WIPO Arbitration and Mediation Center EXPERT DECISION Migros-Genossenschafts-Bund v. ubgm Case No. DCH2008-0016 1. The Parties
The Claimant is Migros-Genossenschafts-Bund, Zürich, Switzerland.
The Respondent is ubgm, Nguyen Huong Quynh, Hanoi, Viet Nam. 2. Domain Name
The dispute concerns the domain name . 3. Procedural History
A Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2008, identifying Nguyen Huong Quynh as Respondent. On the same day, the Center transmitted by email to SWITCH a request for verification in connection with the domain name at issue. On September 5, 2008, SWITCH transmitted by email to the Center a verification response, identifying both ubgm and Nguyen Huong Quynh as Respondents and providing the relevant contact details. On September 10 and 16, 2008, the Center invited SWITCH to clarify who is the registrant. On September 16, 2008, SWITCH confirmed that ubgm was the name of the company while Nguyen Huong Quynh was the individual acting on behalf of that company. In light of these explanations, the Center invited on September 17, 2008 the Claimant to amend its Request. The Claimant filed an amendment to its Request on the same day. The Center verified that the Request together with its amendment satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for .ch and .li domain names (the Rules of Procedure), adopted by SWITCH, the .ch and .li registry, on March 1, 2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the proceedings commenced on September 18, 2008. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was October 8, 2008.
The Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with Paragraph 15(d) of the Rules of Procedure.
On October 9, 2008, the Center notified the Claimant accordingly, who on October 10, 2008, made an application for the continuation of the proceedings in accordance with paragraph 19 of the Rules of procedure and paid the required fees.
On October 21, 2008, the Center appointed Philippe Gilliéron as Expert in this case. The Expert finds that it was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties. 4. Factual Background
The Claimant is a supermarket chain in Switzerland whose turnover amounted to roughly 20 billion Swiss francs in 2006. It has almost 2 million members and close to 80,000 employees.
The Claimant owns several trademarks consisting or containing the word “Migros”, both in Switzerland and at the international level. It is in particular the right holder of the trademark MIGROS, which was registered both in Switzerland (n° 415060) and at the international level (n° 637252) in classes 35-42, including in Vietnam. MIGROS was also registered as a community trademark (n° 000744912) in all classes of the Nice classification.
The Claimant is active in several branches of activities, and runs in particular a bank under the name “Migrobank”. It is in particular the right holder of the following trademarks in relation to its banking activities.
- MIGROSBANK, n° P-414500, registered on January 12, 1995 in class 36 with a usage priority date of January 20, 1958.
- MIGROSBANK, internationally registered (n° 631420) in Austria, Germany and Liechtenstein in the same class with the same priority date.
- BANQUE MIGROS, n° P-414502, registered on January 12, 1995 in class 36 with a usage priority date of January 20, 1958;
- BANQUE MIGROS, internationally registered (n° 631422) in Benelux and France in the same class with the same priority date;
- BANCAMIGROS, n° P-414501, registered on January 12, 1995 in class 36 with a usage priority date of January 20, 1958;
- BANCAMIGROS, internationally registered (n° 631421) in Italy in the same class with the same priority date
The Claimant owns several domain names in relation to its banking activities, such as , , , , as well as .
The Respondent owns the domain name .
On May 13, 2008, the Claimant sent to the Respondent a cease and desist letter, inviting the Respondent to transfer the disputed domain name in its favor. The Respondent did not reply, and did not participate in this case. 5. Parties' Contentions A. Claimant
The Claimant contends that “Migros” is a famous brand in Switzerland, and that the registration of infringes its trademarks' rights as well as the Swiss Unfair Competition Act.
The domain name at issue is almost identical and obviously similar to the service mark MIGROSBANK, and entirely contains the trademark MIGROS. The domain name chosen by the Respondent clearly falls under the category of typo squatting, as the mere difference between MIGROSBANK and consists of the omission of the letter “k”. The Respondent offers services on the website “www.” that are similar, if not identical, to the ones provided by the Claimant. Thus, the likelihood of confusion is obvious, and the Respondent's behavior infringes upon the Claimant's rights, both under the Swiss Trademark Act and the Unfair Competition Act. B. Respondent
The Respondent did not reply to the Claimant's contentions. 6. Discussion and Findings
Paragraph 24(a) of the Rules of Procedure instructs the Expert to “[…] decide on the request on the basis of the pleadings of both parties and the submitted documents in conformity with these Rules of procedure.”
In view of the Respondent's failure to submit a Response, the Expert shall decide this administrative proceeding on the basis of the Request, paragraph 23(a) of the Rules of Procedure.
