WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) v. Privacy Protect, LLC (PrivacyProtect.org) / max pane, kfc
Case No. D2017-2076
1. The Parties
The Complainant is Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) of Zurich, Switzerland, represented by SILKA Law AB, Sweden.
The Respondent is Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States of America ("USA") / max pane, kfc of tamale, Ghana.
2. The Domain Name and Registrar
The disputed domain name <migrossonline.com> (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2017, naming Privacy Protect, LLC (PrivacyProtect.org) as the Respondent. The Center sent its request for registrar verification to the Registrar on October 25, 2017. The Registrar replied on October 26, 2017, confirming that it is the Registrar of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applies, that the Domain Name will expire on August 6, 2018, that a Registrar Lock has been applied and will remain in place until the expiry date, that the language of the registration agreement is English, and that the Domain Name was registered on August 6, 2017. The Registrar stated that the registrant is not as named in the Complaint and provided the full contact details held on its WhoIs database, which identified the registrant as max pane, kfc of Ghana.
The Center drew the registrant information provided by the Registrar to the attention of the Complainant on November 1, 2017, and invited the Complainant to amend the Complaint. The Complainant submitted an amendment to the Complaint to the Center on November 2, 2017, updating it to identify the Respondent in accordance with the details provided by the Registrar and stating that the Respondent as identified has no relationship with the Complainant of any rights in the name "Migros".
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2017. In accordance with paragraph 5 of the Rules, the due date for Response was November 29, 2017. The Respondent did not submit any response by this date. Accordingly, the Center notified the Respondent's default on November 30, 2017.
On November 30, 2017, the Respondent replied to the Center's Notification of Respondent Default communication, stating "Domain name has been resolved and deleted from the client it to sold to thanks Regards max pane."
The Center appointed Jonathan Turner as the sole panelist in this matter on December 6, 2017. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint together with the amendment complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is the umbrella organization of 10 regional cooperatives operating under the mark MIGROS in Switzerland. The organization was formed in 1925 in Zurich and now operates a large number of stores offering food, non-food products and services in the fields of wellness, travel and catering. It also operates 4 travel agencies, cultural institutions, a museum, restaurants, fitness centers, golf courses, pension funds and a bank. The bank was founded in 1958 and operates under the name "MigrosBank" from 67 locations in Switzerland as well as online.
The Complainant has registered MIGROS and MIGROSBANK as trademarks in Switzerland since February 13, 1993 (registration no. P-405500) and November 2, 1994 (registration no. 2P-414500) respectively. The Complainant has also registered domain names including <migros.ch>, <migrosbank.ch>, <migros.com> and <migrosbank.com>.
The Domain Name was directed to a website purporting to be an official website of MigrosBank, that invited users to enter their account number and password. The website was suspended following action taken by the Complainant.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its mark MIGROS. The Complainant points out that the addition of the generic word "online" and the generic Top-Level Domain ("gTLD") suffix ".com" do not diminish the likelihood of confusion especially as the Complainant's group includes a bank that operates online. The Complainant adds that the additional letter "s" also provides no significant distinction.
The Complainant states that the Respondent has not used or made preparations to use the Domain Name for any bona fide offering of goods or services or any legitimate noncommercial or fair purpose. The Complainant draws attention to the website provided by the Respondent as described above and alleges that it was set up to deceive members of the public.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant emphasizes that the Respondent copied the Complainant's logo and the overall look of its bank's website in order to deceive consumers.
The Complainant requests a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply substantively to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent's default in failing to file a substantive response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
The Panel uses the term "the Respondent" in this section to refer to the actual registrant of the Domain Name, rather than the privacy service originally named as the Respondent in the Complaint as filed.
A. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant has registered rights in the mark MIGROS.
The Panel further finds that the Domain Name is confusingly similar to this mark. The gTLD suffix does not provide any distinction for the purposes of the Policy and should be discounted in line with numerous previous decisions under the UDRP. Similarly, the addition of the word "online" in the Domain Name does not provide any distinction, since Internet users would understand it to signify a location where the Complainant provides online services. The additional letter "s" also fails to provide a sufficient difference to avoid confusion and it is clear from the Respondent's website that this was also the Respondent's expectation.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel is satisfied on the evidence that the Respondent has not used or prepared to use the Domain Name for any bona fide offering of goods or services or for any legitimate noncommercial or fair purpose. On the contrary, the Respondent has used it for an illegitimate purpose of phishing for confidential information from customers of the Complainant by deceiving them into believing that the Respondent's website is a website of the Complainant.
It is evident that the Respondent is not commonly known by the Domain Name and there is no other basis on which the Respondent could claim any rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the evidence that the Respondent has used the Domain Name intentionally to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source of that website, for commercial gain, namely obtaining confidential information by phishing their account numbers and passwords. In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Name in bad faith.
There is no contrary evidence displacing this presumption. The Panel accordingly finds that the Domain Name was registered and is being used in bad faith.
All three requirements of the UDRP are satisfied and it is appropriate to order that the Domain Name be transferred to the Complainant.
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 <migrossonline.com> be transferred to the Complainant.
Date: December 20, 2017