WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Migros-Genossenschafts-Bund v. Fang Qian, Beijing Grand Century Investment Ltd. / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)

Case No. D2015-0921

1. The Parties

The Complainant is Migros-Genossenschafts-Bund of Zürich, Switzerland, represented by BrandIT Legal AB of Stockholm, Sweden.

The Respondent is Fang Qian, Beijing Grand Century Investment Ltd. of Beijing, China / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China, represented internally.

2. The Domain Names and Registrar

The disputed domain names <migros.asia> and <migros-china.com> (the "Disputed Domain Names") are registered with HiChina Zhicheng Technology Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") in relation to the Disputed Domain Name <migros-china.com> on June 1, 2015. On June 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name <migros-china.com>. On June 2, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name <migros-china.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 5, 2015 providing the registrant and contact information disclosed by the Registrar regarding the Disputed Domain Name <migros-china.com>, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 7, 2015 also requesting to add the Disputed Domain Name <migros.asia>.

On June 5, 2015, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding regarding the Disputed Domain Name <migros-china.com>. On June 7, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

On June 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the newly added Disputed Domain Name <migros.asia>. On the same day, the Registrar transmitted by email to the Center its verification response regarding the newly added Disputed Domain Name <migros.asia> confirming that the Respondent is listed as the registrant and providing the contact details.

On June 9, 2015 the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding regarding the newly added Disputed Domain Name <migros.asia>. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on June 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2015. On June 25, 2015, the Respondent requested the Center to resend the Complaint on the basis that previous email communications from the Center went into a spam folder and were subsequently deleted. The Center resent the Complaint and the annexes thereto on the same day. The Response was filed with the Center on July 2, 2015.

On July 2, 2015, the Center received an email communication from the Complainant.

The Center appointed Kar Liang Soh as the sole panelist in this matter on July 14, 2015. 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 was founded by Gottlieb Duttweiler in 1925 in Zurich, Switzerland and is the umbrella organization of ten regional cooperatives in Switzerland known as the Migros Cooperatives which operate department stores offering food and non-food products. The Complainant established a wholly owned subsidiary in Hong Kong, China, in 1995 to manage the sourcing of products and suppliers from the Far East. Since 2005, the Complainant has also been operating a representative office in Shanghai, China.

The Complainant uses trademarks containing the word MIGROS (the "MIGROS Trademark") in relation to its products and services. The MIGROS Trademark is registered in many jurisdictions around the world, including:

The Complainant is also the holder of various domain names incorporating the MIGROS Trademark, including <migros.com> and <migros.ch>. The Complainant operates websites under these domain names to market its products and services under the MIGROS Trademark.

The Complainant's products under the MIGROS Trademark are available on "www.alibaba.com" which is a major e-commerce site in China. In addition to undertaking anti-counterfeiting initiatives, the Complainant has successfully obtained the transfer of domain names (including Migros Genossenschaftsbund (Federation of Migros Cooperatives) v. Centro Consulenze Kim Paloschi, WIPO Case No. D2000-1171; Migros-Genossenschafts-Bund v. ubgm, WIPO Case No. DCH2008-0016; Migros-Genossenschafts-Bund v. Andrew Myers, WIPO Case No. D2008-0092), pursuant to the Policy. Prior UDRP panels have found the MIGROS Trademark to be well-known (see Migros Genossenschaftsbund (Federation of Migros Cooperatives) v. Centro Consulenze Kim Paloschi, supra and Migros-Genossenschafts-Bund v. ubgm, supra).

The Disputed Domain Names were registered on July 17, 2014. Beyond the WhoIs information for the Disputed Domain Names not much information about the Respondent is known. On or before June 1, 2015, the date of the Complaint, the Disputed Domain Name <migros-china.com> did not resolve to any website. On or before June 7, 2015, the date of the amendment to the Complaint, the Disputed Domain Name <migros.asia> did not resolve to any website and was listed for sale without a list price on "www.afternic.com".

5. Parties' Contentions

A. Complainant

The Complainant contends in relation to the Disputed Domain Name <migros-china.com> that:

a) It is identical or confusingly similar to the Complainant's trademark MIGROS. It entirely incorporates the MIGROS Trademark and contains the country name "china". It would be perceived by Internet users as descriptive of a website where information about the Complainant's products may be found. The generic Top-Level Domain ("gTLD") ".com" should be disregarded in considering confusing similarity;

b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name and has made no effort to use it for any purpose that might explain its choice in a manner consistent with having rights or legitimate interest in the name "Migros". The Respondent's identity is hidden by a privacy protection service and there is no active website associated with it. The Respondent has had ample time to activate the website since registration but has not. There is also no evidence that the Respondent has a history of using, or preparing to use, the Disputed Domain Name in connection with a bona fide offering of goods and services; and

c) It was registered and is being used in bad faith. The registration of the well-known MIGROS Trademark predates the registration of the Disputed Domain Name. It is unlikely that the Respondent was not aware of its unlawful registration. The Respondent has carefully hidden its identity behind a privacy service. The Respondent did not respond to a cease and desist letter sent by the Complainant on February 10, 2015. The purpose of preventing the Complainant from reflecting the MIGROS Trademark in a corresponding domain name further demonstrates lack of good faith.

The Complainant contends in relation to the Disputed Domain Name <migros.asia> that similar arguments as the above in relation to <migros-china.com> apply.

