Complainant is Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) of Zürich, Switzerland, represented by SILKA Law AB, Stockholm, Sweden.
Respondent is Mevlüt Yildirim of Antalya, Turkey. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with N, Inc. (N LLC) (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 15, 2016. On December 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 19, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2017.
Respondent submitted informal communication on January 11, 2017. On January 13, 2017, Complainant requested the suspension of the proceeding. The proceeding was subsequently suspended as of January 13, 2017. Following a request from Complainant on February 6, 2017, the suspension was extended until February 24, 2017.
Respondent submitted further informal communication on February 9, 2017.
On February 20, 2017, Complainant requested the reinstitution of the proceeding, which was hence reinstituted on the same day.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on February 22, 2017. 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 states that it is "the Swiss based umbrella organization of the regional Migros Cooperatives"; that it "is known throughout Switzerland as one of the biggest department stores, offering a wide range of food, non-food products and services (wellness, travel, catering)"; that it "was founded by Gottlieb Duttweiler in 1925 in Zurich and has now evolved into a Community of ten regional Cooperatives"; and that it employs 21,762 people.
Complainant states, and provides evidence to support, that it is the owner of a number of trademark registrations for the mark MIGROS, including International Registration No. 1239151 for MIGROS for use in connection with a wide range of products including "[m]eat, fish, poultry and game" (registered December 31, 2014); and multiple registrations in Turkey that consist of or include the mark MIGROS. These registrations are referred to hereafter as the "MIGROS Trademark".
The Disputed Domain Name was created on June 24, 2016, and does not resolve to an active website. 5. Parties' Contentions A. Complainant
Complaint contends, in relevant part, as follows:
- The Disputed Domain Name is identical to the MIGROS Trademark because, inter alia, the Disputed Domain Name "directly and entirely incorporates Complainant's well-known trademark" and "the addition of the generic word "store" to "migros" does not diminish the overall likelihood of confusing similarity to the Complainant's trademark" because "[o]n the contrary, in the present case, the new gTLD exaggerates the confusing similarity between the Domain Name and the Complainant's trademark, since the Complainant is operating Migros stores."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "[t]he tendency of the Domain Name is to induce consumers into visiting the related website under the misapprehension that it is a website endorsed by Complainant" and "[r]elying on consumer confusion concerning a well-established trademark is not a route to establishing a claim for rights or legitimate interests"; "Complainant has not found that the Respondent is commonly known by the Domain Name"; "[t]here is no evidence that the Respondent has a history of using, or preparing to use, the Domain Name in connection with a bona fide offering of goods and services"; and Respondent failed to respond to Complainant's cease-and-desist letter.
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia,Complainant's registrations for the MIGROS Trademark in Turkey and its "active business presence" there "shows that it seems to be unlikely that the Respondent was not aware of the unlawful registration of the Domain Name"; "at the time of registration the Respondent received an alert that the Domain Name[] was registered with Trademark Clearinghouse"; and Respondent's passive holding of the Disputed Domain Name "does not as such prevent a finding of bad faith, but all circumstances of the case must be examined to determine whether the Respondent is acting in bad faith. In the current case, examples of what may be cumulative circumstances found to be indicative of bad faith include the Complainant having a well-known trademark predates the registration of the domain names and the Respondent hasn't bothered to reply to Complainant's letter." B. Respondent
Respondent did not reply to Complainant's contentions. However, in the communications discussed above, Respondent stated, in part: "Please, don't forget that I bought that domain name with childish feelings, didn't fill the website with any bad content and don't wanna have any domain more!" Respondent also provided a username and password for the Disputed Domain Name. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is 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 Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the MIGROS Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the MIGROS Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "migros"), as it is well established that the generic Top-Level Domain ("gTLD") (i.e., ".store") may generally be disregarded for this purpose. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("[t]he applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark").
The Disputed Domain Name contains the MIGROS Trademark (and only the MIGROS Trademark) in its entirety. Therefore, it is obvious without the need for elaboration that the Disputed Domain Name is identical to the MIGROS Trademark.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "[t]he tendency of the Domain Name is to induce consumers into visiting the related website under the misapprehension that it is a website endorsed by Complainant" and "[r]elying on consumer confusion concerning a well-established trademark is not a route to establishing a claim for rights or legitimate interests"; "Complainant has not found that the Respondent is commonly known by the Domain Name"; "[t]here is no evidence that the Respondent has a history of using, or preparing to use, the Domain Name in connection with a bona fide offering of goods and services"; and Respondent failed to respond to Complainant's cease-and-desist letter.
Under the Policy, "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". WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant'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 registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Although the Disputed Domain Name is not being used in connection with an active website, Complainant cites the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which established the test for bad faith in the event of a respondent's "passive holding" of a domain name. In that case, the panel found bad faith as the result of the following circumstances:
(i) complainant's trademark has a strong reputation and is widely known, as evidenced by its substantial use…,
(ii) respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of complainant's rights under trademark law.
Here, this Panel finds that Complainant's trademark has a strong reputation and is widely known, as evidenced by its substantial use; Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Disputed Domain Name; and taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Name by Respondent that would not be illegitimate.
Accordingly, the Panel finds that Complainant has proven the third element 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 Complainant.
Douglas M. Isenberg
Sole Panelist
Date: March 1, 2017
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