The Complainant is Media-Saturn Holding GmbH of Ingolstadt, Germany, represented by Boehmert & Boehmert, Germany.
The Respondent is H of Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
A German version of the Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2010. On August 5, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 5, 2010, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center of August 13, 2010 that the language of the registration agreement and therefore also the language of the proceedings was English, the Complainant filed an English version of the Complaint on August 17, 2010. The Complainant maintained its request that the language of the proceedings should be German. The Center advised in its email of August 23, 2010 that it would be in the discretion of the Panel to determine the language of the proceedings.
The Center verified that the Complaint (German and English versions) 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 August 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2010.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on September 24, 2010. 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 was founded in 1990 after the merger of Germany's largest consumer electronics stores "Media Markt" and "Saturn". The Complainant has a turnover of approximately EUR 20 billion, 800 stores around Europe, and 300 million customers per year.
The Complainant distributes its products through the sales brands Saturn and Media Markt, both in on-site stores and online (e.g. “”/”.nl”/”.es”/”.at”/”.ch”/”.it”/”.hu”/”.ru”/”.pl”). The Complainant owns, among many other European, foreign and international marks, the German word mark DE30555757 (MEDIA MARKT), the German word mark DE30453643 (MEDIA ONLINE) and the German figurative mark DE30676061 (MEDIA MARKT). The first applications for these marks were filed in the year 2004.
The disputed domain name was registered on April 12, 2010. Under the heading “MOM…alles um das Thema Media [‘everything on the topic media’] M”, the Respondent seems to be operating an online shop for consumer electronics, imitating to a certain extent the color combinations used for the Complainant’s marketing activities. The Complainant received several letters and emails by Internet users advising the Complainant about seemingly fraudulent activities under the disputed domain name (Annex 7 to the Complaint). 5. Parties’ Contentions A. Complainant
The Respondent alias MOM Media Online Markt registered and is using the domain name and website for fraudulent purposes only. The Respondent seems to be offering and selling electrical appliances at prices far below market value on its website. The Respondent only accepts payment in advance for one reason: once the deceived customer has paid the advance to the Respondent, he or she will receive neither the purchased goods nor any refund or even notice from the Respondent. The name and address in the website's imprint are not correct. Investigations revealed that at the indicated address in Görlitz, Germany, only a car dealer is located.
Obviously, the Respondent attempts to exploit the reputation and profile of the Complainant's MEDIA MARKT trademark and to "fish" customers in order to find victims for its fraudulent activities. The Respondent even imitates the Complainant's famous and long-standing color combinations for its website.
The high degree of similarity between the disputed domain name and the word marks MEDIA MARKT and MEDIA ONLINE causes a likelihood of confusion on behalf of Internet users which are likely to be deceived about the true origin and source of the website.
The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Complainant’s trademarks or any similar marks. The Complainant has prior rights in its trademarks which precede the Respondent’s registration of the disputed domain name by many years. There is therefore a likely prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is on the Respondent to produce evidence to rebut this presumption.
When registering the disputed domain name, the Respondent was certainly well aware of the Media Markt retail business of the Complainant. Considering the dominant market position and reputation of the Complainant in this field, the Respondent obviously chose the disputed domain name for the only purpose to deceive customers about the source of its website or at least to create a proximity to the retail business of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings
According to paragraph 11 of the Rules, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the proceedings.
The language of the registration agreement in these proceedings is English. Since the Complainant has submitted a second version of the Complaint in English (besides the original German version) and the Respondent has not filed a Response, there appears to be no compelling reason to conduct these proceedings in German, as the Complainant continues to request. The Panel is unable to see how the Complainant could be burdened by English language proceedings, all the more as the Complainant’s representative has submitted an English version of the Complaint in good quality. Considering the circumstances of this case, therefore, the language of the proceedings shall be English. B. Identical or Confusingly Similar
The Complainant owns, inter alia, the German trademarks MEDIA MARKT and MEDIA ONLINE. The disputed domain name is a combination of these trademarks and thereby confusingly similar to the Complainant’s trademarks. Furthermore, it is well established under UDRP proceedings that the addition of a generic word (“online”) to a well-known mark (such as MEDIA MARKT in this case) does not prevent a finding of confusing similarity.
The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Under the circumstances of this case, there are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.
To the contrary, the Complainant has alleged that the Respondent is using the disputed domain name to lure Internet users into its fake online shop for fraudulent purposes. This allegation is corroborated by letters sent to the Complainant by Internet users, informing about possible fraudulent activities via the respective website.
Having made a prima facie case of “illegitimate interests” on the part of the Respondent which remains unrebutted, the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The alleged fraudulent activities of the Respondent (as described above) are also a clear indication of bad faith registration and use. Such activities fall squarely within the terms of paragraph 4(b)(iv) of the Policy.
It may also be concluded that the Respondent knew of the existence of the Complainant’s trademarks and their significance in Germany (where the Respondent appears to be domiciled in reality) when the disputed domain name was registered.
Under the circumstances, the Panel finds that the Respondent’s conduct constitutes bad faith registration and use, thus fulfilling paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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 be transferred to the Complainant.
Tobias Zuberbühler
Sole Panelist
Dated: October 6, 2010
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