B. Respondent

The Respondent contends that it registered the Disputed Domain Names by lawful means and had paid the associated fees in advance from 2014 to 2017. The Respondent intends to use the Disputed Domain Names in relation to its food products business. The Respondent's registration and use of the Disputed Domain Names are bona fide and legal.

6. Discussion and Findings

6.1 Language of Proceeding

The Registration Agreements of the Disputed Domain Names are in Chinese. The default language of the proceeding is accordingly Chinese. The Complainant has requested that English be adopted as the language of the proceeding. The Panel accepts the request and holds that English be adopted as such. In deciding thus, the Panel has taken into account the following factors:

a) The Complaint was filed in English;

b) The Complainant will incur significant additional expense and the proceeding will suffer delay if Chinese were to be adopted;

c) The Respondent did not object to the Complainant's request that English be the language of the proceeding, despite notices from the Center in both English and Chinese;

d) The Respondent has already filed a Response in Chinese; and

e) The Panel is bilingual in English and Chinese and is well equipped to deal with the Parties' submissions in both English and Chinese.

6.2 Discussion

To succeed in this proceeding, paragraph 4(a) of the Policy requires the Complainant to show that:

(i) The Disputed Domain Names are identical or confusingly similar to the Complainant's trademark;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) The Disputed Domain Names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

Each Disputed Domain Name incorporates the MIGROS Trademark in its entirety. In particular, the Disputed Domain Name <migros.asia> relates to the word "migros" and, apart from the generic Top Level Domain ".asia", is identical to the MIGROS Trademark. The Panel also agrees with the Complainant's submission that the "-china" suffix appended to the MIGROS Trademark in the Disputed Domain Name <migros-china.com> does not assist to distinguish it from the MIGROS Trademark. Accordingly, the Panel holds that both Disputed Domain Names satisfy the first limb of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant has confirmed that the Respondent is not affiliated with the Complainant and that the Respondent has also not received the Complainant's consent to use the MIGROS Trademark. The Disputed Domain Names did not resolve to any active website which could indicate whether they are used in connection with a bona fide offering of goods or services. While the Respondent has expressed that it intends to use the Disputed Domain Names in connection with its food product business, such claim is not corroborated by evidence. More strikingly, there is evidence before the Panel of the listing of <migros.asia> for sale on "www.afternic.com".

The Panel notes that the Respondent's name and the Disputed Domain Names are starkly different. The Respondent has not submitted any evidence which could suggest that the Respondent is commonly known by any of the Disputed Domain Names, or that the Respondent has any rights in the word "Migros". Likewise, the Respondent's assertion that it intends to uses the Disputed Domain Names for a food product business are unsubstantiated.

Accordingly, the Panel is of the view that a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names has been established on the available facts. As the Response did not provide any basis or evidence which could rebut such prima facie case, the Panel holds that the second limb of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

The MIGROS Trademark was registered years before the Disputed Domain Names. The Panel agrees with the prior UDRP panels in Migros Genossenschaftsbund (Federation of Migros Cooperatives) v. Centro Consulenze Kim Paloschi, supra and Migros-Genossenschafts-Bund v. ubgm, supra, on the evidence that the MIGROS Trademark is sufficiently well-known such that it is inconceivable for the Respondent not to have been aware of the MIGROS Trademark at the time of registering the Disputed Domain Names. There is no evidence that the Respondent has rights, legitimate interests or any association with the word "Migros" save for the registration of the Disputed Domain Names. The only plausible explanation must have arisen from knowledge of the MIGROS Trademark.

Although a formal one paragraph Response was submitted, its content was essentially a bare claim of lawfulness and a bare denial of bad faith, without any cogent explanation or evidential support. The Respondent's bare claim that the Disputed Domain Names were intended for its food products business is not only unsupported by evidence but conflicts with the offer for sale of the Disputed Domain Name <migros.asia> on "www.afternic.com". As such, the Panel is of the view that no substantive response to the Complaint was effectively submitted.

The concept of "passive holding" as a sui generis basis for finding bad faith within the meaning of the third limb of paragraph 4(a) of the Policy was first propounded in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and subsequently developed by other UDRP panels. The Panel is of the view that the circumstances of this case taken as a whole support a finding of such bad faith "passive holding". The Respondent has not simply engaged in an isolated instance of registering a domain name incorporating the MIGROS Trademark. The Respondent has also registered the Disputed Domain Name <migros.asia> which consists entirely of the MIGROS Trademark alone. The Respondent's conduct of registering the two Disputed Domain Names exhibits a suspicious pattern. Further, the serious allegations of the Complainant in the Complaint as well as the cease and desist letter should in all likelihood have elicited a strong and substantive response from a reasonable registrant who registered the Disputed Domain Names in good faith. However, no such response issued from the Respondent, which only reinforces a conclusion of bad faith.

In addition, the Panel is reminded of the example of bad faith registration and use outlined in paragraph 4(b)(ii) of the Policy, which states:

"you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct"

In the absence of any cogent explanation by the Respondent, the Panel is led to the inexorable conclusion that the registration of the Disputed Domain Names amounted to a pattern of conduct which must have been motivated by a desire to take advantage of the MIGROS Trademark with the knowledge that the direct consequence thereof would be to prevent the Complainant from reflecting the MIGROS Trademark in the corresponding Disputed Domain Names.

In the circumstances, the Panel concludes that the third limb of paragraph 4(a) of the Policy is established.

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, <migros.asia> and <migros-china.com>, be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: August 11, 2015