The Complainant is Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) of Zürich, Switzerland, represented by BrandIT Legal AB, Sweden.
The Respondent is Lin Wei Cai of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2015. On July 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 2015, 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.
On July 14, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of proceeding. On July 15, 2015, the Complainant confirmed its request that English be the language of proceeding by email to the Center. On July 18, 2015, the Center received an email from the Respondent in Chinese, but without any comments on the language of proceeding.
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 in Chinese and English, and the proceeding commenced on August 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2015. On August 25, 2015, the proceeding was suspended and was re-instituted on September 2, 2015 both based on the Complainant's request. The due date for Response was duly extended to September 7, 2015 by the Center. The Response was filed with the Center on September 7, 2015.
The Center appointed Sok Ling MOI as the sole panelist in this matter on September 24, 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 one of the biggest department stores in Switzerland, offering a wide range of food and non-food products. It was founded by Gottlieb Duttweiler in 1925 in Zürich.
The Complainant owns several trade mark registrations for MIGROS, both in Switzerland and at an international level, including the following:
Country
Trade Mark
Registration Number
Registration Date
Switzerland
MIGROS
P-405500
February 13, 1993
International
MIGROS
637252
February 13, 1995
International
MIGROS
397821
March 14, 1973
China
MIGROS
6762810
September 28, 2010
The Complainant also owns various registrations for domain names that include its registered trade marks, including and . The Complainant uses these domain names to connect to a website through which it informs potential customers about its products and services.
The disputed domain name was registered on April 8, 2015, long after the Complainant has registered its trade mark MIGROS in Switzerland and other countries. The disputed domain name does not resolve to any active website. 5. Parties' Contentions A. Complainant
Since its establishment in 1925, the Complainant has evolved into a community of ten regional cooperatives. Today, it has expanded its business beyond department stores, and now owns travel agencies, restaurants, golf parks as well as a bank, among others. The Complainant is one of the Fortune 500 companies.
A1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:
The disputed domain name directly incorporates the Complainant's well-known trade mark MIGROS. The disputed domain name would be perceived by Internet users as descriptive of a website where they could find information about the Complainant's products and services. The addition of the word "group" merely exacerbates the confusion. The generic Top-Level Domain ("gTLD") ".com" is to be disregarded under the confusing similarity test, as previous UDRP panels have held.
A2. The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Complainant has not found that the Respondent is commonly known by the disputed domain name. The WhoIs information identifies the Respondent as Lin Wei Cai.
The disputed domain name points to an inactive page. Although the Respondent claimed that he intended to use the disputed domain name for his new business of grain trade, the Respondent has not provided any evidence of its use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent claimed, in his response to the Complainant's cease and desist letter, that he had registered the term "migros" as the name for his intended grain trading business as the term may mean "our grain is the best" in Chinese, with "mi" meaning "rice" or "grain" and "gros" meaning "good and excellent". To the best of the Complainant's knowledge, the term "migros" does not have the meaning in Chinese as claimed by the Respondent.
A3. The disputed domain name was registered and is being used in bad faith:
The registration of the MIGROS trade marks and presence of the Complainant in the world including China long preceded the registration of the disputed domain name.
When entering the terms "migros" in the Google and Baidu search engines, the top returned results point to the Complainant and its business. The Respondent could easily have performed a similar search before registering the disputed domain name and would have quickly learnt that the trade marks are owned by the Complainant. It is clear that the Respondent's choice of the disputed domain name is to take advantage of an association with the Complainant, and is evident of bad faith.
The fact that immediately after receiving the Complainant's cease and desist letter informing him of the Complainant's trade mark rights in MIGROS, the Respondent registered another domain name, , clearly demonstrates bad faith registration.
Although the disputed domain name does not resolve to an active website, it is clear that the Respondent had intentionally adopted the Complainant's widely known marks with the purpose of preventing the Complainant from reflecting its mark in a corresponding domain name. This is an act of bad faith. B. Respondent
In his Response, the Respondent claimed that he has never heard of the Complainant or its trade mark MIGROS, and that he decided to register the disputed domain name for reasons entirely unrelated to the Complainant.
