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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Robert Bosch GmbH v. Gurol Yardimci

Case No. D2005-0147

 

1. The Parties

The Complainant is Robert Bosch GmbH, Germany, Gerlingen-Schillerhцhe, Germany, represented by Matthias Mann, Verl, Germany.

The Respondent is Gurol Yardimci, Derence-Kocaeli, Turkey.

 

2. The Domain Name and Registrar

The disputed domain name <mybosch.com> is registered with Tucows.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 9, 2005. On February 9, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On February 10, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient on February 16, 2005, the Complainant filed an amendment to the Complaint on March 3, 2005. The Center verified that the Complaint together with the amendment to the Complaint 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 March 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2005.

The Center appointed Peter Burgstaller as the sole panelist in this matter on May 2, 2005. 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 language of the administrative proceeding is English.

 

4. Factual Background

The Complainant asserted, and provided evidence (Annexes 2 – 9) in support of, and the Panel finds established, the following facts:

The domain name at issue was registered on October 21, 2003, by the Respondent with Tucows.

The Complainant is an international well-known company with its focus amongst other things on automotive technology, industrial technology as well as technique for durable goods and buildings.

The Complainant is the owner of the community trademark “BOSCH”, registered for the classes 7, 9, 11, 12, 20, 35, 36, 38, 39, 41 and 42 on June 26, 2000. The Complainant has also registered the sign “BOSCH” as trademark with the Turkish patent office.

The Complainant sent a warning letter on November 3, 2004, to the Respondent, requesting that it transfer amicably the domain name at issue to the Complainant – without success.

 

5. Parties’ Contentions

A. Complainant

The disputed domain name <mybosch.com> is confusingly similar to the trademark “BOSCH” in which the Complainant has rights, the mere prefix “my” not being a distinguishing feature.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized the Respondent, granted any license or otherwise permitted the Respondent to use its trademarks for any domain name incorporating the registered trademarks. The Respondent has moreover no prior rights or legitimate interests in the disputed domain name.

The disputed domain name was registered and is being used in bad faith by the Respondent. There are circumstances indicating that the disputed domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trademark or service mark, for valuable consideration in excess of the domain name registrant’s out-of pocket costs directly related to the Domain Name. The Respondent’s email of November 24, 2004 (Annex 7) leads to the conclusion that the Respondent waits for an offer made by the Complainant to buy the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

To make out a successful Complaint, it is the Complainant’s burden to prove under paragraph 4(a) of the Policy that:

(i) the domain name at issue is identical or confusingly similar to a trade mark or a service mark in which Complainant has rights; and

(ii) 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.

The Complainant must prove that each of these three elements is present, even though the Respondent did not reply.

A. Identical or Confusingly Similar

The letters “my”, to an English language reader, introduce the concept of possessiveness. That which is possessed is the letters that follow, namely “Bosch”, which is the Complainant’s trademark. The addition of the letters “my” has the effect of focusing the reader’s attention on the Complainant’s trademark. Accordingly, the Panel considers that a reader of the Domain Name would be confused into thinking that the Domain Name is associated with the Complainant; the prefix “my” even tends to compound the confusion (see e.g. Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No.  D2000-1007; Ferrero S.p.A. v. Mr. Jean-Francois Legendre, WIPO Case No. D2000-1534).

Regarding the top level domain “.com”, this Panel follows the principle which applies to UDRP cases, that the addition of a gTLD does not affect the confusing similarity or identity between the domain name and the trademark.

The Panel therefore finds that the Complainant fulfills paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As mentioned above, no response has been filed and the Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name.

Proper analysis of paragraph 4(a)(ii) involves a shifting of the burden of proof from the Complainant to the Respondent. Although the Complainant first has the burden to make a prima facie case that Respondent has no rights or interests in the domain name, if it does so, the burden of proof then shifts to the Respondent to offer demonstrative evidence of his rights or legitimate interests; however the burden of proof first remains on the Complainant (see e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270). This “burden shifting” is appropriate given that paragraph 4(c) of the Policy, which is entitled “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint,” discusses the kind of evidence a Respondent should provide to show that it has rights to or legitimate interests in the domain name. The burden of proof, however, does not shift as the Policy makes clear that “the complainant must prove that each of these three elements are [sic] present.” Policy, paragraph 4(a).

The statements/contentions of the Complainant along with the rest of the evidence in the record, are for this Panel sufficient to make out a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name. The Panel, therefore, follows the Complainant’s contentions that the Respondent is not in any way related to the Complainant’s business, that the Respondent is not one of the Complainant’s agents and does not carry out any activity for, or has any business with it. Moreover, it does not appear that the Respondent has any other connection or affiliation with the Complainant; for example, the Complainant has never given any authorization to the Respondent to make any use of its trademark in order to acquire the domain name at issue.

Furthermore, the Respondent has not been known under the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Respondent is the Registrant of the domain name in dispute, registered with Tucows in 2003. Because of the fame of the trademark BOSCH and the Complainant’s worldwide activities, it is the Panel’s conviction that, when registering the domain name at issue, the Respondent knew of the existence of the Complainant’s trademarks. This conviction is supported by Annex 7, where the Respondent states: “Yes, I know much about Robert Bosch GmbH as most people do”.

Moreover, it is a popular and well-known marketing strategy to combine the name of a product or service with the add-on formative “my…” or “your…” to create a personal identification of consumers with the product or service involved. This is especially common for Internet sites; the prefix “my” plus a famous trademark in a domain name refers evidently to a special service in connection with that trademark (see e.g. Ferrero S.p.A. v. Mr. Jean-Francois Legendre, WIPO Case No. D2000-1534; Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007).

The Panel, therefore, believes that the disputed domain name was registered in bad faith, because the domain name, which is composed of the Complainant’s famous trademark with the prefix “my” evokes an association with the Complainant and its products/services. It is reasonable to conclude that only someone who was familiar with the mark and what it stands for would register the domain name at issue.

The Panel moreover concludes, from the information given in Annex 7 by the Respondent, that it has registered and is using the domain name at issue for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. Even though the Respondent states “Not For Sale” regarding the domain name at issue (Annex 9), the following facts nonetheless lead the Panel to that conclusion:

- The Respondent explains its bad (especially) financial situation without any reason to do so (Annex 7).

- The Respondent states: “…I will not sell it someone else who has no right to use it although I need money so much” and “Now, it is so valuable for me and as I see for Robert Bosch GmbH.” (Annex 7)

- The Respondent asks for contacts on its website under the headline “MYBOSCH.COM”, although the Respondent does not inform about anything else than the domain name at issue (Annex 9).

Given the widespread use and notoriety of the trademark BOSCH and taking into account that the Respondent has given no evidence, whatsoever, of any actual or contemplated good faith use by it of the disputed domain name (it even failed to submit a response), and that the Complainant sought an amicable solution of this matter (without success), and given the facts set out in Annexes 7 and 9 to the Complaint, it is fairly difficult to conceive of any plausible actual or contemplated use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

Taken together, these facts are compelling enough for the Panel to find that the domain name <mybosch.com> was registered and is being used by the Respondent in bad faith according to paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mybosch.com> be transferred to the Complainant.


Peter Burgstaller
Sole Panelist

Date: May 5, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0147.html

 

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