{
    "case_number": "CAC-UDRP-103396",
    "time_of_filling": "2020-11-06 09:21:54",
    "domain_names": [
        "migrosprivate.com",
        "migros-private.com",
        "migrosprivate.info",
        "migros-private.info  "
    ],
    "case_administrator": "Denisa Bilík (CAC) (Case admin)",
    "complainant": [
        "MIGROS-GENOSSENSCHAFTS-BUND (Federation of Migros Cooperatives)"
    ],
    "complainant_representative": "SILKA AB",
    "respondent": [
        "Willy Seban"
    ],
    "respondent_representative": null,
    "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nMigros Genossenschaftsbund (hereinafter referred to as Complainant), is the Swiss based umbrella organization of the regional Migros Cooperatives. The Complainant is known throughout Switzerland as one of the biggest department stores, offering a wide range of food, non-food products and services (wellness, travel, catering). The company was founded by Gottlieb Duttweiler in 1925 in Zurich and has now evolved into a Community of ten regional Cooperatives. With sales of CHF 28.5 billion (2018), the Migros Group is Switzerland's largest retailer, and with over 106 000 employees, it is also Switzerland's largest private employer. Migros is owned by its more than 2 million cooperative members, organised into ten regional cooperatives.\r\n\r\nMigros bank\r\nMigros Bank is a wholly owned subsidiary of the Migros Group. They operate the website https:\/\/www.migrosbank.ch. The bank was founded in 1958 by Gottlieb Duttweiler. The bank is present in 67 locations in Switzerland. The bank is also active on several social media sites such as: Facebook, twitter, Google +, Youtube, Xing and LinkedIn.\r\n\r\nMIGROSBANK Word mark no. 414500, Swiss national reg. 1995-01-12\r\n\r\nThe Complainant has previously successfully challenged several MIGROS domain names through the UDRP process see among others the following WIPO cases: D2020-0327, D2019-0803, D2017-2076, D2016-2547, D2016-0687, D2015-2375, D2015-1630, D2015-1197, D2015-1012, D2015-0921, D2015-0974, D2015-0564, D2015-0326D2000-1171, D2008-0092, DCH2008-0016, DCH2010-0020, DCH2010-0021, D2015-0564, D2015-0326 and CAC cases 101810, 101876, 103159. Further, the US National Arbitration Forum recently took a decision in favor of the Complainant (FA1505001621184, dated on July 8, 2015) where similar fact has been stated.\r\n\r\nThe Complainant showed evidence that the disputed domain names <migrosprivate.com>, <migros-private.com>, <migrosprivate.info>, <migros-private.info> (“hereinafter referred to as the Domain Names”) were registered between September 22, 2020 and October 15, 2020 and directly and entirely incorporates Complainant’s well-known trademark MIGROS. The addition of the generic Top-Level Domain (gTLD) “.com” does not add any distinctiveness to the Domain Name. The combination with the abbreviated term “private” which is used for private banking strengthens the confusingly similarity element since the words are closely connected to the Complainant’s trademark and business activities. The reason is that the Complainant offers online banking. It is well-established under UDRP precedents that a gTLD suffix is disregarded under the confusingly similarity test as it is a technical requirement. Where the Domain Name is compared with the Complainant’s registered MIGROS mark, “migros” is still the most distinctive part and the addition of the generic word “private” does not diminish the overall likelihood of confusing similarity to the Complainant’s trademark. On the contrary, in the present case, the word exaggerates the confusing similarity between the Domain Name and the Complainant’s trademark, since the Complainant operates an online bank for private customers. Compare with the recent WIPO Case Case No. D2017-0647 Migros-Genossenschafts-Bund v. James Okogb, Micrio regarding the domain name <migrosbonline.com> where the Panel held that “The addition of the elements “b” and “online” in the disputed domain name, while not identical to Complainant’s trademark, do not negate their confusing similarity to that trademark”. Nearly the identical circumstances are at hand in the current case. See as an example the WIPO Overview on Selected UDRP Questions, Third Edition (\"WIPO Overview 3.0\"), as well as the recent International Business Machines Corporation v. Sledge, Inc. \/ Frank Sledge WIPO Case No. D2014-0581 where the Panel stated the following “In addition, it is generally accepted that the addition of the top-level suffix in the domain name (e.g., “.info” or “.org”) is to be disregarded under the confusing similarity test”. The following should apply in the current case and the Domain Names should be considered as identical to the registered trademark MIGROS at point of Complainant's view.\r\n\r\nThe Complainant remarked that the Respondent has no rights or legitimate interests in respect of the Domain Names.\r\n\r\nFirst of all, there is no bona fide offering of goods or services where the Domain Names incorporate a trademark which is not owned by the Respondent, nor is the Respondent known by the name “Migros”. The combination with “private” strengthens the impression of a legitimate connection between the website to which the Domain Names resolves and Complainant. Complainant has not found that the Respondent is commonly known by the Domain Names. The Respondent has not provided Complainant with any evidence of its use of, or demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The tendency of the Domain Names is to induce consumers into visiting the related websites under the misapprehension that the websites are endorsed by Complainant. Relying on consumer confusion concerning a well-established trademark is not a route to establishing a claim for rights or legitimate interests\r\n\r\nThe Respondent has made no effort to use the Domain Names for any purpose that might explain its choice in a manner consistent with having rights or legitimate interest in the name “Migros” or “Migros Bank”. When entering the terms in Google search engine, the first returned results point to Complainant` official website. The Respondent could easily perform a similar search before registering the Domain Names and would have quickly learnt that the trademarks are owned by the Complainant and that the Complainant has been using its trademarks for a significant period of time.