Media-Saturn-Holding GmbH v. WhoisGuard, Inc. et al
Claim Number: FA1512001651765
Complainant: Media-Saturn-Holding GmbH of Ingolstadt, International, Germany.
Complainant Representative: Boehmert & Boehmert Lawfirm of Berlin, Germany.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Prathiba M. Singh, as Examiner.
Complainant submitted: December 10, 2015
Commencement: December 11, 2015
Default Date: December 29, 2015
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant claims ownership in amongst other trademarks the Community Trademark 05147401, word: SATURN registered for goods and services in classes 9, 11, 35 including amongst others Electric and electronic apparatus and instruments (included in class 9). The Complainant claims that the trade mark has been registered with the Trade mark Clearing House.
A search on the Respondent’s website reveals that it is a privacy protection service that prevents people from seeing their name and gaining access to their address, phone number and email when they do a Whois search on their domain. A search done on the whois database for the domain name saturnde.xyz reveals the name of the Respondent under Registrant Contact Information (Raw Registrar Data). The Respondent appears to be the registrant of the domain name.
The Respondent has not filed a response. Notice of Default has been sent to the Respondent.
Even though the Respondent has defaulted, URS Procedure 1.2.6 requires the Complainant to make a prima facie case, proven by clear and convincing evidence for each of the following three elements to obtain an order that a domain name should be suspended.
[URS1.2.6.1] The registered domain name is/are identical or confusingly similar to a word mark:
(i) For which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) That has been validated through court proceedings; or
(iii) That is specifically protected by a statute or treaty in effect at the time the URS complaint is filed
The Complainant has attached valid Registration certificates issued by the OHIM for the mark SATURN showing the Complainant as the Owner. A Community trade mark is valid in all countries of the European Union.
A perusal of the website of the Complainant www.media-saturn.com shows that the Complainant unifies three brands of Media Markt, Saturn and Redcoon under one roof. The website reveals that Media Markt and Saturn are already the leading consumer electronics retailers in Europe. The Group operates in more than 1000 stores and offers online shopping in 15 countries in Europe. It states that in the business year 2013/14, Media-Saturn generated revenues of 21 billion euros and that the Group currently provides employment for about 65,000 people from 129 nations.
The domain name saturnde.xyz is under challenge by the Complainant. Complainant has claimed that the domain name is quasi identical or at least confusingly similar with the Complainant’s registered trade mark “Saturn”. The Complainant complains that the suffix “de” refers to the German TLD.de used for official Online store.
The Complainant alleges that the Respondent copies the Complainant’s official German online store Saturn.de. The website Saturn.de appears to be a German online store for electronic goods.
A search for the website www.saturnde.xyz reveals that access is denied on the page. This is validated by the email dated December 11, 2015 from XYZ to NAF in compliance confirming that the domain has been locked. This email is in response to the email sent by NAF to XYZ requesting it to lock the domain name. XYZ is a technology company that provides domain names.
The Complainant has attached print out from the impugned website www.saturde.xyz which is in the German language showing sale of electronic goods.
Thus, prima facie it is established that the registered domain name www.saturde.xyz is identical to the website www.saturn.de and confusingly similar to the Complainant’s word mark SATURN.
Determined: Finding for the Complainant.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Respondent did not file a response and did not provide evidence of legitimate rights or interests in the domain name. There is no evidence of any rights or legitimate interests of the Respondent in the disputed domain name. There is no evidence of any similar or identical trade marks owned by the Respondent. There is no indication of any authorization license or permission to register or to use the mark on which the Complainant claims ownership as a domain name or in any other way. There is no indication that the Respondent is related to the Complainants’ several businesses. There is no evidence of the Respondent being commonly known as SATURN. The Respondent has chosen not to even properly reveal its own identity and particulars.
Determined: Finding for Complainant
[URS 1.2.6.3] The domain name was registered and is being used in bad faith.
a) Registrant has registered or 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 documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s 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 Registrant’s web site or location or of a product or service on that web site or location.
The Complainant has attached print out from the impugned website www.saturde.xyz in the German language showing sale of electronic goods. The domain name now appears to be locked.
It appears that by the above use the domain name the Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source. The impugned domain name encompasses the trademark of the Complainant in entirety. The mark Saturn is identical. The .de extension is used to signify the Federal Republic of Germany. Use of Saturn with de for identical goods i.e. electronics signifies complete bad faith.
Determined: Finding for Complainant
NO FINDING OF ABUSE OR MATERIAL FALSEHOOD
The Examiner finds that the Complainant was neither abusive nor contained material falsehoods. No Response was submitted.
DETERMINATION
Prathiba M. Singh, Examiner
Dated: 1 January , 2016
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