Complainant is Media-Saturn Holding GmbH of Ingolstadt, Germany, represented by Boehmert & Boehmert, Germany.
Respondents are Pietje Klaas of Rotterdam, the Netherlands and Bas de Graaf of Heerlen, the Netherlands. 2. The Domain Names and Registrars
The disputed domain names and are registered with Tucows Inc. (the “first Registrar”).
The disputed domain name is registered with NetEarth One Inc. d/b/a NetEarth (the “second Registar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2015. On May 13, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On the same day, the first Registrar transmitted by email to the Center its verification response confirming that Respondent Bas de Graaf is listed as the registrant and providing the contact details. On May 18, 2015, the second Registrar transmitted by email to the Center its verification response confirming that Respondent Pietje Klaas is listed as the registrant and providing the contact details.
On May 15, 2015, Complainant submitted an Amended Complaint correcting its request for the remedy sought.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 17, 2015.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on June 17, 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
Complainant is Media-Saturn Holding GmbH of Ingolstadt, Germany and represents the consumer electronics stores “Media Markt” and “Saturn”, considered as two of the largest and best-known electronics stores in Europe, especially in Germany.
Complainant is the owner of the following MEDIA MARKT and SATURN trademarks:
- German Trademark MEDIA MARKT Reg. No. 30555757, registered on September 28, 2005.
- Community Trademark MEDIA MARKT Reg. No. 009699406, registered on July 29, 2011.
- International figurative MEDIA MARKT trademark Reg. No. 655158, registered on December 7, 1995.
- Community Trademark SATURN Reg. No. 005147401, registered on January 9, 2008.
These trademarks are registered for goods and services, among others, in classes 7, 9, 11 and 35 designating in particular electrical appliances and advertisement.
Respondents registered the following Disputed Domain Names:
- on November 14, 2014;
- on December 28, 2014;
- on January 3, 2015.
The Disputed Domain Names resolved to websites offering various electronical appliances for sale. These webshops reproduced Complainant’s MEDIA MARKT trademark in the exact same manner and indicated an existing Media Markt store located in Amsterdam, the Netherlands.
After discovering the Disputed Domain Names and the related webshops, the websites at the Disputed Domain Names were shut down. On February 26, 2015, the Disputed Domain Name was put again online for a short period of time.
Complainant has filed a Complaint against the two Disputed Domain Names’ registrants identified on the WhoIs database. However, Complainant alleges that these contact information are false and that the Disputed Domain Names have actually been registered and used by the same person (or at least common control is being exercised over the Disputed Domain Names), against whom the Complaint has subsequently been jointly filed. 5. Parties’ Contentions A. Complainant
Complainant requests that the Disputed Domain Names be transferred to its benefit as all the three conditions of paragraph 4(a) of the Policy are fulfilled.
Indeed, Complainant contends that Disputed Domain Names are confusingly similar to its well-known trademarks MEDIA MARKT and SATURN. The addition of the generic Top-Level Domain (“gTLD”) “.com” and of the generic terms “webshop” and “2015” to the Disputed Domain Names does not prevent any likelihood of confusion.
Complainant also argues that Respondent has no rights or legitimate interests in the Disputed Domain Names and should have known that Complainant owned rights on the MEDIA MARKT and SATURN trademarks.
Finally, Complainant asserts that Respondent registered and is using the Disputed Domain Names in bad faith as the websites to which they resolved are fake webshops reproducing Complainant’s trademarks and pretending to offer similar goods at unbeatable prices. These manoeuvres aim at creating a likelihood of confusion in the mind of the public and thus at taking advantage of Complainant’s goodwill. B. Respondents
Respondents did not reply to Complainant’s contentions and are therefore in default. 6. Discussion and Findings
In order to obtain the transfer of the Disputed Domain Names, Complainant should, according to paragraph 4(a) of the Policy, prove all the following three elements:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Firstly, the Panel concedes that the Complaint be examined jointly regarding the Disputed Domain Names as their registrants appear to be the same person, or at least common control is being exercised over the Disputed Domain Names even if the WhoIs database does not provide such information. Indeed, prior UDRP panels have held in similar cases that a joint complaint can be filed (see Speedo Holdings BV v. Programmer,WIPO Case No. D2010-0281). Therefore, the Panel will refer to all Respondents jointly as “Respondent”.
Moreover, paragraph 14 of the Rules addresses the principles to be used in case of default:
“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Consequently, failure on the part of Respondent to file a response to the Complaint permits an inference that Complainant’s reasonable allegations are true. It may also permit the Panel to infer that Respondent doesn’t deny the facts that Complainant asserts (see Harrods Limited v. Harrod’s Closet,WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
Complainant contends that the Disputed Domain Names are confusingly similar to its MEDIA MARKT and SATURN trademarks pursuant to paragraph 4(a)(i) of the Policy.
Evidence has been shown to the Panel that Complainant is the owner of several national, international and European Community trademarks on the signs MEDIA MARKT and SATURN since 1985.