According to paragraph 24(c) of the Rules of Procedure, “[T]he Expert shall grant the request if the registration or use of the domain name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the law of Switzerland or Liechtenstein.” Paragraph 24(d) of the Rules of Procedure further adds that “[I]n particular, a clear infringement of an intellectual property right exists when
i. both the existence and the infringement of the claimed Right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and
ii. the Respondent has not conclusively pleaded and proven any relevant grounds for defence; and
iii. the infringement of the right justifies the transfer or deletion of the domain name, depending on the remedy requested in the request.” A. The Claimant has a right in a distinctive sign
Considering the evidence submitted to the Expert, which shows the numerous trademarks consisting or containing the words “Migros” and “Migrosbank” respectively held by the Claimant, the Expert holds that the Claimant established its exclusive right in its distinctive sign in Switzerland. B. The registration or use of the Domain Name at issue constitutes a clear infringement of the Claimant's right
The Panel considers that the Respondent's registration of infringes several of the Claimant's rights, i.e. both the Swiss Trademark Act (a) as well as the Swiss Unfair Competition Act (b):
(a) To prevail in a trademark claim, the Claimant must first demonstrate that the Respondent's behavior relates to the usage of a distinctive sign. The Swiss Federal Supreme Court has held that domain names are comparable to personal names, business names and trademarks and therefore may be regarded as so-called distinctive signs (decision of the Swiss Federal Supreme Court of May 2, 2000, , BGE 126 III 239, 244). If a domain name collides with a protected trademark, the owner of the trademark may, under certain circumstances, be entitled to prohibit the use of the domain name by others (BGE 126 III 244-245).
According to Article 13(2) of the Swiss Trademark Act, the owner of a trademark may prohibit others from using a sign that is excluded from protection under Article 3(1). Such is the case according to Article 3(1) when the colliding sign is identical or confusingly similar to an earlier trademark and intended for identical or similar goods or services.
Such confusion is however not even necessary when the earlier trademark amounts to a well-known trademark in compliance with Article 15 of the Swiss Trademark Act. According to this provision, “[T]he owner of a trademark of wide reputation may prohibit others from using his trademark for any type of goods or services if such use would jeopardize the distinctiveness of the trademark or would exploit or damage its reputation.”
In the present case, the Claimant has satisfactorily demonstrated that its MIGROS trademark has to be considered as a well-known trademark in Switzerland. While the wikipedia extract submitted to the Expert is unpersuasive, the surveys conducted in a more rigorous way by Advico Young & Rubicam as well as the Reader's Digest are sufficient to demonstrate the fame gained in Switzerland by the trademark MIGROS, one that in any case amounts to a notorious fact in Switzerland. As a consequence, the Claimant benefits from the wide protection granted to famous brands by Article 15 of the Swiss Trademark Act, one that is not limited to the likelihood confusion, but which also extends to the dilution of the brand.
Such is undoubtedly the case here. A simple visual test reveals that the domain name is confusingly similar to the trademark MIGROSBANK held by the Claimant. By registering a domain name which is identical to the Claimant's trademark but for the omission of the final “k”, the Respondent clearly tries to unfairly exploit the recognition and reputation of the Claimant's mark. The registration and the Respondent's conduct in this proceeding show all attributes of cyber- and typosquatting, a behavior that the Respondent is familiar with as proved by several cases in which the Respondent had registered Swiss brands containing a typo mistake (Raiffeisen Schweiz Genossenschaft v. Nguyen Huong Quynh,WIPO Case No. DCH2007-0023, ; C AG v. Nguyen Huong Quynh,WIPO Case No. DCH2008-0003, ). Such a behavior obviously infringed both Article 13 and Article 15 of the Swiss Trademark Act.
While already apparently infringing upon the Claimant's trademark rights (as described above), the Respondent's behavior also amounts to an unfair competition act.
(b) The Swiss Supreme Court also held that domain names may be regarded as distinctive signs under Swiss competition law (BGE 126 III 245). Article 3(1)(d) of the Swiss Unfair Competition Act prohibits measures that are likely to cause confusion with products, works, services or the business of others. More generally, Article 2 of the Swiss Unfair Competition Act prohibits any type of behavior which leads to a distortion of competition on the Swiss market.
By registering the domain name at issue with a typo mistake, the Respondent appears to be trying to take advantage of the Claimant's well-known brand. This conduct violates the Claimant's right in its distinctive sign both under Article 3(1)(d) and Article 2 of the Swiss Unfair Competition Act, as consistently held by prior Experts (YouTube, LLC v. Matthias Moench,WIPO Case No. DCH2007-0010, et al.; Raiffeisen Schweiz Genossenschaft v. Nguyen Huong Quynh,WIPO Case No. DCH2007-0023, ; and TDC Switzerland AG v. Algis Skara,WIPO Case No. DCH2006-0028, ; see also Pedrazzini/Pedrazzini, Unlauterer Wettbewerb, 2. Aufl. 2002, N 4.19).
When one adds that the Respondent's website merely refers to a portal website containing several links to direct competitors of the Claimant in the banking sector, the bad faith becomes obvious. The Expert further infers that the Respondent is benefiting from this confusion by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal. In circumstances where a respondent does not disclose the exact manner in the domain name parking service web page has been set up and does not disclose exactly what keywords it has chosen, the Expert considers that it is entitled to infer that the respondent had some influence upon the sponsored link selection process. Such a behavior obviously falls under Article 2 of the Swiss Unfair Competition Act, and thus infringed upon the Claimant's rights.
Considering the fact that the Respondent did not respond to the Request or respond otherwise, one cannot find any relevant ground for defence that would justify the registration of . Based upon the Request and the circumstances previously described, the Expert is convinced that the Claimant's rights have been infringed, and that these infringements justify the transfer of the domain name in the Claimant's favor. 7. Expert Decision
For the above reasons, in accordance with Paragraph 24 of the Rules of Procedure, the Expert orders that the domain name be transferred to the Claimant.
Philippe Gilliéron
Expert
Date: November 4, 2008
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