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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MIP METRO Group Intellectual, Property GmbH & Co KG v. UpCastle

Case No. D2008-1573

1. The Parties

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

The Respondent is UpCastle, of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <metrogruppe.com> is registered with IHS Telekom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2008 via email with the hard copy received on October 21, 2008. On October 17, 2008, the Center transmitted by email to IHS Telekom, Inc. a request for registrar verification in connection with the disputed domain name. On October 18, 2008, IHS Telekom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2008. Furthermore, on October 30, 2008 and pursuant to paragraph 11 of the Policy, a request to proceed in English was received from the Complainant. The Center did not receive any comments from the Respondent on the Complainant’s request to proceed in English nor did the Respondent object to this by the stipulated deadline of November 5, 2008. In light of the Complainant’s request to proceed in English and based on the record before it, the Panel deems the language of proceedings to be English. The Respondent did not submit any response to the Complaint. Accordingly, the Center notified the Respondent’s default on November 28, 2008.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on December 11, 2008. 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 subsidiary of METRO AG of DГјsseldorf, Germany and states that it is the third largest trading group worldwide. The Complainant states that METRO AG operates under the well-known designation METRO Group which runs wholesale and retail stores at more than 2,200 locations around the world and employs approximately 280,000 individuals.

The Complainant owns German trademark registration No. 302 31 063 METRO GROUP, with a priority of June 26, 2002; German trademark registration No. 302 38 957 METRO GROUP with a priority of August 8, 2002; International trademark registration No. 804 277 METRO GROUP with a priority of August 8, 2002; and Community trademark application No. 2 853 471 METRO GROUP with a priority of September 16, 2002.

The Complainant is also the owner of numerous trademark registrations containing the name “metro” in various countries, such as Germany. These include German trademark registration No. 1 165 012 METRO with a priority of April 15, 1988; German trademark registration No. 395 16 389 METRO with a priority of April 15, 1995; German trademark registration No. 300 41 867 METRO ONLINE with a priority of May 31, 2000; German trademark registration No. 303 48 719 METRO with a priority of September 22, 2003; International trademark registration No. 627 390E METRO with a priority of September 30, 1994; International trademark registration No. 728 814A METRO with a priority of January 25, 2000; International trademark registration No. 852 751 METRO with a priority of June 25, 2004 as well as Community trademark application No. 779 116 METRO with a priority of March 20, 1998.

The Complainant is also the registered owner of the trademarks of the METRO GROUP and administers METRO trademarks for the various branches and subsidiaries of METRO Group.

5. Parties’ Contentions

A. Complainant

The Complainant avers that METRO Group has been using the trade name and trademark METRO since 1964 and has utilized the domain names <metrogroup.de> and <metrogruppe.de> as a way to present the history and scope of the business in its entirety.

The Complainant states that the contested domain name <metrogruppe.com> has been registered by the Respondent on June 27, 2008 as evidenced by the data provided by the WhoIs Database and included as Annex 1 of the Complaint. The Complainant has noted that all the listed trademarks above were registered before the registration of the contested domain name.

Additionally, the Complainant contends that the domain name <metrogruppe.com> is almost identical and highly similar to the Complainant’s trademark METRO GROUP as well as the Complainant’s use of the domain names <metrogroup.de> and <metrogruppe.de>. The Complainant cites a number of prior decisions noting that when a domain name incorporates a Complainant’s trademark in its entirety, it is confusingly similar to that mark despite the addition of other words. Furthermore, the Complainant contends that consumers will not only be confused, but will also wrongly associate the contested domain name <metrogruppe.com> with METRO Group’s commercial homepage for their worldwide operations.

With respect to establishing the second element under the Policy, that the Respondent has no rights or legitimate interest in the contested domain name, the Complainant first contends that the Respondent does not own any trademark, trade name or other intellectual property rights in the name METRO GRUPPE and METRO. The Complainant notes that there is no relationship between the present parties, the Respondent is not a licensee of the Complainant and the Respondent has been given no authority or approval to use the Complainant’s trademarks and trade name.

