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Keba AG v. E-BOX S.a.r.l. [2004] GENDND 1481 (18 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Keba AG v. E-BOX S.a.r.l.

Case No. D2004-0815

1. The Parties

The Complainant is Keba AG, of Linz, Austria, represented by Hintermayer Haunschmidt Minichmayr Burgstaller Tusek Riedler, attorneys at law, of Linz, Austria.

The Respondent is E-BOX S.a.r.l., c/o Antoine Mercier, of Paris, France, represented by Cabinet Plasseraud, of Paris, France.

2. The Domain Name and Registrar

The disputed domain name, <kebox.com> (the “Domain Name”), is registered with Melbourne IT Ltd., of Melbourne, Australia.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2004, by e-mail. The hardcopy file followed on October 18, 2004. On October 6, 2004, the Center transmitted by e-mail to Melbourne IT (the “Registrar”) a request for registrar verification in connection with the Domain Name. On October 7, 2004, the Registrar transmitted by e-mail to the Center its verification response, confirming that the Respondent was listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification of October 13, 2004, by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint the same day. The Center verified that the Complaint and its amendment satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 October 14, 2004. Pursuant to the Rules, Paragraph 5(a), the due date set for the Response was November 3, 2004. The Response was filed with the Center on November 3, 2004.

On November 10, 2004, the Center appointed Bernhard F. Meyer-Hauser as Sole Panelist in this matter. The Panel finds that it was properly appointed and constituted in accordance with the Policy, the Rules, and the Supplemental Rules.

4. Factual Background

The following facts appear from the Complaint and its amendment, the Response, and their annexes.

Complainant, incorporated under the laws of Austria, with subsidiaries in Germany, U.S.A., and China, is an automation services provider with more than 530 employees worldwide. Complainant’s product range encompasses programmable logic and robot controls, handheld terminals, and customer-specific operating and displaying systems. The KEBA services automation sector, moreover, offers services to financial institutions and other services companies. A new product in the aforementioned product range is the parcel delivery system, KEBOX.

Complainant is the holder of various trademarks to market its products and services, including KEBA and KEBOS. In addition, Complainant holds, inter alia, the domain names <keba.com>, <keba.at>, <keba.com.cn>, and <kecur.at>.

Respondent appears to be a competitor of Complainant in some business areas. E-BOX S.a.r.l., incorporated under the laws of France in the year 2000 by its founder and current owner-manager, Mr. Mercier, is an industrial and services automation provider, offering, inter alia, “industrial solutions to parcel distribution”.

In addition to its trade name, E-BOX S.a.r.l., Respondent, through its manager, is the holder of the French trademark “K E-BOX la boîte à clefs”, registered in 2001. Respondent, furthermore, markets its products and services on the Internet through its main website under the domain name <e-box.fr>.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is confusingly similar to its trademarks and service marks, that Respondent has no rights or legitimate interest in respect of the Domain Name, and that the Domain Name was registered and is being used in bad faith. Consequently, Complainant requests the Domain Name be transferred.

Additional respective contentions, if relevant to the dispute, are included in the following discussions and findings.

B. Respondent

Respondent contends that the Domain Name is not identical and not confusingly similar to Complainant’s trademarks and service marks, that, through its trade name and trademark, it has a legitimate interest in respect of the Domain Name, and that the Domain Name was not registered and is not used in bad faith. In addition, Respondent implicitly alleges that Complainant’s action amounts to an act of reverse domain name hijacking.

Additional respective contentions, if relevant to the dispute, are included in the following discussions and findings.

6. Discussions and Findings

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

A. Preliminary Issues

Respondent, in its Response, contends that Complainant’s trademark registrations were submitted in German only, thus denying Respondent review of said documents. Respondent therefore moved to hold the Complaint to be deficient.

