WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Migros-Genossenschafts-Bund v. WhoisSecure / clem kenny
Case No. D2019-0803
1. The Parties
The Complainant is Migros-Genossenschafts-Bund, Switzerland represented by SILKA Law AB, Sweden.
The Respondent is WhoisSecure, United States of America (“United States”) / clem kenny, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <migrosglobal.com> (“Domain Name”) is registered with OwnRegistrar, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2019. On April 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 11, 2019, the Registrar transmitted by email to the Center its verification response with registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 15, 2019.
The Center verified that the Complaint together with the amended 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 April 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2019.
The Center appointed Jon Lang as the sole panelist in this matter on May 15, 2019. 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 a Swiss based umbrella organization of the regional Migros Cooperatives. It is known throughout Switzerland as one of the biggest department stores, offering a wide range of food and non-food products and services. The Complainant was founded by Gottlieb Duttweiler in 1925 in Zurich and has now evolved into a Community of ten regional Cooperatives. The Migros Group’s interests (which in 2017 generated sales of CHF 28.1 billion) extend beyond food, for instance, to travel, cultural institutions, fitness, pension funds and a bank.
Migros Bank is a wholly owned subsidiary of the Migros Group operating a website at “www.migrosbank.ch.” The bank was founded in 1958 and is present in 67 locations in Switzerland and is active on several social media sites such as: Facebook, twitter, Google +, Youtube, Xing and LinkedIn.
The Complainant owns several trademarks consisting of or containing the word “Migros” for instance, Swiss word mark MIGROS with a registration date of September 20, 1993 (Registration number: P-405500).
The Complainant also owns various registrations for domain names that include its registered trademarks, including “www.migros.com”, “www.migros.ch”, “www.migrosbank.com”, “migrosbank.ch” which it uses to connect to websites informing potential customers about its products and services.
The Domain Name <migrosglobal.com> was registered by the Respondent “clem kenny” on March 26, 2019. Nothing is known about “clem kenny” as he has not taken part in these proceedings.
5. Parties’ Contentions
The following is a brief summary of the contentions of the Complainant.
The Domain Name was previously pointing to a website that aimed to attract consumers to a false bank website by copying the design of the Complainant’s official website at “www.migrosbank.com”.
Identical or confusingly similar
The Domain Name entirely incorporates the Complainant’s well-known “MIGROS” trademark. The addition of the generic Top-Level Domain (“gTLD”) “.com” is a technical requirement and does not add any distinctiveness to the Domain Name. It is therefore to be disregarded from any analysis of confusing similarity.
MIGROS is the most distinctive element of the Domain Name and the addition of the generic word “global” does not diminish the overall likelihood of confusing similarity to the Complainant’s trademark. In fact, the addition of the word “global” in the Domain Name only strengthens the case on confusingly similarity given that the Complainant is (according to “Freshplaza.com”) ranked among the 50 largest retailers in the world.
The Respondent has no rights or legitimate interests in respect of the Domain Name
There can be no bona fide offering of goods or services where the Domain Name incorporates a trademark which is not owned by the Respondent.
The Respondent is not known by the name “Migros” and searches have not revealed anything justifying the Domain Name registration.
The combination of the word “migros” with “global” strengthens the impression of a legitimate connection between the website to which the Domain Name resolves and the Complainant.
The Respondent has not provided any evidence of use, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The intention is to induce consumers into visiting a website under the misapprehension that it is endorsed by the Complainant. Relying on consumer confusion by using a well-established trademark in a domain name cannot sustain a claim to rights or legitimate interests in that domain name.
The Respondent has made no effort to use the Domain Name in a manner consistent with having rights or a legitimate interest in the name “Migros”. When entering the words “migros” or “migros bank” in to the Google search engine, the first returned results point to the Complainant’s official website. The Respondent could easily have performed a similar search before registering the Domain Names and would have quickly found that the “MIGROS” trademark is owned by the Complainant and has been used for a significant period of time.
The intention of the Domain Name is to take advantage of an association with the business of the Complainant.
The Domain Name was used to set up a website, copying the design of the Complainant’s official website, in order to deceive members of the public into believing that they can safely part with their money. The website was deceptively similar in layout, color and content. The Complainant took all measures to try and have the site removed and it was indeed suspended. Such use of the Domain Name makes it clear that the Respondent was aware of the Complainant.
The Respondent does not claim to have made legitimate, noncommercial use of the Domain Name.
The Domain Name was registered and is being used in bad faith
The Domain Name was registered in bad faith
Given the Complainant’s “MIGROS” trademark and its active business presence, it seems unlikely that the Respondent was not aware that registration of the Domain Name was unlawful.
The Respondent reproduced the Complainant’s website by adopting the Complainant’s logo and overall look with the intention of deceiving Internet users into believing that the website was in fact operated by the Complainant.
The Domain Name is being used in bad faith
Although the Respondent (clem kenny) did not disclose his identity, the Complainant sent, on April 3, 2019, a cease and desist letter to the email address listed in the WHOIS record and to the Registrar’s abuse department. The Complainant’s letter advised that the unauthorized use of its trademark within the Domain Name violated its trademark rights and requested that the Domain Name be voluntarily transferred. The Registrar confirmed that the letter had been forwarded to the underlying owner. No reply was received from the underlying owner (clem kenny) within the requested deadline or prior to the filing of the Complaint. The letter was simply disregarded. Failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant to a finding of bad faith.
Using the Domain Name to resolve to an infringing website, on the face of it dedicated to banking services and offering Internet users an opportunity to make contact via an email address incorporating the Complainant’s trademark, does not constitute good faith use. The fact that presently the website is suspended does not cure such bad faith use.
The confusingly similar nature of the Domain Name (including use of the word “global”) demonstrates lack of good faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (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. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the MIGROS trademark.
Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s MIGROS trademark, followed by the word “global”. As the MIGROS trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity.
The “MIGROS” trademark is clearly recognizable within the Domain Name. The only real issue therefore is whether the word “global” which follows it, renders the Domain Name something other than confusingly similar (to the “MIGROS” trademark). In the Panel’s view, it does not.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the “MIGROS” trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Despite a respondent not having been licensed by or affiliated with a complainant, it might still be able to demonstrate rights or legitimate interests. For instance, a respondent can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
There is no evidence to suggest that the Respondent was (or is) commonly known by the Domain Name. Given the use to which the Domain Name was once put i.e. to resolve to a false bank website that copied the design of the Complainant’s bank website, it can hardly be said that such use was “legitimate noncommercial or fair” or indeed “without intent for commercial gain to misleadingly divert consumers”.
A respondent can also show that before any notice of dispute, it was using or had made 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. Again, given the use to which the Domain Name has been put, the Respondent could not possibly suggest that any offering of goods or services was bona fide.
There is no evidence before this Panel which suggests that the Respondent has rights or legitimate interests in the Domain Name and the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. These appear to be the very circumstances present in this case.
If a UDRP proceeding is commenced in circumstances where a well-known trademark (of which a respondent is likely to have been aware) is used in a confusingly similar domain name, it is incumbent on the respondent to come forward with an explanation if it is to avoid or attempt to avoid the risk of an adverse finding. Indeed, a respondent’s non-participation is a factor that can be taken into account, along with others, in considering bad faith under the Policy. The reality is however, that there is nothing much the Respondent in this proceeding could have said to justify its registration and use of the Domain Name.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
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 <migrosglobal.com> be transferred to the Complainant.
Date: May 28, 2019