In terms of the Respondent’s use of the domain name, the Complainant states that presently the domain name <metrogruppe.com> is being used for the presentation of pornographic material. The Complainant avers that the presentation of the pornographic material infringes their rights under the trademark law due to the fact that many of the Complainant’s trademarks enjoy protection for services in the field of entertainment.

The Complainant also argues that the depiction of pornographic material under the domain name <metrogruppe.com> has an “extremely detrimental effect” on the reputation of the METRO GROUP trademark, trade name and the Complainant itself. Furthermore the Complainant states that as it has no intention of providing pornographic material to the public, and it does not wish to be associated with the services provided by the Respondent on the contested website.

In establishing the final element that the Respondent has registered and is using the disputed domain name in bad faith, the Complainant alleges that the Respondent can be imputed to have actual knowledge of the Complainant’s trademark at the time of the disputed domain name’s registration. The Complainant argues that this is due to the fact that the trade name METRO and the Complainant’s registered trademarks are long-established and well-known due to the scope of its business. Additionally the Complainant states that it has used domain names such as <metrogroup.de> and <metrogruppe.de> for a number of years. As a result the Complainant contends that the Respondent must have known the trade name and association to the Complainant and as a result must have perceived the “almost identical” nature of the Complainant’s domain names during the registration process.

In furtherance of its allegations that the Respondent has used the disputed domain name <metrogruppe.com> in bad faith, the Complainant alleges that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant. This is alleged vis-Г -vis various email communications initiated by the Respondent where the Respondent initially demanded 67,000 Euros, and later 14,500 Euros. The Complainant notes that under the Policy, an offer to sell the domain name for valuable consideration in excess of the out-of-pocket costs is conclusive evidence that the domain name has been registered and is being used in bad faith.

In concluding, the Complainant further alleges that the Respondent is “hiding its identity” as no names, companies or complete addresses are detectable. The Complainant states that the only information that could be obtained from the WhoIs database searches is the Respondent’s email address. As a result it is the Complainant’s conclusion that the domain name <metrogruppe.com> was registered and is being used in bad faith.

On the basis of these contentions, the Complainant seeks transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to the Policy, the Complainant must prove each of the three elements contained in paragraph 4(a) of the Policy in order to obtain a favorable ruling. Those elements are namely that: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights, (ii) the Respondent has no rights or legitimate interests with respect to the dispute domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it has used the domain name <metrogroup.de> and <metrogruppe.de> in the past. In Annexes 4 and 5 to the Complaint, the Complainant has shown that they have registered German and international trademarks in the term METRO as well as METRO GROUP. In all cases the Complainant’s marks predate the registration of the disputed domain <metrogruppe.com>. Therefore, it is established that the Complainant does own trademark rights in the words “metro” and “metro group”.

In a number of previous cases, it has been consistently confirmed 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. (See also Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; Chanel Inc., v. Estco Technology Group, WIPO Case No. D2000-0413). Presently the disputed domain name <metrogruppe.com> incorporates both trademarks registered by the Complainant as it includes the term “metro” along with a translation of the word “group”. Since the German word for “group” is “gruppe”, this simply strengthens the argument as METRO Group does business both in Germany and abroad and has utilized in practice both translations in its business. In this Panel’s view the incorporation of one part of the mark in its entirety, with the other part as is albeit in another language, constitutes an almost identical replication of the trademark or an extreme similarity therewith that definitely rises to the threshold of the “confusingly similar” test under the first element of the Policy.

The addition of the generic top-level domain (gTLD) “.com” is not of legal significance in this instance when comparing the disputed domain name to METRO Group since the use of a gLTD is required for domain name registration purposes. Dunkin’ Donuts Incorporated and Dunkin’ Donuts USA, Inc. v. RandomThinkers and Patrick Huba, WIPO Case No. D2001-0104. Many other UDRP panel decisions have confirmed that the addition of a gTLD to a confusingly similar trademark does not affect the deliberations under the first element of the Policy.

