The Complainant is SB Möbel Boss Handelsgesellschaft mbH & Co. KG of Porta Westfalica, Germany, represented by Weber & Sauberschwarz, Germany.
The Respondent is Jeff Yan of Qingdao, China, appearing pro se.
The disputed domain name <moebel-boss.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2011. On September 20, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On September 20, 2011, GoDaddy.com, 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 September 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2011. The Response was filed with the Center on October 11, 2011. The Center received email communication from the Respondent regarding language of proceedings on October 10, 2011, to which the Center replied on October 11, 2011. The Registrar has confirmed that the language of the Registration Agreement in this case is English and therefore the language of the proceedings is English.
The Center appointed Karen Fong as the sole panelist in this matter on October 21, 2011. 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.
The Complainant is the owner of the trade mark SB MÖBEL BOSS in class 35 for inter alia “retail services in relation to furnishings of all kinds”. The trade mark is registered as a Community Trade since April 3, 2006 under CTM trade mark no. 005032172. The trade mark is also registered in Turkey and in Germany. The Complainant also operates a website connected to the domain name <moebel-boss.de>. From a quick review of the website which is in German, the Complainant appears to be a furniture retailer in Germany.
The Respondent registered the Domain Name was on April 22, 2009. The Domain Name resolves to a pay-per-click website “www.moebel-boss.com” (“the Website”) with sponsored links to different websites including furnishing websites.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy have been met.
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s trade mark SB MÖBEL BOSS. The letters “SB” is the German abbreviation for “Selbstbedienung” which means “self service”. Further, MÖBEL BOSS and “moebel-boss” are identical as Ö (which is called Umlaut) can also be expressed as “oe”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent does not run a commercial business, nor is he associated with the Complainant or authorized to use the Complainant’s trade marks. The Respondent is not commonly known by the name SB MÖBEL BOSS. The Respondent does not use the Domain Name in connection with a bona fide offering of goods and services nor is the use a legitimate noncommercial or fair use.
The Complainant asserts the following to support its contention that the Domain Name has been registered and used in bad faith:
Firstly, the words “moebel-boss” in the Domain Name has no special meaning other than being the Complainant’s trade mark and company name. The only possible conclusion is that the Respondent has registered the Domain Name primarily because of its similarity to the Complainant’s well-known trade mark. The Respondent was clearly aware of the Complainant’s trade mark at the time of registration.
Secondly, the featuring part of the Doman Name <moebel-boss.com> is the same as that of the domain name adopted by the Complainant for its online activities, <moebel-boss.de>. This is evidence that the Respondent wishes to exploit the high reputation of the Complainant’s SB MÖBEL BOSS trade mark and <moebel-boss.de> domain name to generate traffic to his own website which is connected to the Domain Name.
The Respondent contends that the Complainant has failed to make out its case. His arguments are summarized as follows:
1. The words “moebel” and “boss” are all “natural words”.
2. The Complainant’s trade mark is different from the Domain Name – the trade mark is SB MÖBEL BOSS whilst the Domain Name is <moebel-boss.com>.
3. The Complainant’s trade mark is not registered in China or the United States of America.
4. At the time that the Domain Name was originally registered in 2005, it did not correspond to any known trade or service mark used or registered by the Complainant. The Respondent acquired the Domain Name in 2009.
5. The Domain Name is not currently in use because of staff health issues. The plans to launch the website have been delayed to 2012. The Respondent has no control over the links that the Website host includes on its parking page. Because the words “moebel” and “boss” are all natural words, the parking page shows related content.
6. The Respondent is based in China and therefore was not aware of the Complainant’s services in Germany.
7. The Respondent registered the Domain Name for his company website and wanted to develop it into a website with furniture and furniture related content. The website would be for own use and not to be slod [SIC] to third parties.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Respondent contends that the Domain Name was originally registered in 2005 and at the time it was registered, it did not correspond to any known trade or service mark used or registered by the Complainant. The Respondent’s contention is irrelevant for purposes of the first element. See paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). In any event, as further discussed below, the Panel notes that the Respondent apparently acquired the Domain Name in 2009.
