The Complainant is SB Möbel Boss Handelsgesellschaft mbH & Co. KG of Porta Westfalica, Germany, represented by Weber & Sauberschwarz, Germany.
The Respondent is Padi of Surabaya, Indonesia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
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 GoD, Inc. a request for registrar verification in connection with the Domain Name. On September 20, 2011, GoD, 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 26, 2011. Following informal communications from the Respondent on September 30, 2011 and October 3, 2011, the proceedings were suspended at the Complainant’s request on October 4, 2011, 2011. On October 26, 2011, the proceedings were re-instituted at the Complainant’s request on October 25. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2011. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 8, 2011.
The Center appointed Alan L. Limbury as the sole panelist in this matter on November 11, 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. 4. Factual Background
The Complainant, a supplier of a variety of furniture, is the proprietor in several countries of the registered trademark SB MÖBEL BOSS, including in Germany, No. 39814975, registered on June 29, 1998. “SB” is an abbreviation for “Selbstbedienung” i.e. “self service”.
The Domain Name was registered on July 21, 2011. Prior to the filing of the Complaint, it resolved to a website displaying the name Möbel Boss, offering for sale in the German language a variety of furniture, with links to other websites, including those of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
The Complainant says the Domain Name is confusingly similar to its trademark and that the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says that, to the best of its knowledge, the Respondent does not run any commercial business, is not associated with the Complainant, is not authorized to use the Complainant’s marks and is not commonly known by the name SB-Möbel Boss. Its use of the Domain Name is not a bona fide offering of goods nor a legitimate non-commercial or fair use.
As to bad faith, the Complainant says the word “mobelboss” has no dictionary meaning, so the only possible conclusion is that the Respondent registered the Domain Name primarily because of its similarity to the Complainant’s well-known trademark in order to generate traffic to other shopping domains. B. Respondent
The Respondent made no formal reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman,WIPO Case No. D2000-1080 and AltaVista Company v. Grandtotal Finances Limited et. al.,WIPO Case No. D2000-0848. A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the Domain Name and the trademark alone, independent of any products or services for which the Domain Name is used or other marketing and use factors usually considered in trademark infringement cases: Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. 2001-0110.
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Jason Trevenio,WIPO Case No. D2007-0648.
Ignoring, as is appropriate, the generic top-level domain “.com” (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429), 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.
The Complainant has established this element. B. Rights or Legitimate Interests
The Panel finds that the SB MÖBEL BOSS mark is distinctive. 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 by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 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
The use by the Respondent of the Domain Name to offer furniture for sale on a website displaying the name Möbel 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 both bad faith registration and bad faith use. 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.
The Complainant has established this element. 7. Decision
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 be transferred to the Complainant.
Alan L. Limbury
Sole Panelist
Dated: November 19, 2011
Full & Egal Universal Law Academy