Complainant is bett1.de GmbH, Germany, represented by JBB Rechtsanwaelte, Germany.
Respondent is DIBMat GmbH, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2020. On October 12, 2020, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On October 13, 2020, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 23, 2020. In accordance with the Regulations, article 7.1, the due date for Response was November 12, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 16, 2020. The Center appointed Richard C.K. van Oerle as the Panel in this matter on December 10, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background Complainant is a German company doing business in five European countries. It claims to be one of the market leaders in the German bed segment and was for many years the only e-commerce website for mattresses in Germany. Complainant sells goods via its own web shops and via other online platforms. According to the evidence submitted, in addition to several trademarks registered elsewhere, Complainant has rights in the European Union device mark BETT1, registration number 018109851, filed on August 19, 2019, and registered on January 4, 2020. It concerns a figurative mark in which “BETT1” is written in a special script: Complainant filed the mark for goods and services in International Classes 20, 24 and 35. The trademark will be referred to hereunder as the “Trademark”. The Domain Name is registered by Respondent on February 13, 2020, and is not actively used. 5. Parties’ Contentions A. Complainant By 2017, Complainant had already achieved the highest sales of all online mattress retailers with a single mattress and it has further extended this lead and achieved sales of more than EUR 150 million in 2017 and 2018. It achieved great recognition beyond the borders of Germany through many years of test winner placement by the German independent institution for product testing. Since use commenced, the Trademark has become well known through the long and extensive use and advertising by Complainant. This has included, among other promotional activities, press releases, website and social media presences, and the organizing of Industry conferences for customers. Complainant is holder of 24 country code Top-Level domain names composed of BETT1, followed by a country code Top-Level Domain (ccTLD), mostly for countries in Europe, but also abroad, with the exception of the ccTLD “.nl”. According to Complainant, the Domain Name is confusingly similar to the Trademark. The Domain Name and the Trademark are confusingly similar, as the text component of the Trademark is fully incorporated in the Domain Name. The signs are conceptually, visually and aurally similar. The Domain Name was solely chosen to create a confusingly similar domain name to the Trademark and the various domain names held by Complainant. Respondent has no right or legitimate interest in respect of the Domain Name. To Complainant’s knowledge, Respondent has not been commonly known as “bett1” or a derivation of the same. The Domain Name is primarily used to block Complainant’s expansion in the European market, because it is not being used by Respondent since the date of creation in February 2020. No reasons are apparent as to why Respondent’s use of the Domain Name is in connection with a bona fide offering of goods or services. Respondent is also not making a legitimate noncommercial or fair use of the Domain Name. Respondent uses the Domain Name intentionally and misleadingly for commercial gain, to divert consumers and to tarnish the Trademark. Respondent is a subsidiary company of Emma Sleep GmbH, which is the sole shareholder of Emma Matratzen GmbH, Complainant’s direct competitor in the field of mattresses, beds and bedding. The objects clause of Respondent is “Testing of mattresses, beds, bedding, home textiles and similar products, the further development of appropriate test procedures, the development of products in the field, advice to third parties on test procedures and product development and related business” and therefore solely of a supporting and complementary function for Emma Matratzen GmbH. Complainant and Emma Matratzen GmbH have been plaintiff and defendant in more than 60 lawsuits, all in the field of competition law since 2016. There is no doubt Respondent knows of Complainant and Complainant’s Trademark. It was clearly foreseeable for Respondent that the ccTLD “.nl” was a logical addition to the series of ccTLDs already held by Complainant. Respondent has registered the Domain Name to hinder Complainant’s expansion in the European market by blocking the ccTLD “.nl”. Respondent has registered the Domain Name for the purpose of disrupting the business of a competitor. These facts prove Respondent’s bad faith registration and use, according to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonable available means to achieve actual notice of the Complaint to Respondent, but despite this, Respondent has not filed a Response. The Panel shall therefor rule on the basis of the Complaint. Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions: a. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and Considering these conditions, the Panel rules as follows: A. Identical or Confusingly Similar The figurative Trademark consists of a stylized representation of the letters “BETT1”; this textual element is dominant. The non-textual elements of the Trademark do not detract in any way from the prominence of the word element of the Trademark, which is the most prominent element. The Domain Name incorporates the entirety of the letters of “BETT1”. It is established case law that the ccTLD “.nl” may be disregarded in assessing the confusing similarity between the Trademarks on the one hand, and the Domain Name on the other hand (see, inter alia, Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008). The Panel finds that the Domain Name is confusingly similar to the Trademarks within the meaning of article 2.1(a) or the Regulations. Therefore, the first requirement is met. B. Rights or Legitimate Interests Complainant has established that Respondent has no rights to or legitimate interests in the Domain Name. Complainant claims that Respondent has no relationship with Complainant and is not authorized to use the Domain Name nor is Respondent a representative or licensee of Complainant. Respondent has moreover never used and is not using the Domain Name. Respondent has also not filed a Response and no evidence has been found which shows that Respondent has rights to or legitimate interests in the Domain Name. The Panel concludes that Respondent has no rights to or legitimate interests in the Domain Name. Therefore, the second requirement is met. C. Registered or Used in Bad Faith Respondent has not given any explanation for the use of the Trademark in the Domain Name. Respondent and Emma Matratzen GmbH are sister companies under the same group of companies. Between Emma Matratzen GmbH and Complainant more than 60 lawsuits have taken place since 2016. Considering this, it is likely that Respondent has taken notice of Complainant’s Trademark. It seems that Respondent has only registered the Domain Name to hinder Complainant’s expansion in the European market by blocking the ccTLD “.nl”, as it was foreseeable for Respondent that the this ccTLD was a logical addition to the series of ccTLDs already held by Complainant. Respondent has registered the Domain Name for the purpose of disrupting the business of a competitor. These factors are indicative of bad faith registration and use of the Domain Name by Respondent and therefore, the third requirement is met. 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name Richard C.K. van Oerle
b. the respondent has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith.
Panelist
Date: December 24, 2020
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