WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SB Möbel Boss Handelsgesellschaft mbH & Co. KG v. Milan Kovac / Privacy Protect
Case No. D2012-0626
1. The Parties
The Complainant is SB Möbel Boss Handelsgesellschaft mbH & Co. KG of Porta Westfalica, Germany, represented by Weber & Sauberschwarz, Germany.
The Respondent is Milan Kovac of Bratislava, Slovakia / Privacy Protect of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <moebelboss.com> (the “Domain Name”) is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2012. On March 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 2, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email communication to the parties regarding the language of proceedings. The Complainant filed the Complaint translated in the Slovak language on April 5, 2012.
The Center verified that the Complaint together with the amended and translated 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 April 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2012.
The Center appointed Alexandre Nappey as the sole panelist in this matter on May 15, 2012. 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.
Language of proceedings
The language of the Registration Agreement is Slovak. The default position provided by paragraph 11 of the Rules is therefore that Slovak should be the language of the proceedings unless the parties otherwise agree. The Panel has, however, the power to decide otherwise having regard to all the circumstances of the proceedings.
The Complaint was filed in English on March 26, 2012 and on April 2, 2012 the Center wrote to the parties inviting the Complainant to either submit the Complaint in Slovak or file a request that the proceedings be in English no later than April 5, 2012. The amended Complaint was filed in Slovak on April 5, 2012 and the Respondent was given the opportunity to file its response by April 7, 2012. The Respondent has not made any submissions.
The Panel further notes that since September 2010 the Respondent Milan Kovac has been the respondent in numerous prior UDRP cases under the Policy and, so far as can be determined, in all of those cases the proceedings were in English.
In the circumstances the Panel determines that for fairness between the parties and in the interest of efficient and expeditious disposition of the proceedings, the proceedings should be conducted in English.
4. Factual Background
The Complainant is a German based company operating in the field of furniture retail.
It is the owner of the nominative trade mark SB MÖBEL BOSS in class 35 for inter alia “retail services in relation to furnishings of all kinds (…)”.
The trade mark SB MÖBEL BOSS is registered as a Community Trade Mark since April 3, 2006 under CTM trade mark no. 005032172, for services in class 35.
The Complainant also holds right in the International Registration no. 977473, nominative trade mark SB MÖBEL BOSS dated August 19, 2008, based on the previously cited CTM registration.
The Complainant finally holds rights in the German nominative trade mark SB MÖBEL BOSS, registered under no. 39814975 for products in classes 11, 20 and 24 since June 29, 1998.
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 Domain Name was registered on January 16, 2006. The Domain Name resolves to a pay-per-click website at “www.moebelboss.com” (“the Website”) with sponsored links to different websites including furnishing websites.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s trade mark SB MÖBEL BOSS. The letters “SB” stand for the German abbreviation for “Selbstbedienung”, which means “self service”. Further, MÖBEL BOSS and “moebelboss” 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 it 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 word “moebelboss” 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 <moebelboss.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 its own website which is connected to the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that the disputed domain name be transferred:
(1) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based upon the trade mark registrations provided with the Complaint, it appears that the Complainant has rights in the trade mark SB MÖBEL BOSS. Some of these rights postdate the Domain Name (i.e. the CTM and International Registration being registered respectively since 2008 and 2009, while the Domain Name was registered in 2006).
However the German trade mark of the Complainant registered since 1998 predates the Domain Name <moebellboss.com> by many years.
The Panel is satisfied that the Complainant has established that it has rights in the trade mark SB MÖBEL BOSS.
As to whether the Domain Name is identical or confusingly similar to this trade mark, the relevant comparison to be made is with the second-level part of the Domain Name, namely “moebelboss”, as it is well-established that the gTLD suffix (i.e., “.com”) should be disregarded for this purpose, see for instance WIPO Case No. D2006-0006 Champagne Lanson v. Development Services/MailPlanet.com, Inc “For the purpose of these proceedings, the addition of the gTLD “.com” is not significant in determining whether the domain name is identical or confusingly similar to the mark. The domain name <lanson.com> is thus identical to Complainant’s mark”
The Panel accepts that MÖBEL may also be commonly expressed as MOEBEL in German speaking countries for practical reasons, understands that the word “mőbel” or “moebel” means furniture in German and that “SB” is the German abbreviation for the descriptive term “self service”.
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 are reproduced in the Domain Name in issue.
In a recent decision involving the Complainant and concerning the domain name <mobelboss.com>, a UDRP panel decided that: “the Domain Name comprises the word “mobelboss”. This includes neither the initials SB nor the umlaut, yet the Domain Name retains what the Panel regards as the distinctive part of the Complainant’s SB MÖBEL BOSS trademark. The Panel finds the Domain Name to be confusingly similar to that mark.” (SB Möbel Boss Handelsgesellschaft mbH & Co. KG v. Padi WIPO Case No. D2011-1580).
Accordingly, the Panel finds that the Complainant has proven the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) addresses the following question:
“2.1 Is the complainant required to prove that the respondent lacks rights or legitimate interests in the domain name?
Consensus view: While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
Here, the Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show that it does have rights or legitimate interests in that name: see Betsson Malta Limited v. John Droker WIPO Case No. D2010-0883 and the cases there cited. The Respondent has made no attempt to do so.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant has established this element.
C. Registered and Used in Bad Faith
Finally, the Complainant has to demonstrate that the Domain Name has been registered and is being used in bad faith by the Respondent.
Considering that the Complainant’s trade mark is not merely descriptive of the activities of furniture retail, the fact that the Respondent registered the Domain Name in issue cannot be placed on the account of fortuity. As claimed by the Complainant, the Panel accepts that the Respondent has registered the Domain Name in issue with knowledge of the Complainant’s trade mark.
Further, the use by the Respondent of the Domain Name to offer furniture for sale by companies competing with the Complainant on a website displaying the name “Moebel Boss” is clearly intended to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or the products on its website.
Under the Policy, paragraph 4(b)(iv), such use constitutes evidence of bad faith use.
Finally, the Panel notes that the Respondent has been recently involved in numerous UDRP proceedings, all of which resulting in transfer decisions. See among others, Compagnie Générale des Etablissements Michelin v Milan Kovac / Privacy--Protect.org, WIPO Case No. D2012-0634, Briggs Medical Service Company Inc. v Milan Kovac / Privacy--Protect.org, WIPO Case No. D2011-2193, The American Automobile Association, Inc v aaaaautoinsurance.com Privacy--Protect.org aaanetacceess.com Privacy--Protect.org aaa-netaccess.com Privacy--Protect.org Isaac Goldstein Milan Kovac, WIPO Case No. D2011-2069 and Petroleo Brasileiro S.A – PETROBRAS v Petroleo Brasileiro S.A – PETROBRAS, WIPO Case No. D2011-1251.
The Panel therefore considers that the Respondent has engaged in a pattern of conduct of preventing trade mark holders from reflecting their marks in a corresponding domain name. (See further details WIPO Overview 2.0, paragraph 3.3).
In the absence of any countervailing evidence of good faith registration, the Panel finds the Respondent to have registered and to be using the Domain Name in bad faith.
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 <moebelboss.com> be transferred to the Complainant.
Dated: May 29, 2012