Furthermore, the Complainant has never used the term "group" in its company name. The addition of the term "group" substantially differentiates the disputed domain name from the Complainant's trade mark. There is no confusing similarity.
The Respondent is in the process of building a grain trading business group, and has chosen the term "migros" for the meaning it signify, namely "excellent grain". This is because "mi" means "rice" in Chinese while "gros" may mean "huge" in English.
The Respondent has noticed that the Complainant only registered the MIGROS trade mark in China in 2010 in respect of services in Class 39, subsequent to the registration of a similar MIGROS trade mark by another company in China in 2003 in respect of goods in Class 25. The Respondent will be using the disputed domain name in other areas which do not pose a conflict with the Complainant's business.
The Respondent has discovered that the disputed domain name was up for an online auction on December 29, 2013, but the Complainant did not take action to secure it then.
In view of all the above, it is clear that the Respondent has no mala fide intent in registering the disputed domain name, nor an intent to infringe the trade mark rights of the Complainant. The Respondent's use of the disputed domain name will not adversely affect the Complainant's business.
As such, the Respondent asked that the transfer request of the Complainant be denied. 6. Discussion and Findings 6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script;
(b) the Respondent had previously responded to the Complainant's cease and desist letter in English;
(c) the Respondent has registered several other domain names comprising Latin characters, e.g. , , , and , based on a reverse WhoIs search independently conducted by the Panel using the Respondent's email address.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and
(c) the Center informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. To require the Complaint and all supporting documents to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the MIGROS mark by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the Complainant's trade mark MIGROS in its entirety. The trade mark MIGROS is clearly identifiable and is the prominent element of the disputed domain name. The addition of the word "group" does not serve to sufficiently distinguish or differentiate the disputed domain name from the Complainant's trade mark. The addition of the generic Top-Level Domain (gTLD) ".com" does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,WIPO Case No. D2013-0974.
There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term "Migros". The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain name.
In his Response, the Respondent claimed that he has the intention to use the disputed domain name for a new grain-trading business, and that the nature of his future business does not conflict with the Complainant's business. He claimed that "mi" means "grain" in Chinese while "gros" may mean "huge" in English, and so the term was chosen to signify "excellent grain". In this regard, the Panel finds the Respondent's explanation for the choice of name to be unconvincing. More importantly, apart from mere assertions, the Respondent has not provided any evidence of its use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Panel therefore determines that the Respondent has failed to demonstrate that he has any rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark 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 owner of the trade mark or service mark from reflecting the 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 websites 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 the Respondent's websites or location or of a product or service on the Respondent's website or location.
The Panel notes that the disputed domain name does not resolve to any active website, and there is no evidence that the Respondent has attempted to sell the disputed domain name or initiated contact with the Complainant. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2.
The Complainant has a strong Internet presence and has had a business presence in China since 2005. A cursory Internet search would have disclosed the MIGROS trade mark and its use by the Complainant. Thus a presumption arises that the Respondent was aware of the Complainant's MIGROS trade mark and related domain names when he registered the disputed domain name, despite his claim otherwise.
According to evidence furnished by the Complainant, the Respondent had on April 22, 2015, immediately upon receiving the Complainant's cease and desist letter, registered a new domain name () despite being informed of the Complainant's trade mark rights in MIGROS. This, in the Panel's opinion, is clearly an act of bad faith.
The Panel also notes that the Respondent has registered several other domain names reproducing famous trade marks, e.g. , , , , and , based on a reverse WhoIs search independently conducted by the Panel using the Respondent's email address. This is evocative of a pattern of cybersquatting. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(ii) of the Policy are applicable to the present case.
As stated above, the Panel is unconvinced by the Respondent's proffered good faith explanation for his registration of the disputed domain name. The Panel determines that the Respondent's intention in registering the disputed domain name is to unfairly attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of the Respondent's website. As such, the Panel is satisfied that the Respondent has intention to use the disputed domain name for mala fide purpose and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
Taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: October 7, 2015
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