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MIP METRO Group Intellectual Property GmbH & Co. KG v. Wanda Henson [2005] GENDND 2135 (3 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MIP METRO Group Intellectual Property GmbH & Co. KG v. Wanda Henson

Case No. D2005-1008

1. The Parties

The Complainant is MIP METRO Group Intellectual Property GmbH & Co. KG, of Germany, represented by Harmsen & Utescher, Germany.

The Respondent is Wanda Henson, of the United States of America.

2. The Domain Name and Registrar

The disputed domain name <metro-credit.biz> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2005. On September 23, 2005, September 27, 2005, and September 28, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com requests for registrar verification in connection with the domain name at issue. On September 28, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2005.

The Center appointed Dr. Luca Barbero as the sole panelist in this matter on October 28, 2005. 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 Complainant is a member of the METRO Group, one of the largest trading groups worldwide. The Complainant is the owner of the trademarks of METRO Group and administers and manages all METRO trademarks for the members of the group. The METRO Group operates stores at more than 2400 locations in 30 countries all around the world and has used the name METRO since 1964.

The Complainant is the owner of several trademarks registration consisting in or including the sign METRO such as German trademark registration n. 1 165 012 METRO of April 15, 1988 in Classes 1-34, 36, 39 and 42; German trademark registration n. 395 16 389 METRO, of April 15, 1995, in Classes 1-36 and 38-43; German trademark registration n. 302 31 063 “METRO GROUP”, of June 26, 2002, in Classes 1-45; German trademark registration n. 300 41 867 “METRO Online”, of May 31, 2000, in Classes 9, 35, 36, 38-42; German trademark registration n. 303 48 719 METRO of September 22, 2003, in Classes 35; International trademark registration n. 627 390 METRO, of September 30, 1994, in Classes 1-39 and 42; International trademark registration n. 728 814 METRO of January 25, 2000, in Classes 1-39 and 42; and International trademark registration 852 751 METRO, of June 25, 2004 in Classes 1-45.

The Respondent registered the domain name <metro-credit.biz> on July 14, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name is nearly identical to the trademarks in which the Complainant owns rights since the element “credit” is only a description for a certain “trustworthiness” connected to the business of the Complainant.

The Complainant highlights that the trademarks and trade name METRO are used with similar additional components, such as “Cash & Carry” which is comparable to “Credit” concluding that the consumer will not only confuse the signs in comparison but also by wrongly associating the domain <metro-credit.biz> with the Complainant, for instance as being part of the worldwide METRO Group or just one more sign that fits in the METRO trademark family.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent has formally advertised under “METRO Cash & Carry” on the homepage operated under the domain name <metro-credit.biz>. The Complainant emphasizes that the Respondent is even using the trade name and graphical design of the Complainant’s “METRO Cash & Carry” wholesale markets as it can be seen on the excerpts from the Complainant’s homepage provided to the Panel in the annexes. Moreover, the graphical design of the Complainant’s METRO word & device mark is identically used by the Respondent.

The Complainant informs the Panel in its Complaint that the products sold by the Respondent are computers which are covered by the Complainant’s trademarks and that the Respondent alleges that it was founded in 1994 in Russia and was selling computers under the name “METRO Cash & Carry”.

According to the Complainant, nothing of the allegations is true and therefore the Respondent has no rights or legitimate interests in respect of the domain name.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the domain name <metro-credit.biz> was registered exclusively for the purpose of exploiting the reputation of the Complainant under the trademark METRO, especially for the sale of notebooks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

Therefore the Panel shall decide this proceeding on the basis of Complainant’s submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

6.1. Domain Name Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a number of national and international trademark registrations consisting in or comprising the sign METRO.

The Panel finds that the disputed domain name is confusingly similar to the trademarks owned by the Complainant. Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature.

Therefore, the mere addition of the word “credit” does not exclude the likelihood of confusion between the domain name and the Complainant’s trademark. See A. Nattermann & Cie Gmbh, Aventis Pharma SA v. Derrick Horner, WIPO Case No. D2003-0844, Infospace.com, Inc. v. Tenembaum Ofer, WIPO Case No. D2000-0075, Sparco Srl v. Mr. Alexander Albert W. Gore/Ukrainian Cat. University, WIPO Case No. D2003-0448, Toyota France and Toyota Motor Corporation v. Computer Brain, WIPO Case No. D2002-0002; Microsoft Corporation v. J. Holiday Co., WIPO Case No. 2000-1493, Tickmaster Corporation v. Dotsan, WIPO Case No. D2002-0167, and Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094.

It is well established in prior decisions that “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”. Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “music”, “arena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); Experian Information Solutions Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (“credit” added to EXPERIAN mark); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to OKIDATA mark); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (“buildingsociety” added to BRITANNIA mark); Chanel Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (“chanelstore” and “chanelfashion” found to be confusingly similar to the CHANEL mark).

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

6.2. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating, in accordance with paragraph 4(c) of the Policy, any of the following:

(a) that it has made preparations 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 the dispute; or

(b) that it is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

There is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademarks and name under any circumstance.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

6.3. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s 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 holder’s website or location or of a product or service on the holder’s website or location.

The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

As to the use and registration in bad faith, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondent has attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s services.

The Respondent has indeed reproduced the Complainant’s logo and lettering of the registered trademark and published it at the online location corresponding to <metro-credit.biz> and such an use of the domain name is still online at the time of the decision. With reference to the use of a domain name to ingenerate confusion with competing activities, see Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“Respondent’s registration and continued use of the contested domain name for re-directing Internet users, i.e., particularly customers and potential customers of the Complainant from the Complainant’s website to the website of Bestnet, Inc., a company which directly competes with the Complainant, constitutes bad faith and use.”); Marriott International, Inc. v. Vladimir Kyznetsov, National Arbitration Forum Case No. FA95648 (October 24, 2000) (bad faith where respondent registered the domain name <marriottrewards.com> and used it to route Internet traffic to another website that “promotes travel and hotel services . . . identical to the services offered by the Complainant”).

In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

In light of the foregoing, the Panel decides that (a) the domain name registered by the Respondent is confusingly similar to the Complainant’s trademarks; (b) the Respondent has no rights or legitimate interests in respect of the domain name and (c) that the domain name has been registered and used in bad faith.

Accordingly, the Panel requires that the registration of the domain name <metro-credit.biz> be transferred to the Complainant.

Luca Barbero
Sole Panelist

Date: December 3, 2005