MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin
Claim Number: FA1505001621184
Complainant is MIGROS-GENOSSENSCHAFTS-BUND (“Complainant”), represented by Cecilia Borgenstam of BrandIT Legal AB, Sweden. Respondent is tayfun yalcin (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <migros.us>, registered with GoDaddy.com, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 26, 2015; the Forum received payment on May 27, 2015.
On May 27, 2015, GoDaddy.com, Inc. confirmed by e-mail to the Forum that the <migros.us> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@migros.us. Also on May 29, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i)
a. Complainant, Migros Genossenschaftsbund, is a Swiss corporation that operates department stores. Complainant has rights in the MIGROS mark through registration with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,192,792, registered Aug. 21, 2012).
b. Respondent’s disputed <migros.us> domain name is identical to Complainant’s MIGROS mark because it incorporates the entirety of Complainant’s mark. The addition of the country-code top level domain (“ccTLD”) “.us” does not distinguish the disputed domain name from Complainant’s mark.
2. Policy ¶ 4(a)(ii)
c. Respondent does not have any relevant rights in the disputed domain name.
d. Respondent is not commonly known by the disputed domain name based on WHOIS information and because Complainant has not authorized Respondent to register the domain name.
e. Respondent’s use of the disputed domain name to resolve to a website that is parked or displays pay-per-click advertisements does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Policy ¶ 4(a)(iii)
f. Respondent’s inactive use of a domain name that clearly incorporates Complainant’s full mark can be evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is MIGROS-GENOSSENSCHAFTS-BUND of Zurich, Switzerland.
Complainant owns domestic and international registrations for the mark MIGROS, as well as the MIGROS family of related marks, which it has used continuously since at least as early as 2012 in connection with the provision of goods and services connected to its operation of its department stores.
Respondent is Tayfun Yalcin, New York, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the disputed domain name was created on or about December 31, 2014.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends that it has established its rights in the MIGROS mark through registration with multiple trademark agencies including the USPTO (Reg. No. 4,192,792, registered Aug. 21, 2012). Prior panels have found that a complainant has established its rights in a mark based on registration of the mark with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel here finds that, based on Complainant’s registration of the MIGROS mark with the USPTO, Complainant has established its rights in the mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s disputed <migros.us> domain name is identical to Complainant’s MIGROS mark because it incorporates the entirety of Complainant’s mark. Additionally, Complainant argues that the addition of the ccTLD “.us” does not distinguish the disputed domain name from Complainant’s mark. Previous panels have found that the addition of a ccTLD does not distinguish a disputed domain name from the mark that it resembles. See Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”) In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s MIGROS mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant claims that Respondent is not commonly known by the disputed domain name. To support this contention, Complainant points to WHOIS information, indicating that Respondent registered the disputed domain name under the name “Tayfun Yalcin,” which does not resemble the disputed domain name. Past panels have used WHOIS data, along with other information, to find that a respondent is not commonly known by a disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Considering the WHOIS data here, the lack of authorization from Complainant to use its mark, and Respondent’s failure to submit any contrary evidence, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).
Complainant asserts that Respondent does not have any relevant rights in the disputed domain name. Complainant claims that it has conducted trademark database searches, Google searches, and business register searches in attempt to find if Respondent has any rights in the <migros.us> domain name. Complainant contends it has found no such relevant information. Previous panels have found that a respondent lacks rights in the disputed domain name where there is no evidence that the respondent is the owner of any trademarks that reflect that domain name. See Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel here finds that Respondent lacks rights or legitimate interests in respect of the disputed domain name under Policy ¶ 4(c)(i).
Complainant further states that Respondent’s use of the disputed domain name to resolve to a website that is parked or displays pay-per-click advertisements does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes the website that resolves from Respondent’s disputed <migros.us> domain name displays either pay-per-click advertisements or a parked webpage. Prior panels have held that using a confusingly similar domain name to host a parked web page or host pay-per-click advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). The Panel here finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or 4(c)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s inactive use of a domain name that clearly incorporates Complainant’s full MIGROS mark is evidence of bad faith. The Panel again notes Complainant’s evidence showing that Respondent has apparently failed to make active use of the disputed <migros.us> domain name. Past panels have held that failure to make active use of a disputed domain name can demonstrate a respondent’s bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). In one instance, the disputed domain name resolves to a parked webpage, and in another instance it features competing hyperlinks. Previous panels have found that parked webpages or disputed domain names that feature commercial hyperlinks are evidence of bad faith pursuant to Policy ¶ 4b(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel here finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the usTLD Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <migros.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 8, 2015
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