The Panel is satisfied that the Complainant has established that it has rights to the trade mark SB MÖBEL BOSS. The Panel also accepts that MÖBEL may also be expressed as MOEBEL and that SB is the German abbreviation for the descriptive term “self service”. The Panel understands that the word “mőbel” or “moebel” means furniture in German.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the dominant elements of the trade mark SB MÖBEL BOSS or SB MOEBEL BOSS make up the Domain Name. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain name suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has responded and put forward his case.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name or demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services or demonstrable pre; (2) being commonly known by the domain name; or (3) making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Website is a pay-per-click site. According to paragraph 2.3 of the WIPO Overview 2.0, the Consensus View makes it clear that pay-per-click websites would not fall within the Oki Data principles of establishing a bona fide offering of goods and services in order to have a legitimate interest in the domain name. The Respondent alleges that he intends to launch his website in 2012 for furniture and furniture related content but has not provided any evidence to show demonstrable preparation that the Domain Name would be so used. The Respondent has failed to establish (1) above. The Respondent has also not submitted any arguments or evidence that he or his business is commonly known by the Domain Name. The Respondent has therefore not proven (2) above. The Respondent has also not submitted any evidence that he is making a legitimate non-commercial fair use of the Domain Name. He therefore also fails to demonstrate (3) above.
The Respondent contends that the two words “moebel” and “boss” are “natural words”. The Panel assumes that he means they are ordinary dictionary words. The Consensus View of paragraph 2.2 of the WIPO Overview 2.0 states as follows:
“Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”
The Respondent has not provided any explanation as to the reason for him to acquire the Domain Name. Whilst “moebel” does mean furniture in German, and the English word “boss” is also used by Germans, the combination is not a typical combination of dictionary words which one would acquire to use in a generic sense in connection with furniture content. This is particularly the case when the Respondent who is from China has not shown any evidence that he understands German, is intending to trade in German furnishings or intends to trade in Germany. The fact that this combination of a German and English term is also a trade mark of another is too much of a coincidence.
It is in both parties’ interests to submit the necessary evidence to prove their respective cases. This has been rather thin on both sides. The Complainant has contended that it operates a website connected to the domain name <moebel-boss.de>. The Complainant did not submit any evidence as to how long it has operated the website under this domain name. The Panel has looked at the website in question as no printouts of the website were submitted with the Complaint and is satisfied that the Complainant is connected to the website. The Panel also did a quick WhoIs search but was unable to ascertain the date of the registration of the domain name. Nor does the Panel know exactly how the registrant of the domain name is connected to the Complainant. The Panel looked at the “www.archive.org” and notes that the website connected to <moebel-boss.de> appeared to be in operation since December 2000. The Panel accepts that the domain name <moebel-boss.de> was in existence and operated by the Complainant certainly before the registration by the Respondent of the Domain Name. Having reviewed all the evidence, the Panel finds that the Respondent has failed to establish that he has rights or legitimate interests in the Domain Name and in the circumstances, the Complainant has succeeded in satisfying paragraphs 4(a)(ii) of the UDRP.
The Complainant has not filed any evidence to demonstrate its reputation in the SB MÖBEL BOSS or SB MOEBEL BOSS trade mark. In fact the Complaint did not contain any information about the Complainant’s activities other than the fact that it has trade marks in Class 35 relating to furnishing. The Panel had to look at the Complainant’s website for the information.
Notwithstanding this, the Panel does not find the Respondent’s contention that because he is based in China, he had no idea about the Complainant’s services in Germany very convincing especially since he registered or acquired a domain name with a German word within it and which also happens to be a trade mark belonging to a German furniture company. There is no convincing explanation as to why the Domain Name was selected. If as the Respondent contends that it was for the purpose of setting up a furniture website, it would appear implausible that he would not have been aware of the Complainant who trades under a domain name which is confusingly similar to the Domain Name except for the top level domain.
As previously mentioned, the Respondent contends that the Domain Name was originally registered in 2005. No evidence was submitted to show the original registration or the circumstances of the acquisition by the Respondent. Based on the available record the Respondent in this case acquired the Domain Name in 2009 and the acquisition of a domain name by a third party amounts to a new registration. Therefore, the relevant date to determine whether the Respondent knew of the Complainant’s trade mark rights is April 22, 2009. As set out in Section 4 above, the Complainant has registered trade mark rights since at least April 3, 2006. Moreover, as stated in section 6.C above, no evidence has been submitted to demonstrate the Respondent’s intentions to use the Website as a furniture website. The evidence we have before us is that the Website is a pay-per click website and that it has been registered and is being used without the authorization of the Complainant. The Panel finds that the Respondent in registering and using the Domain Name intended and is intentionally attempting to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s trade mark. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy, thus paragraph 4(a)(iii) of the Policy is met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <moebel-boss.com> be transferred to the Complainant.
Dated: October 25, 2011
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