The Complainant is Kraft Foods Schweiz Holding GmbH, Switzerland, represented by Baker & McKenzie, Russian Federation.
The Respondent is Nikita Serov, serovagency, Russian Federation.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2021. On July 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2021 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 8, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2021.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 26, 2021. 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 BackgroundThe complainant manufactures and markets snacks, confectionery, and quick meal products.
The Complainant is the owner of MILKA trademark since 1960 and it has its trademark registered in various jurisdictions all over the word, including in Russian Federation, among others:
- MILKA, Russian Trademark Registration No. 674032, registered on December 18,1996; and
- MILKA (Design) Trademark Registration No. 631023 registered on September 22, 2017.
Under these trademarks, MILKA chocolate, cookies and cakes are marketed by the complainant all over the world.
The Respondent registered the following Disputed Domain Names:
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The Complainant states that he noticed that there was some scam running in Russian Federation where the MILKA trademark was being used to entice consumers to click on links, e.g. in the Facebook accounts. For instance, one of the Facebook profiles contained a post which offered to “follow the link” it shared to complete a survey in order to get Milka products for free, such link included the Disputed Domain Name
At the present both Disputed Domain Names contain databases. The databases can only be seen to the registered users and their content is not clear.
5. Parties’ Contentions A. ComplainantThe Complainants contentions can be summarized as follows:
Identical or confusingly similar
The Complainant contends that the Disputed Domain Names are confusingly similar to the Complainant’s MILKA trademark. The addition of the term “my” or “box” does not affect the overall impression of the dominant part of the Disputed Domain Name
Rights or legitimate interests
The Complainant stated that it has not granted permission to use its MILKA trademark to the Respondent.
Registration and use in bad faith
The Complainant alleges that the Respondent used the Disputed Domain Name in connection with offering participation in a survey to get MILKA products, with the intention of taking unfair advantage of the complainant’s MILKA trademark. Since the products were not provided to the participants there were negative comments under the Internet posts stating that the competition was not fair. In this regard, the Complainant states that Internet users might wrongly believe that the respective posts were published under cooperation with the Complainant.
Thus, the Complainant states that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites and accounts in the social network by creating a likelihood of confusion with the complainant’s Trademark as to the source, sponsorship, or affiliation of its posts or activities.
Finally, the Complainant stated that it took down the fraudulent posts in the social network. Currently the Disputed Domain Names contains some databases.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements, which the Complainant must satisfy with respect to the Disputed Domain Names in this case:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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.
A. Identical or Confusingly SimilarBased on the evidence submitted, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s MILKA trademark. The Disputed Domain Names wholly incorporates the Complainant’s trademark.
The addition of the hyphen and the terms “box” or “my” does not suffice to avoid the confusing similarity between the Disputed Domain Name and the MILKA trademark.
Moreover, the addition of the TLD “.club” does not change this finding, since the TLD is generally disregarded in such an assessment of confusingly similarity.
Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) Before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the MILKA trademark in the Disputed Domain Names. The Complainant has prior rights over the MILKA trademark, which precede the Respondent’s registration of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Names. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contention. In any case, noting the composition of the Disputed Domain Names, and their use in the manner described above, the Panel finds that such use cannot give rise to rights or legitimate interests in the Disputed Domain Names.
As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 6(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The Complainant and its trademarks were well-known by the date of registration of the Disputed Domain Names. Thus, it is highly unlikely that the Respondent was unaware of the Complainant and its trademarks when it registered the Disputed Domain Names in July 2020.
In light of this, the Respondent had evidently knowledge of the Complainant’s MILKA trademark when it registered the Disputed Domain Name.
The circumstances in the case before the Panel indicates that the Respondent was aware of the Complainant’s MILKA trademark when registering the Disputed Domain Names and it has intentionally created likelihood confusion with the Complainant’s trademark in order to attract Internet users for its own commercial gain.
Paragraph 4(b)(iv) of the Policy states: “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.”
In the case at hand, the Respondent’s registration of the Disputed Domain Names that are confusingly similar to the Complainant’s MILKA trademark, the use of the Disputed Domain Names for fraudulent surveys in connection with the MILKA trademark, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Names, and its failure to respond to the Complaint, affirms a finding of bad faith.
Due to this conduct, it is obvious that the Respondent intentionally created a likelihood confusion with the Complainant’s trademark and the website to which the Disputed Domain Names resolves in order to attract Internets users for its own commercial gain, as set out in paragraph 4(b)(iv) of the Policy.
Furthermore, the websites resolving from the Disputed Domain Names includes a registration page in order to download a database, which may be used for phishing purposes. Section 3.1.4 of the WIPO Overview 3.0 states that use of a domain name for per se illegitimate activity, such as phishing, is manifestly considered evidence of bad faith.
Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Names.
7. DecisionFor 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
Pablo A. Palazzi
Sole Panelist
Date: September 9, 2021.