The Complainant is Migros-Genossenschafts-Bund of Zürich, Switzerland, represented by BrandIT Legal AB, Sweden.
The Respondent is Kazuhito Imai, Imai Kazuhito of Chuo-ku Sapporo-shi, Hokkaido, Japan; Whois Privacy Protection Service by of Shibuya-ku, Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name and are registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2015. On June 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 2015 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 amendment to the Complaint on June 22, 2015.
On June 19, 2015, the Center transmitted an email to the Parties in English and Japanese regarding the language of proceeding. On June 22, 2015, the Complainant submitted its request that English be the language of proceeding. The Respondent did not submit its comments within the specified due date.
The Center verified that the Complaint together with the amendment to 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 in English and Japanese, and the proceeding commenced on June 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2015. On June 30, 2015 and July 2, 2015, the Center received two emails from the Respondent in Japanese stating that he was no long responsible for the domain names. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the proceeding of panel appointment process on July 21, 2015.
The Center appointed Douglas Clark as the sole panelist in this matter on July 28, 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 Swiss retailer. The Complainant is the registered proprietor of the trademark MIGROS in various countries in numerous classes.
The disputed domain names and were registered on May 21, 2013. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant argues that the disputed domain names and are made entirely up of the registered trademark MIGROS and the generic descriptions “industrie/industries” to which generic Top-Level Domain (“gTLD”) “.com” has been added. It is therefore confusingly similar to the Complainant’s registered trademark MIGROS.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for MIGROS.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain names the Respondent knew of the Complainant’s rights in the MIGROS trademark and registered the disputed domain names to attract business to its website. As such, the Complainant alleged registration and use of the disputed domain names was in bad faith. B. Respondent
The Respondent did not respond to the Complainant’s contentions other than to state in an email that it no longer managed the disputed domain names and that they had expired. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement is in Japanese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding 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 administrative proceeding.”
The Complainant requested the language of the proceeding to be English on grounds that the websites under the disputed domain names resolved to parking pages that were in English. The Complainant stated that the Respondent could be allowed to respond in Japanese.
The Respondent did not respond to this request. The Respondent did in a later email state that it would like communications to be in Japanese. However, the Respondent also stated that he was no longer responsible for the disputed domain names.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel. The fact that the websites under the disputed domain names resolve to parking pages in English is a relevant factor. The Respondent is seeking to attract people who read English.
The Respondent did not respond to the Center’s preliminary determination. This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
The fact that the Respondent stated it was no longer responsible for the disputed domain names is also a relevant factor. This indicates the Respondent has no interest in defending these proceedings.
Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only substantive pleading before the Panel is in English, the Panel will render its decision in English. 6.2. Substantive Issues A. Identical or Confusingly Similar
The disputed domain names and are made up of the registered trademark MIGROS, the generic terms industrie/industries and the gTLD “.com”. The disputed domain names are confusingly similar to the registered trademark MIGROS. The first part of the paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not formally responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The second part of the paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain names and were registered in bad faith and are being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The website under the disputed domain names are clearly being used to direct visitors to a parking page which generates click through revenue for the Respondent.
The third part of the paragraph 4(a) of the Policy is therefore satisfied. 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.
Douglas Clark
Sole Panelist
Date: August 14, 2015
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