As a result, the Panel concludes, that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

Under this aspect of the Policy the complainant bears the general burden of proof that the respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No. D2000-1769. The respondent is required to demonstrate that they possess legitimate rights and interests in the domain name; a respondent can establish rights or legitimate interests by establishing one of the circumstances under paragraph 4(c)(i)-(iii) of the Policy. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and a respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).

Previous cases have held that a complainant should make the allegation and put forth what it can support. See Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. (Where the panel held that a suggested approach included information relating to whether the complainant has rights to the name, the fact that the respondent has no rights to the name of which they are aware, and the complainant has not given the respondent permission to use the trademark or names).

With respect to this burden, the Complainant has shown through Annexes 4 and 5 to the Complaint, that it has priority rights to the trademark and trade name METRO GROUP and METRO. Furthermore, the Complainant has also utilized the domain names <metrogroup.de> and <metrogruppe.de> prior to the Respondent’s registration. The Complainant also submits that to its knowledge, the Respondent does not own any trademark, trade name or any other rights in “metro gruppe” or “metro”. Furthermore the Complainant states that it has never granted the Respondent any rights to use the METRO GROUP trademark or trade name.

As evidenced through Annex 6 to the Complaint, Respondent is using the domain name <metrogruppe.com> for the presentation of pornographic material which the Complainant alleges has an extremely detrimental impact on the reputation on both the trademarks as well as the business of the Complainant. Previous panels have held that a respondent’s use of a complainant’s mark in connection with pornography can indeed tarnish the company’s image and wrongly affiliate the company with the disputed domain name. Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314. Additionally, UDRP panels have held in the past that using domain names to link to pornographic images and other pay sites is not a legitimate use of the disputed domain name. Id. Therefore the Panel finds that there is no bona fide offering of services or legitimate use present.

In light of the above, and the available record, it can be concluded that the Respondent has failed to show one of the three circumstances under paragraph 4(c) of the Policy that would refute Complainant’s contentions, and the record indicates, on a balance of probabilities, that the Respondent has no legitimate rights or interests in the disputed domain name.

As a result, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In accordance with paragraph 4(a)(iii) of the Policy, in order to rule favorably for the Complainant, the Respondent must have registered and must be using the contested domain name in bad faith.

When the Panel checked the site of the disputed domain name, it received an error message. However, the Complainant has presented evidence showing that the Respondent used the disputed domain name of <metrogruppe.com> for the depiction of pornographic material.

Respondent registered the disputed domain name on June 27, 2008, after the Complainant’s many trademarks and trade names had been established. As evidenced by Annex 7 to the Complaint, only weeks after obtaining <metrogruppe.com>, the Respondent initiated negotiations with the Complainant to sell the disputed domain name for an amount clearly in excess of the out-of-pocket costs directly related to the domain name.

Paragraph 4(b) of the Policy notes a number of instances that shall constitute both the registration and use of a domain name in bad faith. In this case, under paragraph 4(b)(i), Respondent has appeared to acquire the domain name <metrogruppe.com> primarily for the purpose of selling it, as evidenced by the short duration between registration (June 27, 2008) and the proposed sale (August 7, 2008). Additionally, the initial negotiation price of 67,000 Euros and subsequent price of 14,500 Euros clearly exceeded Respondent’s out-of-pocket costs. The Respondent has not provided documentation related to expenses or fair value or any evidence to refute the above.

As the Complainant notes, “an offer to sell the domain name for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that the domain name has been registered and is being used in bad faith.” CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243. Additionally, the Respondent has failed to show that it has rights or legitimate interests in the disputed domain name. Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046.

The Panel finds that bad faith can be inferred in light of the Respondent’s efforts to sell <metrogruppe.com> to the Complainant for an amount that is clearly in excess of the out-of-pocket costs and in such a short time after registration, particularly in light of the fact that the Respondent does not seem to have made any legitimate use of the disputed domain name, with some evidence indicating use of the site for pornography or, at best, passively holding the domain name for no particular evident use.

As a result, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <metrogruppe.com> be transferred to the Complainant.

Nasser A. Khasawneh
Sole Panelist

Dated: December 25, 2008