Media-Saturn-Holding GmbH v. Gandiyork, SL - B98466980 et al.
Claim Number: FA1404001552029
Complainant: Media-Saturn-Holding GmbH of Ingolstadt, Germany.
Complainant Representative: Boehmert & Boehmert Lawfirm of Potsdam, Germany.
Respondent: Gandiyork, SL - B98466980 of Gandia, Valencia, International, Spain.
Gandiyork, SL - B98466980 of Gandia, Valencia, International, ES.
REGISTRIES and REGISTRARS
Registries: LAND Registry
Registrars: GoDaddy.com, LLC
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.
Antonina Pakharenko-Anderson, as Examiner.
Complainant submitted: April 1, 2014
Commencement: April 1, 2014
Response Date: April 15, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration 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.
Procedural Findings:
This complaint and findings relate to the single domain <mediamarkt.land>. No multiple Complainants or Respondents are involved in this proceeding. No domain names are dismissed from this complaint.
Under para. (c) 9 of the Uniform Rapid Suspension System (URS) Rules the Examiner appointed shall be fluent in English and in the language of the response and will determine in which language to issue its Determination, in its sole discretion. Thus, the Examiner chooses English as the language of the Determination.
Findings of Fact
The complaint at hand refers to the registration of the domain name <mediamarkt.land> registered by Gandiyork, SL.
The Complainant, Media-Saturn-Holding GmbH, states it was founded in 1990 and is, with a turnover of about 21 billion EUR and 950 stores the largest European consumer electronic retailer. Complainant distributes its products through its sales brands Media Markt and Saturn in on-site stores and online (e.g. mediamarkt.de/.nl/.es/.at/.ch/.it/.hu/.ru/.pl). In Spain the Complainant operates Media Markt stores in every major city (70 in total).
Complainant owns amongst other trademarks the Community Trademark 009699406, word: MEDIA MARKT (“Trademark”) registered for services in class 35 including retail services in relation to electronic databases and recorded and downloadable computer programs. The Trademark is registered with the Trademark Clearinghouse (“TMCH”).
According to the Complainant, the domain <mediamarkt.land> is identical or at least confusingly similar with the Complainant’s registered trademark “MEDIA MARKT”. Evidence of use for the trademark has been presented to and validated by the TMC.
Based on the foregoing, the Complainant elaborates on the arguments to demonstrate that the Registrant has no legitimate right or interest to the domain name, and that the domain was registered and is being used in bad faith.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended:
Identical or confusingly similar (URS 1.2.6.1.)
The Examiner finds that the domain name <mediamarkt.land> fully incorporates the Complainant’s Media Markt mark. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus the “.land” is of no consequence here.
The Examiner must add from its own knowledge that the trademark Media Markt is a famous and well-known trademark in Europe and the distinctiveness of this mark has been significantly increased through the long and intensive use of the sign by the Complainant.
The Examiner finds that the domain name <mediamarkt.land> is identical to the Complainant’s Ripoff Report mark under URS 1.2.6.1. (i).
No rights or legitimate interests
The Examiner determines that the Respondent is not commonly known by the Media Markt name as the WHOIS record for the <mediamarkt.land> domain name lists “Gandiyork, SL” as the domain name registrant.
It is contemplated from the Complaint that Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s Media Markt mark in a domain name or otherwise.
The Respondent is a company registered in Valencia, Spain and not in any way affiliated to the Complainant. He registered the disputed domain name on February 26, 2014 after receiving notification by the TMCH that the domain name identically matches the Complainant’s Trademark. Until recently, the domain name was linked to the website stelapps.com offering software applications for mobile devices (e.g. smartphones).. In this respect, the Respondent denies and rejects the argument for it being false since the Respondent is “Gandiyork is a 2013 company who, in alliance with a Silicon Valley location-aware chat company is building the new way how consumers will talk to each other and sometimes in front of big companies and retailers.”.
The Examiner does not admit the legitimate interest argument of the Respondent to use a trademark that belongs to a third party and of which the Respondent was aware, since having been registered with the Trademark Clearinghouse it was made known to him when he was obtaining the registration of the domain name <mediamarkt.land>. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.2.
Bad faith registration and use
The domain name <mediamarkt.land> was registered and is being used in bad faith.
The Complainant submits that besides mediamarkt.land, the Respondent registered 1047 other domains including numerous .land domains identical to wellknown trademarks, including decathlon.land, mercadona.land, rewe.land, lidl.land, carrefour.land, adidas.land, cocacola.land, marlboro.land and pepsi.land. Decathlon is a global supplier for sportswear and equipment, Mercadona is the biggest chain of supermarkets in Spain, the Rewe group is one of the biggest European retail group, Carrefour is the second largest retail group in the world, Adidas, Coca Cola, Marlboro and Pepsi are amongst the world’s most valuable and renown trademarks. In NAF Case No. 1547344 one of these domain names already has been suspended on behalf of Lidl, one of the biggest discount supermarket chains in Europe.
As found by the Examiner during its ex officio verification of the information on suspension of the <lidl.land>, there is no material falsehoods in this statement.
Further, the Examiner, in fulfillment of the duty of verifying whether the Complainant has made false claims as alleged by the Respondent, conducted a whois search through the online whois reverse lookup service located at the URL address http://reversewhois.domaintools.com of the domain name owner Gandiyork, SL and the search results immediately indicated that Gandiyork, SL is associated with about 1.513 other domains as of April 18, 2014. In the present case, the Examiner considers that holding such a large portfolio of domain names is an indicia of bad faith, particularly considering that, as seen in this case, an identical trademark owned by a third party is involved.
Yet the more, the Respondent registered the disputed domain name on February 26, 2014 long after the Complaint’s mark was first used and when the mark obtained the high degree of awareness among the public, and after receiving notification by the TMCH that the domain name identically matches the Complainant’s Trademark.
This fact and holding the large portfolio of the domain names by the Respondent that there are indicia of cybersquatting. This also supports the finding of bad faith.
The Response does not provide and clear and convincing substantiation of the use of another persons’ trademarks in the domain names in good faith. The content of the website does not support the use of the Complainant’s mark in good faith either, as no information or adverts of the Respondent’s business or its business plans are published onto the conflicting website. At the same time, through misleadingly diverting consumers, the Respondent has intentionally attempted to attract for commercial gain Internet users to its web site.
Based on the above cumulative circumstances the Examiner finds such behavior to evidence Respondent’s bad faith registration and use under URS 1.2.6.3.
The Examiner finds that the complaint was neither abusive nor contained material falsehoods.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<mediamarkt.land>
Antonina Pakharenko-Anderson, Examiner
Dated: April 18, 2014
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