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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Robert Bosch GmbH v. Asia Ventures, Inc.

Case No. D2005-0946

 

1. The Parties

The Complainant is Robert Bosch GmbH, of Stuttgart, Germany, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.

The Respondent is Asia Ventures, Inc., domiciled in Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The disputed domain name <boschappliance.com> is registered with The Registry at Info Avenue, d/b/a IA Registry.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2005. On September 5, 2005, the Center transmitted by email to The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On September 7, 2005, The Registry at Info Avenue d/b/a IA Registry 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 and technical contact. The Center verified that 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 September 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2005.

The Center appointed Mr. David J. A. Cairns as the Sole Panelist in this matter on October 19, 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.

 

4. Factual Background

The Complainant is a German corporation that manufactures and sells a wide range of products, including household appliances, under the BOSCH name and trademark. The Complainant licenses the BOSCH trademark to a joint venture called BSM Bosch und Siemens Hausgerate. This joint venture is one of the world’s three largest manufacturers of household appliances and uses the BOSCH trademark throughout the world in connection with the sale of a variety of household appliances.

The Complainant is the owner of registered trademarks for the word BOSCH throughout the world. These registrations include United States registration No. 812,138 for “refrigerators and parts of refrigerators, comprising cooling and conditioning units, compressors, evaporators, and refrigerator cabinets” registered on August 2, 1966, and No. 1,226,566 for “domestic electric appliances, namely, contact grills, automatic toasters, egg boilers, automatic tea and coffee makers; plastic heated foil sealers for household use”, registered on February 8, 1983. The Complainant’s trademark registrations for BOSCH trademark throughout the world include thirteen registrations in China and Hong Kong in international classes 7 and 11, the earliest of which are Hong Kong registrations B997/58 and B998/1958, registered on October 30, 1958.

The Complainant, either directly or through subsidiaries, owns and uses various registered domain names that include the BOSCH trademark. These include the domain name <boschappliances.com> for the promotion and sale of household appliances under the BOSCH trademark.

The Respondent registered the disputed domain name on December 25, 2001. The home page at this address offers links to a range of general services and links for household appliances, and includes links for products bearing the Complainant’s trademark and also for the products of its competitors, such as the links ‘Amana Appliances’ and ‘Miele’. Following a link for ‘Bosch Appliances’ brings various ‘Sponsored Results for Bosch Appliances’ with short descriptions and further links to the websites of retailers, such as the following:

“Bosch Appliances Online – Free Shipping. Full line. Authorised Bosch dealer. Also find DCS, Dacor, GE Monogram, Fisher & Paykel, Viking and more. Free shipping and no sales tax. Family owned business since 1949. www.cuttingedgeappliances.com”

“Bosch Appliance: Sears Official Site
Shop from a huge selection of ranges, refrigerators, washers, dryers and more by Kenmore, GE, Amana, Whirlpool, Maytag and other quality brands at Sears.com. www.sears.com”

 

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is confusingly similar to the BOSCH trademark because the disputed domain name incorporates the entirety of the BOSCH trademark. The addition of a descriptive or generic term, such as appliance, to the BOSCH trademark does not distinguish the disputed name from the BOSCH trademark, especially where the added term is descriptive of or generic of the type of products sold by the Complainant.

The Complainant further states that the Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and is using the disputed domain name in bad faith. The Respondent is not commonly known by the disputed domain name, nor has the Respondent any rights in the BOSCH trademark. The Respondent has not been licensed by the Complainant or any related company. Further, the use of the BOSCH trademark to promote both the Complainant’s products and the products of its competitors does not constitute a bona fide offering of goods or services. Rather, the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the Complainant’s sponsorship or affiliation with the Respondent’s website, or with the non-BOSCH products sold on the site. The Complainant also alleges the Respondent had both actual and constructive knowledge of the Complainant’s rights, and so could not have registered the disputed domain name with the intention of using it legitimately.

The Complainant also contends that the disputed domain name is an obvious example of ‘typosquatting’ because the Respondent has simply omitted the final letter from the <boschappliances.com> domain name. Further, the Complainant alleges that the Respondent has a history of registering and using domain names in bad faith that are confusingly similar to the trademarks of others, and refers to twelve previous adverse UDRP decisions. Finally, the Respondent’s use of the disputed domain name to attract customers to its website for commercial gain, by creating a likelihood of confusion surrounding the famous BOSCH trademark, demonstrates the Respondent’s bad faith registration and use of the disputed domain name.

B. Respondent

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

 

6. Discussion and Findings

The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.

Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Whether the Disputed Domain Name is Identical or Confusingly Similar to the Complainant’s Trademarks

The Panel accepts that the Complainant owns registrations of the BOSCH trademark in the United States, China and Hong Kong, and throughout the world.

The disputed domain name is not identical with the BOSCH trademark, but does incorporate this trademark entirely. The fact that a trademark is incorporated in its entirety in a domain name is a solid indication, but does not ipso facto mean, that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870). However, this is another case of the addition to a registered trademark of a prefix or suffix descriptive of the products sold by the Complainant under the trademark which, as many UDRP decisions demonstrate, will almost invariably be insufficient to prevent the disputed domain name from being confusingly similar to the registered trademark.

In the present case, the disputed domain name is confusingly similar to the BOSCH trademark for the following reasons: (i) BOSCH (which appears to be a family name) is neither a common nor descriptive word, and is inherently distinctive; (ii) ‘appliance’ is an ordinary descriptive word; (iii) ‘appliance’ describes a type of product sold under the BOSCH trademark; (iv) the evidence demonstrates that the BOSCH trademark has an established reputation throughout the world in respect of appliances; and (v) Internet users will associate the disputed domain name with the Complainant’s trademark, and assume that the Respondent’s website offers the appliances of either the Complainant or an authorised distributor of BOSCH products.

Therefore the suffix ‘appliance’ does not avoid a confusing similarity between the BOSCH trademark and the disputed domain name, and so the first element of the Policy is satisfied.

B. Whether the Respondent has no Rights or Legitimate Interests in respect of the Domain Name

The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent owns or has contractual rights in any registration of a BOSCH trademark; (ii) the Respondent is not authorised or licensed by the Complainant to use the BOSCH trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) the Respondent is using the word BOSCH in its disputed domain name and in the content of its website in a trademark sense to refer to the Complainant and the Complainant’s appliances; (v) the Respondent is using the disputed domain name to redirect users to retailers that sell both the Complainant’s appliances, and the appliances of the Complainant’s competitors; and (vi) the Respondent is using the disputed domain name for commercial gain (as evidenced, for example, in the ‘sponsored’ links to retailers).

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. Paragraph 4(c)(ii) and (iii) of the Policy are not applicable in this case, because the Respondent is not commonly known by the disputed domain name, and there is a use with the intention of commercial gain of the disputed domain name.

Further, paragraph 4(c)(i) does not apply because the Respondent is not using the domain name in connection with “a bona fide offering of goods or services”. The use of the Complainant’s trademark to offer for sale or to direct customers to the products of the Complainant’s competitors is objectionable, and therefore not bona fide, as a misleading use of a trademark, as a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of ‘bait and switch’ selling: (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd. Case WIPO Case No. D2004-0088.)

Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Whether the Respondent has Registered and is Using the Disputed Domain Name in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) refers to circumstances indicating the use of the domain name with the intention to attract, for commercial gain, Internet users to the 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 the Respondent’s website or location or of a product or service on the website or location.

The Respondent chose a domain name incorporating the trademark of one of the world’s leading appliance manufacturers, added the suffix ‘appliance’, and uses the domain name to direct internet users to a website offering links to appliance retailers. In these circumstances, the Panel finds that the Respondent’s choice of domain name was deliberate, with prior knowledge of the Complainant’s trademark, and with the intention to profit from the reputation and goodwill of the Complainant’s trademark. The Respondent registered and is using the disputed domain name to attract, for commercial gain, Internet users to its own website in the belief that its website has some connection with the Complainant’s trademark as to source, sponsorship, affiliation or endorsement, when in fact there is no such connection.

Secondly, as already explained, the Respondent is using the disputed domain name in bad faith by offering for sale or directing customers to the products of the Complainant’s competitors on a website incorporating the BOSCH trademark in its domain name.

Thirdly, the disputed domain name differs in only a single letter (the plural ‘s’ of ‘appliances’) from the domain name of Complainant’s own website. The Panel considers that the Respondent’s choice of domain name was made not only with prior knowledge of the Complainant’s trademark, but also with prior knowledge of its internet address, and that the Respondent adopted the disputed domain name to catch internet users that omitted the final letter from the Complainant’s internet address. Such calculated ‘typosquatting’ amounts to bad faith registration and use of the disputed domain name.

For these reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith by Respondent.

 

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 <boschappliance.com> be transferred to the Complainant.


David J. A. Cairns
Sole Panelist

Dated: November 2, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0946.html

 

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