WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Migros Genossenschaftsbund v. Thomas Wiederkehr

Case No. D2015-0564

1. The Parties

The Complainant is Migros Genossenschaftsbund of Zürich, Switzerland, represented by BrandIT Legal AB, Sweden.

The Respondent is Thomas Wiederkehr of Oberengstringen, Switzerland, self-represented.

2. The Domain Name and Registrar

The disputed domain name <garden-of-migros.com> (the “Domain Name”) is registered with Ascio Technologies Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2015. On March 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 1, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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, and the proceedings commenced on April 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2015. The Center received four email communications from the Respondent on April 9, 14, 23, and 25 2015. However, no formal Response was filed with the Center.

The Center appointed Daniel Kraus as the sole panelist in this matter on May 13, 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 is the Swiss based umbrella organization of the regional Migros Cooperatives. The Complainant is known throughout Switzerland as one of the biggest department stores, offering a wide range of food and non-food products. It was founded by Gottlieb Duttweiler in 1925 in Zurich and has now evolved into a community of ten regional Cooperatives.

The Complainant is also active in several branches of activities, including garden-centers under the name “Do it + Garden Migros”. These centers may be found everywhere throughout Switzerland, usually near a Migros supermarket.

The Complainant owns several trademarks for “MIGROS”, both in Switzerland and at an international level. See for example Swiss trademark registration number 405500 (registered in 1993), and Swiss trademark registration number 415060 (registered in 1995). These trademarks predate the Domain Name registration.

The Complainant also holds several trademark registrations for DO IT & GARDEN registered in numerous countries, including in Switzerland. See for example the Swiss trademark registration number 421417 registered as early as in 1996. The Complainant also owns various registrations for domain names that include its registered trademarks, including <migros.com> and <migros.ch>. The Complainant uses these domain names to connect to a website through which it informs potential customers about its products and services. The Complainant has previously successfully challenged several domain name registrations reproducing its MIGROS trademark under the UDRP and the “.ch” Policy (for instance, Migros Genossenschaftsbund (Federation of Migros Cooperatives) v. Centro Consulenze Kim Paloschi, WIPO Case No. D2000-1171; Migros-Genossenschafts-Bund v. Andrew Myers, WIPO Case No. DCH2008-0016, Migros-Genossenschafts-Bund v. Burtson Ive, WIPO Case No. D2008-0092; Migros-Genossenschafts-Bund v. Andrew Myers, WIPO Case No. DCH2010-0020; and Migros-Genossenschafts-Bund v. Helmut Grott, WIPO Case No. DCH2010-0021).

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is identical or confusingly similar to the Complainant's trademarks. The Complainant states that the Domain Name <garden-of-migros.com>, which was registered on June 24, 2014, directly incorporates the Complainant’s well-known, trademark MIGROS. The Domain Name would be perceived by Internet users as descriptive of a website where they could find information about the Complainant’s services. The Domain Name exacerbates the confusion with the Complainant’s trademarks by adding the term “garden” which is closely associated with the Complainant’s services. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not add any distinctiveness to the Domain Name.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not found that the Respondent is commonly known by the Domain Name. Considering the Respondent’s nature of business as a gardener, the Complainant considers that it cannot be a mere coincidence that the Respondent registered the Domain Name without the awareness of the Complainant’s trademark. The Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. Moreover, the Respondent has made no effort to use the Domain Name for any purpose that might explain its choice in a manner consistent with having rights or legitimate interest in the name “migros”. When entering the terms “migros + garden” in the Google search engine, the top returned results point to the Complainant and its business. The Respondent could easily have performed a similar search before registering the Domain Name and would have quickly learnt that the trademarks are owned by the Complainant.

Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent did not formally respond to the case against him and is in default. Four emails were however sent to the Center. On April 9, the Respondent sent an email to the Center with the following content: “Hmmmmmmmhhhhhhhhhhh..........”.

On April 14, the daughter of the Respondent sent an email to the Center, asking in German whether registering a domain name was a criminal offence. On April 23, the question was reformulated in English. Finally, on April 25, an email was sent to the Centre with the following content, explaining the vision of the Respondent (sic.):

“Dear Mrs [WIPO Center]

I have a vision of a new order of the human being or everiwhere organisations in the world, without estoteric or spirituell ideas. Just of an Idea by myself to bring an identity of one to a group, and farther and farther.

