The Complainant is Media-Saturn Holding GmbH of Ingolstadt, Germany, represented by Boehmert & Boehmert, Germany.
The Respondent is Name Redacted 2. The Domain Name and Registrar
The disputed domain name ("Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 15, 2016. On March 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 16, 2016, 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 March 16, 2016 the Complainant submitted an amended Complaint.
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 March 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2016.
On April 11, 2016, the Complainant forwarded a letter it had received from the "Respondent" on April 8, 2016. .
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on April 11, 2016. 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 following facts are undisputed.
The Complainant was founded in 1990 by the merger of Germany's largest, at that time co-existing, consumer electronics chains "Media Markt" and "Saturn". The Complainant has a turnover of about EUR 21 billion, 65,000 employees and around 1,000 stores in 15 countries around Europe and Asia. As a result it is Europe's largest consumer electronics retailer, with stores in Germany, Austria, Italy, Poland, Spain, Hungary, the Netherlands, Belgium, Luxembourg, Switzerland, Greece, Sweden, Russia, Portugal and Turkey.
The Complainant is the owner of a large portfolio of various trademark registrations comprising the element "MEDIA MARKT", including figurative marks, with validity in several countries and territories worldwide, registered for various goods and services ("Trademark") from December 7, 1995.
The Complainant is also the owner of a large portfolio of various domain names incorporating the Trademark in it's entirely, e.g. , , , , , , and .
The Domain Name was registered on February 6, 2016. 5. Parties' Contentions A. Complainant
Insofar as relevant, the Complainant contends the following.
The high degree of similarity between the Domain Name and the Trademark causes a likelihood of confusion on behalf of Internet users which are likely to be deceived about the true origin and source of the website.
It is also well-established that the mere inclusion of a generic term, such as "shop" in the Domain Name is not sufficient to avoid the finding of a likelihood of confusion. The Domain Name incorporates the Trademark in the Domain Name "Mediamarket", by simply translating the German term "Markt" to the English term "Market". The term "market" not only corresponds with the term "markt" in its meaning but is also very similar from a phonetical and visual perspective.
In particular, customers who were confronted with the online offer of the Respondent through a link e.g. provided to them with a phishing mail, would likely expect the Complainant to be behind the – clearly fraudulent – offer. The risk of confusion between the Trademark and the Domain Name was ultimately increased by using an almost identical copy of the Complainant's original online store when accessing the Respondent's website from an Italian IP address.
The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Domain Name or to use the Trademark or a similar mark. The Complainant has prior rights in the Trademark which precede the Respondent's registration of the Domain Name by many years. There is a prima facie case that the Respondent has no rights or legitimate interest in the Domain Name, and the burden is therefore on the Respondent to produce evidence to rebut this presumption.
It is evident that the Respondent registered and used the Domain Name primarily for the purpose of attracting for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's well-known Trademark as to the source or affiliation of the Respondent's website.
Since the Respondent seemingly offered electronic devices, namely mobile phones, falsely imitating the Complainant's online stores and using the Complainant's corporate design an figurative Trademark there is no doubt that the Respondent was certainly well aware of the retail business of the Complainant when registering the Domain Name.
Considering the dominant market position and reputation of the Complainant in this field, the Respondent obviously chose the Domain Name for the very only purpose to deceive customers about the source of its website or at least to create a proximity to the retail business of the Complainant.
It is further most likely that the registrant indicated in the WHOIS information is not the real registrant of the Domain Name. According to a significant number of UDRP panel decisions the use of a false identity for registering a domain name in itself might be an important indicator to establish registration and use in bad faith element. B. Respondent
On April 11, 2016, the Complainant forwarded a letter received by the "Respondent" on April 8, 2016 in response to the Complaint.
