WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) v. Pengjie Jiang

Case No. D2015-0326

1. The Parties

The Complainant is Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) of Zürich, Switzerland represented by BrandIT Legal AB, Sweden.

The Respondent is Pengjie Jiang of Shandong, China.

2. The Domain Name and Registrar

The disputed domain name <vacances-migros.info> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2015. On February 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date 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 March 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 23, 2015.

The Center appointed David Taylor as the sole panelist in this matter on April 8, 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 running a travel agency under the name Hotel Plan. Hotel Plan AG is a wholly owned subsidiary of the Complainant. The Complainant's corporate website available at "www.vacances-migros.ch" shows that "Migros Vacances" offers affordable and attractive holiday packages, including beach holidays, city tours, cruises, wellness offers, amusement parks, car and ski vacation packages.

The Complainant owns several trademarks in the term "Migros" and "Migros Vacances", both in Switzerland and at an international level. The Complainant owns, for instance, Swiss trademark registration for MIGROS VACANCES (registration number 637336) as well as an International trademark registration for MIGROS, designating China (registration number 397821), both registered in 2012.

The Complainant also owns several domain names consisting of the term "Migros" or "Vacances Migros". The Complainant uses these domain names to connect to websites, including "www.migros.com", "www.migros.ch", "www.vacances-migros.ch", through which it informs 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. DCH2010-0020 and Migros-Genossenschafts-Bund v. Helmut Grott, WIPO Case No. DCH2010-0021).

The Domain Name was registered by the Respondent on April 18, 2014. It is pointing to a website that mirrors the Complainant's official website at "www.vacances-migros.ch" using a framing technique.

On July 1, 2014 the Complainant sent to the Respondent a cease and desist letter. The Respondent did not reply.

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 directly incorporates the Complainant's well-known trademark and that the Respondent has merely swapped the words around (with "vacances" as the leading word). The Complainant argues that the Domain Name would be perceived by Internet users as descriptive of a website where they could find information about the Complainant's well-known travel offers. The Complainant also asserts that the addition of the generic Top-Level Domain ("gTLD") ".info" does not add any distinctiveness to the Domain Name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that it has not found any evidence suggesting that the Respondent is commonly known by the Domain Name or has rights in the term "Migros". The Complainant further contends that there is no evidence that the Respondent is using, or has made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Complainant further claims that the Respondent has made no effort to use the Domain Name for any purpose that might explain his choice in a manner consistent with having rights or legitimate interest in the name "Migros" or "Migros Vacances". It argues that the terms "Migros and "Migros Vacances" have become a distinctive identifier associated with the Complainant, and that it is therefore clear that the Respondent was seeking to take advantage of an association with the Complainant's business.

The Complainant contends that the content of the Respondent's website is a copy of the Complainant's website and therefore Internet users might mistakenly believe that the Domain Name is managed or controlled by the Complainant. The Complainant argues that there is therefore a risk that factual errors as well as inaccurate travel offers will appear on the website. In addition, the Complainant argues that the Respondent is requesting user names and credit card details. The Complainant contends that such use of the Domain Name cannot constitute a legitimate interest in the Domain Name.

The Complainant further asserts that the Domain Namewas registered and is being used in bad faith. Regarding registration in bad faith, the Complainant asserts that it has substantially used its trademark in the field of travel and hospitality since at least 1935. It argues that its trademarks are well-known trademarks in the large retail and travel industry, particularly in Switzerland. Thus it is inconceivable that the Respondent was not aware of the existence of the Complainant's trademarks at the time of registration. Furthermore, the Complainant asserts that its Chinese and Swiss trademark registrations predate the registration of the Domain Name.

The Complainant further asserts that the Respondent's purpose for registering the Domain Name, which incorporates the Complainant's trademark in its entirety, is to capitalize on the reputation of the Complainant's trademark by diverting Internet users seeking travel offers under the Complainant's trademark to a website identical to the Complainant's official website.

The Complainant further contends that the Respondent's use of the Domain Name to point to a website that is a copy of the Complainant's official website evidences use in bad faith because it is likely to cause confusion amongst Internet users as to its source or affiliation with the Complainant.

Finally, the Complainant states that it tried to contact the Respondent on July 1, 2014 through a cease and desist letter but that the Respondent did not reply. The Complainant asserts that the Respondent's failure to respond to its cease and desist letter is evidence of the Respondent's bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to succeed a complainant must prove on the balance of probabilities that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 15 (a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.

Paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

In the instant case, the Panel notes that the Respondent has failed to respond to the Complaint. The Respondent's failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).

Taking the above into consideration, the Panel finds as follows:

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 and international trademark registrations (designating China) 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 term "vacances" ("vacation" or "holidays" in French) does nothing to distinguish the Domain Name from the Complainant's trademark (see paragraph 1.9 of the WIPO Overview 2.0).

It is widely accepted that the ".info" 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.

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 authorised 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 use of the Domain Name, which is confusingly similar to the Complainant's trademark, to resolve to a website that mirrors the Complainant's official website at "www.vacances-migros.ch" cannot be considered either a bona fide offering of goods or services or 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, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy, as the Respondent is clearly misrepresenting that the website is affiliated to or sponsored by the Complainant.

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 Respondent's use of the Domain Name for a website mirroring the Complainant's official website is a further strong indication of the Respondent's awareness of the Complainant and its rights. See, for instance, Burlington Networks Inc. v. Igor Sashin, WIPO Case No. D2005-1036 ("The Complainant's trademark is well-known and distinctive. The Panel finds that the Respondent knew of the Complainant's mark when it registered the disputed domain name, and so registered it in bad faith. Such a finding is greatly supported by the nature of the Respondent's website, which copies the appearance of the Complainant's website. Such an apparently deceptive imitation is strong evidence that the Respondent well knew of the Complainant and its rights, and sought to obtain some advantage by exploiting them").

The Panel thus finds that the Respondent registered the Domain Name in full knowledge of the Complainant and thus in bad faith, seeking to unduly take advantage of the Complainant's goodwill and reputation.

Furthermore, the Respondent's use of the Domain Name to point to a website mirroring the Complainant's official website is also in bad faith as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, in accordance with paragraph 4(b)(iv) of the Policy.

The Panel also finds that the Respondent's failure to respond to the Complainant's cease and desist letter and to take part 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.

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 disputed domain name <vacances-migros.info> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: April 22, 2015