The garden is for my the way, the outside and inside of a human nature bring together.

You, [WIPO Center]], are a special person. You feel something of my ideas, and understand anything.......

white behind your timehorizon in your past. You know it best !!!

Its my passion.

We wanted to offer to the Firm Migros, how i met your mother (Sorry, choke) how to be completed, how to be a audentity Firm, really honestfull. The Man/ Woman on the top is the woman in the front, and at lost the client.

A super P.R.-Idea. A Present for this Firm.

Therefore we have registrated the Domain: garden- of-migros.

We have over other 4'000 Domains, included garden-of-facebook, garden-of-google, ...........

I want a new order of this instabile world, and a give all my positive sense.

I never would take this Domain for any ideas, without agreement of for example Migros, but only the registration - and thats the only fact of this shinedesaster - can't be a fould of me.

Just the registration of a name cant be a fault. If I' m on the dark side of the moon ( sorry, i can't better .....) than it will get e consequence of all the firms, who gives the Domain-Names out, whitch are really not allowed.

I see you and I respect you very

Thomas”

6. Discussion and Findings

In order to obtain the transfer of the Domain Name, the Complainant should demonstrate, in accordance with the Policy, paragraph 4(a), that:

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

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

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

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established rights in the term “Migros”. The Complainant has provided evidence of its Swiss trademark registrations in the term “Migros”. The Panel is therefore satisfied that the Complainant has established trademark rights in the term “Migros”.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trademark. The Panel notes that the Domain Name incorporates the Complainant’s MIGROS trademark in its entirety. The mere addition of the generic phrase “garden of” does nothing to distinguish the Domain Name from the Complainant's trademark (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

It is widely accepted that the “.com” gTLD is generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.

The Panel considers that the Domain Name is confusingly similar to the Complainant's trademark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:

(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.

The Panel finds, based on the statements and evidence put forward by the Complainant, that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name and that, as a result of his default, the Respondent has failed to rebut such a showing.

The Complainant has not authorized the Respondent to make any use of its trademark, in a domain name or otherwise. In addition, there is no evidence suggesting that the Respondent is commonly known by the Domain Name or that the Respondent has any rights in the term “Migros”. Furthermore, given the notoriety surrounding the Complainant’s trademark, it would seem rather unlikely that there would be any such evidence.

Furthermore, the Panel finds that the Respondent’s justification of the registration of the Domain Name, as resulting from the above-mentioned emails dated April 9, 14, 23, and 25, 2015 cannot be considered either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy. The first three emails merely contain an expression of despair or ask a question, outside the scope of the present administrative procedure. The last email – which, like the three other mails, is not considered as a formal Response to the Complaint – suggests something of a philosophical and spiritual justification to the registration. This justification is insufficient in the view of the panel, as another elements needs to be taken into consideration. First, the fact that the Respondent himself admits registering domain names which include famous trademarks, such as GOOGLE or FACEBOOK, adding the terms “garden-of-” in front of those trademarks contradicts any rights or legitimate interests he may otherwise be able to assert as a professional gardener. Second, if one takes into consideration the fact that the Respondent is a professional gardener, there seems to be no right nor legitimate interest for him to register such domain names and in particular the one at stake in the present case, unless in agreement with the trademark right-holder. This is obviously not the case here.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy a complainant must prove that the respondent both registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including but not limited to:

(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.

In order to establish bad faith registration, a complainant must demonstrate that the respondent had awareness of the complainant’s rights at the time of registration of the domain name in question. In the instant case, the Panel finds that the fact that the Complainant’s MIGROS trademark not only predates the Domain Name but is also well-known strongly indicates that the Respondent had knowledge of the Complainant's rights at the time of registration.

The particular issue at stake in the present case is whether there can be use in bad faith when the domain name is not actively used. With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, or no response to the complaint having been filed. Both are the case here. Panels may also draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. The Panel finds that the Respondent's reply to the Complainant’s cease and desist letter and the lack of formal response in the present proceedings are additional indications of the Respondent’s bad faith. See, for instance, Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066. Taking into account these circumstances, the Panel finds that the passive holding of the disputed domain name also constitutes a use in bad faith.

The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

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 Domain Name <garden-of-migros.com> be transferred to the Complainant.

Daniel Kraus
Sole Panelist
Date: May 27, 2015