WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Migros-Genossenschafts-Bund v. Yevgen Kochubynsky
Case No. D2015-1630
1. The Parties
The Complainant is Migros-Genossenschafts-Bund, Zürich, Switzerland, represented by BrandIT Legal AB, Sweden.
The Respondent is Yevgen Kochubynsky, Odessa, Ukraine.
2. The Domain Names and Registrar
The disputed domain names <migrolino.biz> and <migrolino.net> are registered with GoDaddy.com, LLC
GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2015. On September 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 15, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2015.
The Center appointed Martine Dehaut as the sole panelist in this matter on October 30, 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
As detailed in the Complaint, the Complainant Migros Genossenschaftsbund is the “Swiss based umbrella organization of the regional Migros Cooperatives”. It operates in particular the brand MIGROS which is the largest supermarket chain and largest employer in Switzerland. The Complainant owns the subsidiary entity Migrolino Ltd, which operates a chain of 260 MIGROLINO convenience shops throughout Switzerland. MIGROLINO shops are smaller than the supermarkets MIGROS, and are often located at train stations, kiosks, or petrol stations.
The Complainant owns numerous trade mark rights, including registrations over MIGROS, MIGROL and MIGROLINO. These include for example the international trade mark registration MIGROLINO (word) No. 647744 of July 19, 1995, which is based on a Swiss trade mark registration no. 417 787 filed shortly before.
The Complainant also registered a few domain names containing the word “migrolino”, such as <migrolino.com> and <migrolino.ch>. They are used to inform consumers about new developments, information on store location, and promotions.
As the Respondent did not respond to the Complaint, the information available on its activities originates from the Complainant, and is the result of searches conducted online.
The disputed domain names, <migrolino.biz> and <migrolino.net> were registered on February 6, 2015. They are used to host a basic parking page of the Registrar, GoDaddy.
The Complainant sent a cease and desist letter to the Respondent, on March 18, 2015. As no response was sent by the Respondent, the Complainant instituted this proceeding.
5. Parties’ Contentions
The arguments of the Complainant can be summarized as follows:
The disputed domain names simply reproduce the earlier trade marks MIGROLINO, without any alteration. As the top level domains “.biz” and “.net” are not to be taken into account, a finding of confusing similarity is justified.
The Complainant then argues that the Respondent has no rights or legitimate interests in the disputed domain names. There is no indication as to why the Respondent would have any interest, justification, in the use of these domain names.
The Complainant also claims that the disputed domain names <migrolino.biz> and <migrolino.net> have been registered, and are being used, in bad faith. The Complaint mentions in particular the widespread reference to its brand MIGROLINO online, to the lack of use of the domain names for a proper business linked to the Respondent, the lack of response to its cease and desist letter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to the paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain either the cancellation or the transfer of the disputed domain names:
(i) the disputed domain names are 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 respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns and uses intensively a family of trade marks over MIGROS and variations, including MIGROLINO. The disputed domain names <migrolino.biz> and <migrolino.net> fully reproduce the earlier trade mark, without any alteration or addition. No account is given, at least at this stage, to the activities of the parties and to the scope of protection of the earlier trade marks. Besides, it is generally accepted that the top level domains (gTLD) “.biz” and “.net” do not play a role in this comparison. Accordingly, the Panel notes that the trade marks of the Complainant and the disputed domain names are identical.
Consequently, the Panel considers that the requirement of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Following the second condition of paragraph 4(a) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant has indicated that, to its knowledge, the Respondent has no right or legitimate interest on the disputed domain names: “Migrolino” is not the name of the Respondent, or the name of its business, according to investigations conducted online. The disputed domain names are not used and therefore do not otherwise demonstrate a legitimate, or noncommercial, fair use.
Absent of any defense on this point by the Respondent, and any active use of the disputed domain names, the Panel concludes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the Respondent has not rebutted such case.
Accordingly, the Panel finds that the second requirement of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Respondents have registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy gives examples of circumstances which constitute evidence of both bad faith registration and use.
For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired 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 the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) 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; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
A number of cumulative circumstances allow the Panel to note the existence of a bad faith conduct of the Respondent, when registering and – passively – using the disputed domain names <migrolino.biz> and <migrolino.net>.
First, and as correctly pointed out in the Complaint, any search online would have revealed the existence of the use by the Complainant of a chain of convenience stores under the name MIGROLINO, and of the trade mark rights hold by the Complainant. To satisfy with the requirements set forth in paragraph 4(a)(iii), one can argue that the Respondent knew the trademarks of the Complainant, or at least should have conducted the necessary searches either in the trademarks databases, or in the Internet, before registering the disputed domain names. The Panel observes that according to the disputed domain names’ registration agreements binding on the Respondent, the registrant has to take the necessary measures to avoid any violation of third parties rights. On the contrary, the word “migrolino” has apparently no meaning in Ukrainian or other languages. It is a perfectly arbitrary word, and the Respondent had very likely the Complainant’s brand in mind when registering the disputed domain names. The Panel also notes that the Respondent chose the popular gTLD extensions “.biz” and “.net”, probably after having realized that the Complainant had reserved the “.com” extension to host its website.
Second, the Respondent has failed to respond to the cease and desist letter of the Complainant, and to this Complaint.
Third, the Respondent has provided false contact details when registering the domain names. Both its address and telephone number are incorrect.
Fourth, the Respondent has failed to use the disputed domain names, since they were registered. This lack of activity is not persuasive in itself. However, combined with the other circumstances of this matter, it is indicative of bad faith behavior.
In view of the above, the Panel considers that all the circumstances of the cases are indicative of a bad faith registration and use and passive holding.
Accordingly, the Panel holds that the requirement of Policy, paragraph 4(a)(iii) is satisfied.
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, <migrolino.biz> and <migrolino.net> be transferred to the Complainant.
Date: November 13, 2015