The Panel acknowledges that the Disputed Domain Names reproduce entirely the MEDIA MARKT trademarks, merely adding the generic terms “webshop” and “2015”, which are not prima facie distinctive as to distinguish the Disputed Domain Names from Complainant’s trademarks (see Simyo GmbH v. Domain Privacy Service FBO Registrant / Ramazan Kayan,WIPO Case No. D2014-2227).
Indeed, the use of the term “webshop” in the Disputed Domain Name increases the likelihood of confusion as it may lead the consumers to believe that Respondent’s website is specifically authorized to provide online purchase of goods under Complainant’s trademark. Likewise, the association of the term “2015” with the term “mediamarkt” does not preclude the likelihood of confusion and the consumers may believe the Disputed Domain Name is endorsed by Complainant.
In addition, the Disputed Domain Name , reproduces entirely not only the MEDIA MARKT trademark, but also the SATURN trademark. The combination of the two trademarks in the Disputed Domain Name does not prevent any likelihood of confusion and on the contrary is likely to increase the risk of confusion as to the source or origin of the goods or services since the two trademarks are well-known for being held by the same company.
Further, the gTLD “.com” is irrelevant in to the assessment of the similarity between the Disputed Domain Names and Complainant’s trademarks (see A & F Trademark, Inc., Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc.,WIPO Case No. D2003-0172). Indeed, the gTLD “.com” holds no legal significance since the use of a gTLD is technically required to operate the Disputed Domain Names and it does not serve to identify the source of the goods or services provided by the registrant of the Disputed Domain Names (see Statoil ASA v. Martins Ogemdi,WIPO Case No. D2015-0001).
Therefore, in view of all the foregoing elements, the Panel finds that the Disputed Domain Names are confusingly similar to the MEDIA MARKT and SATURN trademarks in which Complainant has rights pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy.
Even though Respondent has defaulted, it is still Complainant’s burden to prove that Respondent lacks rights or legitimate interests in the Disputed Domain Names (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047).
However, because the nature of a registrant’s rights or legitimate interests in the domain name, if any, lies most directly within the registrant’s own knowledge, the consensus view is that this burden is a light one for Complainant (see Education Testing Service v. TOEFL,WIPOCase No. D2000-0044).
Complainant needs only to make a prima facie case on this element, at which point the burden of production shifts to Respondent to present evidence that he has some rights or legitimate interests in the Disputed Domain Names (see Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252).
Complainant asserts that Respondent has never been granted authorization to register or use the Disputed Domain Names or to use Complainant’s trademarks in any way.
Respondent is not commonly known by the Disputed Domain Names unlike Complainant who has acquired renown notably through its MEDIA MARKT and SATURN trademarks all over Europe. Respondent should have known about Complainant’s trademarks with regards to its notoriety and especially since the said trademarks have been registered and used long before the Disputed Domain Names’ registration.
Therefore, circumstances under paragraph 4(c)(ii) of the Policy are not met by Respondent in demonstrating its rights or legitimate interests in the Disputed Domain Names.
Further, Complainant has demonstrated to the Panel that circumstances under paragraph 4(c)(i) of the Policy were not met by Respondent either as its use of the Disputed Domain Names, namely resolving to websites offering online purchase of electronic goods under Complainant’s trademarks and implying a connection to an existing Media Markt store in Amsterdam (the Netherlands), does not correspond to a bona fide offering of goods or services.
On the contrary, this kind of behavior amounts to an illegitimate commercial or unfair use of the Disputed Domain Names with an intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy.
Therefore, on the basis of the aforementioned elements, the Panel finds that Respondent lacks rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant finally contends that Respondent has registered and is using the Disputed Domain Names in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Complainant alleges that the Disputed Domain Names resolved to websites offering electronic devices, namely mobile phones, similar to those offered for sale in Complainant’s stores, and implying a connection with an existing Media Markt store in Amsterdam (the Netherlands). Moreover, these goods were offered at abnormally low prices which may thus disrupt the business of Complainant pursuant to paragraph 4(b)(iii) of the Policy.
Therefore, Complainant has brought enough evidence to the Panel showing that Respondent is using the Disputed Domain Names with the intent to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites or of a product or service on its websites pursuant to paragraph 4(b)(iv) of the Policy (see Ebay Inc. v. Wangming,WIPO Case No. D2006-1107).
The fact that Respondent most surely registered the Disputed Domain Names under a fake identity compounds the evidence of bad faith at the time of registration and in the use of the Disputed Domain Names (see TPI Holdings, Inc. v. Elaine Noe,WIPO Case No. D2009-0568).
Further, foregoing evidence has shown great notoriety of Complainant’s business and of the MEDIA MARKT and SATURN trademarks until this day and especially in Europe, and thus Respondent should have known about Complainant’s trademarks at the time of registering the Disputed Domain Names, especially since the use of said trademarks was far prior to such registration (see Pfizer Inc. v. NA,WIPO Case No. D2005-0072). Former UDRP panels have held that the mere registration of a well-known trademark as a domain name was a clear indication of bad faith (see Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942.
Therefore, considering the aforementioned elements, the Panel finds that the Disputed Domain Names have been registered and used in bad faith pursuant to 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 Names , , and be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Date: June 25, 2015
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