In that letter the "Respondent" stated that its company name and address have been used without permission by a third party to fraudulently obtain registration of the Domain Name. Furthermore, the Respondent stated that it does not view itself as the appropriate "Respondent" in this matter. 6. Discussion and Findings
6.1. Identity Theft
Both the Complainant and the "Respondent" argue that the latter (a reputable company active in similar areas of commerce as the Complainant) is not the real owner of the Domain Name, but that someone had used its name to register it. The Panel has reviewed the evidence and, taking into account the "Respondent's" reputable identity, is of the opinion that, on the balance of probabilities, the entity is not the real registrant of the Domain Name but its name and address have been used falsely in a way that constitutes identity theft. Hence, the Panel has requested that the entity's name be redacted from the record of this proceeding and asks the Registrar to execute the transfer of the Domain Name in accordance with the attached Annex to this Decision, including the entity's name against whom the Complaint was filed. For this purpose, the Panel has authorized the Center to transmit said Annex to the Registrar and the parties. However, the Panel directs the Center pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules not to publish the Annex to the Decision based on exceptional circumstances. References to the "Respondent" hereafter refer not to the named entity, but to the actual registrant of the Domain Name.
6.2. Substantial issues
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(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 Similar
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to that trademark. As indicated above, the Complainant owns numerous trademark registrations worldwide.
The Domain Name incorporates the Trademark as "Mediamarket", by simply translating the German term "Markt" to the English term "Market". Therefore, the Domain name incorporates the Trademark in its entirety; the only difference is the mere adjunction of the letter "e" and adds the descriptive word "shop".
The Panel also takes into account that Internet users considering the Domain Name without awareness of its content may believe that the Domain Name is in some way connected and associated with the Complainant: this situation is known as "initial interest confusion" (see Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul,WIPO Case No. D2004-0988).
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant's Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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 mark at issue.
There is no evidence that the Respondent has any rights or legitimate interests in the Domain Name.
By allegedly offering electronic appliances, namely mobile phones, the Respondent, that is, the actual registrant of the Domain Name, offered through its website – if accessed from an Italian IP address – products that are covered by the Trademark; the page displayed the Complainant's Trademark and logo. If addressed from an IP address outside Italy, the Domain Name directed to a website displaying an error report. After contacting the hosting provider, the website has been suspended as of March 14, 2016 and is now directing to a website displaying pay-per-click link .
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that "Mediamarket" is the Respondent's name or that the Respondent is commonly known as "Mediamarket". There is also no evidence that the Respondent is, and has ever been, a licensee of the Complainant or that the Respondent has ever asked or has ever been permitted in any way by the Complainant to register or use the Complainant's Trademark, or to apply for or use any domain name incorporating any of the Complainant's marks.
The Domain Name was registered in February 2016, well after the Complainant's registration of its Trademark. Given the notoriety of the Trademark, the fact that the website behind the Domain Name, if accessed via an Italian IP address, is nearly the same as Complainant's and the fact that Respondent is using Complainant's Trademark on this website behind the Domain Name, the Respondent, in the view of the Panel, cannot claim to have been using the term "mediamarket", without being aware of the Complainant's rights to it and chose these terms to exploit the Complainant's Trademark. To the Panel, this proves that the Respondent's interests cannot have been legitimate.
It is also clear that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
Finally, given the circumstance of this case, the Panel finds that the Respondent's lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions "non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights" see Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493; and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090.
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant and in the absence of a response, the Panel finds that the Complainant's Trademark and its activities are well-known throughout the world. Accordingly, in the Panel's view, the Respondent must have been aware of the Complainant's existence and rights when it registered the Domain Name. This is emphasized by the fact that the Respondent was offering electronic devices, namely mobile phones though the website behind the Domain Name, was imitating the Complainant's online stores and was using the Complainant's corporate design and figurative Trademark.
This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e., that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent's website or location or of a product or service on the Respondent's website or location.
Although the lack of a response by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith. 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.
Willem J. H. Leppink
Sole Panelist
Date: April 14, 2016
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