration 561 500B, dated October 14, 1997, and German registration number 1031890, dated January 15, 1976. It is also the owner of several used domain names, containing the mark METRO, such as <metro.de>, <metro-online.de>, <metro.fr>, <metro.it>, <metro.pl>.

According to the submission of the Complainant, which has not been contested by the Respondent, it is well-known world-wide. The Complainant is no doubt known in many countries and the Panelist is satisfied that at least in Germany the mark METRO of the Complainant is a well-known mark for the services offered by the Complainantís group. The Panelist arrives at that conclusion despite the fact that the term "metro" is sometimes, in particular in Paris and in Moscow, used as short term for a cityís underground train system, since no consumer will confuse the term "metro", as used as a mark by the Complainant and well-known for its cash & carry shopping centers, with the Paris and Moscow Underground train system. This is obvious in countries other than France and the Russian Federation, but even in France consumers are likely to distinguish the different meanings of the term "Metro" as described before, since the "Metro" group apparently operates over 50 cash & carry outlets all over the country, as can be seen from a map shown at the Complainantís "www.metro.fr" website, and is therefore clearly known in that country.

B. Respondent

On March 27, 2002, the Respondent registered the domain name <metro.biz>.

 

5. Partiesí Contentions

A. Complainant

The Complainant submits that (1) the domain name <metro.biz> is identical to a trademark, 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 or is being used in bad faith.

B. Respondent

The Respondent has failed to submit a Response. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainantís submissions, and all inferences that can reasonably be drawn therefrom (Rule 14(b) of the STOP).

 

6. Discussion and Findings

Paragraph 4(a) of the STOP 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 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 or is being used in bad faith.

1) Identity with a mark in which the Complainant has rights

The domain name <metro.biz> is identical to the trademark METRO in which the Complainant has rights.

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. Simple storing of the domain name by the Respondent, as this is the case at present, does not create any right or legitimate interest in the domain name.

Furthermore, none of the circumstances listed under 4(c) of the STOP, possibly demonstrating rights or legitimate interests, are given. The Respondent has not submitted to be the owner or beneficiary of a trademark that is identical to the domain name. The Respondent apparently has never used the domain name in connection with a bona fide offering of goods or services, and it has not demonstrated any preparations for such use. The Respondent is not known at all under the name <metro.biz>. Since the Respondent has failed to submit a Response the Panelist accepts the submission of the Complainant that the name of the Respondent is merely a description of the service that the Respondent may intend to offer, whose e-mail address "dance@dircon.co uk" (identical with the e-mail address of Mr. Stephen Rumney, the administrative, billing and technical contact) is installed at "www.dircon.co.uk", which links to "www.netscalibur.co.uk", an Internet Service Provider. The Complainant therefore assumes that the Respondent has no business and this assumption has not been contested.

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests vis-à-vis the Complainant in the domain name <metro.biz>.

3) Registration or use in bad faith

For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered or is being used in bad faith.

In the present case the Respondent apparently has registered <metro.biz> without having either used it or having tried to offer it for sale. Since the decision,Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it has been upheld by many Panelists under the Uniform Domain Name Dispute Resolution Policy (the UDRP) that even without any activity of the Respondent in relation to the domain name, the circumstances of a case may lead to the conclusion that a Respondent has registered and is using a domain name in bad faith. Under the STOP, it is sufficient that the Respondent either registered or is using the domain name in bad faith. In view of the short time available to the registrant under the STOP procedure, the question will mainly be whether, based on the circumstances of the case, the Panelist arrives at the conclusion that the Respondent registered the domain name in bad faith.

In this context the Complainant submits the following arguments:

In view of the reputation of the METRO mark the Respondent cannot have ignored the Complainantís rights in that mark. The Complainant believes that the Respondent is an individual and does not carry out a business.

Furthermore, it is hardly possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, the more as it apparently does not intend to carry out a business under that domain name, as requested for the .biz domain (where an intention of fair non-commercial use does not counter bad faith registration).

In addition, the registration of <metro.biz> by the Respondent makes it impossible for the Complainant to register in the .biz domain its trademark METRO, which also stands for the Complainant as business identifier, and thus could disrupt the Complainantís business. Most visitors to the .biz domain searching for the Complainant, would first try to type a domain name corresponding to that registered by the Respondent. Should the Respondent activate a website under that domain name, visitors would be misled into believing that they are connected to the Complainant. This, again, shows that the Respondent cannot reasonably use the domain name for business purposes without infringing the Complainantís rights in the well-known METRO mark.

The fact that term "Metro" also stands for the Paris and Moscow underground train system does not speak against the arguments of the Complainant. Visitors seeking information about these train systems are unlikely to try to find such information in the .biz domain (the more as even the domain name <metro.fr> in the French cctld belongs to the Complainant). Absent any arguments of the Respondent the Panelist cannot perceive how the Respondent could exercise a good faith business related to the Paris or Moscow Metro system under the domain name <metro.biz>. As mentioned before, a possible intention of non-commercial use related to the Paris or Moscow train system cannot be considered in favor of the Respondent in the .biz domain.

Since the Respondent chose not to submit any arguments as to its intention for registering the domain name <metro.biz>, the Panelist accepts the arguments submitted by the Complainant, and is satisfied that the Respondent registered the domain name in bad faith.

 

7. Decision

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

Pursuant to paragraph 4(l) of the STOP and paragraph 15 of the Rules, the Panel requires that the domain name registration <metro.biz> be transferred to the Complainant.

 


 

Dr. Gerd F. Kunze
Sole Panelist

Date: October 22, 2002