\r\n\r\nThere is no evidence that the Respondent has a history of using, or preparing to use, the Domain Names in connection with a bona fide offering of goods and services. It is clear that the Complainant has become a distinctive identifier associated with the term “migros” and that the intention of the Domain Names is to take advantage of an association with the business of Complainant.\r\n\r\n\r\nThe websites:\r\nTwo out of the four domain names < migrosprivate.com, migros-private.com> were previously pointing to a website that aimed to attract consumers to a false bank website by copying the design of Complainant's official website https:\/\/www.migrosbank.ch\/. The Domain Names were used to set up a website in order to deceive members of the public into believing that they can safely pay money to a third party in reliance on information provided by a trusted company when in fact the website has no connection with the Complainant. The Complainant managed through the web host to urgently suspend the websites from further activities and is at the time of filing the Complaint inactive. The websites were deceptively similar in layout, colour and content. The Complainant took all measures to try and have the sites removed. The other two domain names <migrosprivate.info, migros-private.info> have not been connected to any active websites (so far at least). Due to the historical use of the sites there is always a risk that the sites will be activated again. Clearly, the Respondent is not known by the Domain Names, nor does the Respondent claim to have made legitimate, non-commercial use of the Domain Names.\r\n\r\n\r\nThe Complainant argues further that the disputed Domain Names were registered and are being used in bad faith.\r\n\r\nIt must be highlighted that the Complainant’s trademarks valid for MIGROS (where the and the active business presence of Complainant also shows that it seems to be unlikely that the Respondent was not aware of the unlawful registration of the Domain Names. The fact that the Respondent reproduced the Complainant’s website by adopting the Complainant’s logo and overall look was with the intention to deceive internet users into believing the websites were in fact operated by the Complainant. Compare with WIPO decision D2017-0066 where the same circumstances were at hand. The Respondent created a website nearly identical with the Complainant whose core business was banking. The Panel stated that: The Respondent did not make a fair or non-commercial use of the disputed domain name. On the opposite, the Respondent used a privacy shield service to register the domain name and then used it to resolve to an obviously infringing website copying the official Complainant’s website and reproducing the Complainant’s trademarks. Same circumstances are at hand in the present case.\r\n\r\nThe Domain Names are being used in bad faith\r\nSince the registration of the Domain Names the Respondent was using the domain names to resolve to infringing websites dedicated to banking services and offering the Internet users to contact the bank via an email address incorporating the Complainant’s trademark. Such ongoing use does not constitute good faith use of the Domain Names. The fact that the websites at the time of filing the Complaint leads to suspended sites does not cure the bad faith use as established by the Respondent.\r\n\r\nThe Complainant summarized, the confusingly similar nature of the disputed Domain Names to the Complainant's trademarks, together with the word “private” in the disputed Domain Names demonstrates lack of good faith. Consequently, the Respondent should be considered to have registered and to be using the Domain Names in bad faith.\r\n\r\nThe Respondent didn’t react to the Complainant‘s contentions.",
    "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the Domain Names.",
    "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).",
    "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Names (within the meaning of paragraph 4(a)(ii) of the Policy).",
    "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the Domain Names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).",
    "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.",
    "decision": "Accepted",
    "panelists": [
        "Dr. jur. Harald von Herget"
    ],
    "date_of_panel_decision": "2020-12-17 00:00:00",
    "informal_english_translation": "The Complainant, Migros Genossenschafts-Bund (hereinafter referred to as \"Complainant\"), is one of the biggest retail companies of Switzerland.\r\n\r\nThe Complainant has submitted evidence, which the Panel accepts, showing that it is the registered owner of the following trademarks in several classes and domain names bearing the “MIGROS“ phrase.\r\n\r\nCurrently, Migros is the owner of various trademark registrations such as:\r\n\r\nThe Swiss Word trademark n° P-405500 dated 13.02.1993 designating goods and services in classes 1-9, 11, 12, 14-32 and 34. MIGROS Word mark 2P-415060 Swiss national n° 2P-415060 dated 27.09.1994 designating the services in classes 35-42. The EU trademark n° 003466265 dated 29.10.2003 designating the services in class 35.\r\n\r\nComplainant also owns various registrations for domain names that include its registered trademarks, including www.migros.com, www.migros.ch,, www.migrosbank.com, migrosbank.ch  among others. The Complainant has been extensively using the “MIGROS” denomination on all internet environments including and not limited to the company’s official websites. ",
    "decision_domains": {
        "MIGROSPRIVATE.COM": "TRANSFERRED",
        "MIGROS-PRIVATE.COM": "TRANSFERRED",
        "MIGROSPRIVATE.INFO": "TRANSFERRED",
        "MIGROS-PRIVATE.INFO": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}