As established in earlier UDRP cases (see, e.g., Deutsche Telekom AG v. Terrabit Working Group, WIPO Case No. D2004-0153), it is imperative in dispute resolution proceedings that fundamental due process requirements are observed. Such requirements generally include that documents substantially affecting a party’s rights must be translated into the language of the proceeding if submitted in a foreign language. Nevertheless, in the present case, Respondent only contends that it was unable to ascertain if the classes of “goods [and services] covered by the invoked trademarks are similar” to its own products and services.

Classes of goods often are relevant in ordinary trademark disputes. However, they are unimportant, or at best marginally important, in domain name disputes under the UDRP. Moreover, Respondent itself submitted documents regarding its trade name and trademark registration in the French language without translations. Thus, its motion, cannot be sustained and is in breach of the principle of non venire contra factum proprium.

B. Identical or Confusingly Similar

Complainant alleges that the Domain Name registered by Respondent is confusingly similar to several of its trademarks, KEBA and KEBOS in particular. It points out that the only difference between the denomination KEBOS and the Domain Name <kebox.com> is the last letter “X” instead of an “S”. Complainant does not explain, however, how Internet users in fact may be misled or may associate the Domain Name with Complainant’s trademarks.

Respondent, on the other hand, contends that the syllable “X” at the end of the Domain Name is a strong distinction from Complainant’s trademarks KEBA and KEBOS because it is “easily perceptible both visually and phonetically”. Moreover, the second part of the Domain Name, “BOX”, is a word associated with the English term “box”, and thus gives it a meaning of its own. Hence, Respondent concludes that there is no confusing similarity between the Domain Name and Complainant’s trademarks.

Whereas a confusing similarity between the Domain Name and Complainant’s trademark KEBA has not been established by Complainant and cannot be seen by the Panel, the contention of a confusing similarity between the Domain Name KEBOX and Complainant’s trademark KEBOS is more difficult to assess. At least phonetically, a certain similarity cannot be denied. On the other hand, it is true, that the component “BOX” in the Domain Name is very strong and has an independent, distinctive meaning which is missing in Complainant’s trademark KEBOS. Nevertheless, in view of what follows, the issue of confusing similarity may be left open in this case since a decision can be reached on other grounds.

C. Rights or Legitimate Interests

According to Paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, inter alia, by showing any of the following elements:

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant maintains that neither the Complainant nor its licensor has licensed or otherwise permitted the Respondent the use of its trademarks in any way. Complainant further holds that none of the defenses of Paragraph 4(c) of the Policy apply. Accordingly, Complainant contends that Respondent has no right or legitimate interest in the Domain Name.

Respondent, on the other hand, asserts that, through its owner-manager, Mr. Mercier, it is the holder of the trademark “K e-box la boîte à clef” and thus registered the Domain Name to market the products and services under aforesaid trademark. Its trade name, E-BOX, moreover, would be very similar to the Domain Name. While Respondent’s lengthy trademark, registered in 2001, well ahead of Complainant’s KEBOX invention, is not fully reflected in the disputed Domain Name, it does contain the most important component “K E-BOX” which seems to establish a legitimate right to use the Domain Name in connection with Respondent’s products. The Panel, therefore, finds that Respondent has advanced a valid defense, and the requirements outlined in Paragraph 4(a)(ii) of the Policy have not been met by Complainant’s request.

D. Registered and Used in Bad Faith

Since Respondent has established its rights to the Domain Name, it has neither registered nor used it in bad faith. Hence, the condition of Paragraph 4(a)(iii) has not been proved either by Complainant.

E. Reverse Domain Name Hijacking

For the sake of completeness, as to Respondent’s allegations of reverse domain name hijacking, the Rules, Paragraph 1, hold that it “mean[s] using the Policy in bad faith to attempt to deprive a registered domain name holder of the domain name”.

Although Complainant did not succeed in the present proceedings, its assertions regarding its own rights in the Domain Name are not so far-fetched and incomprehensible as to constitute bad faith conduct. Therefore, Respondent has not made a showing of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Panel holds that Complainant has not met the onus in respect of Paragraph 4(a)(ii) and (iii). Therefore, the Complaint is denied.

Bernhard F. Meyer-Hauser
Sole Panelist

Date: November 18, 2004