Robert Bosch Corporation v. Derek Atkin
Claim Number: FA0801001139093
Complainant is Robert Bosch Corporation (“Complainant”), represented by Bradley
L. Cohn, of Pattishall, McAuliffe, Newbury, Hilliard
& Geraldson LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hydroboost.com>, registered with Names4Ever, http://www.Names4Ever.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 22, 2008.
On February 1, 2008, Names4Ever, http://www.Names4Ever.com, confirmed by e-mail to the National Arbitration Forum that the <hydroboost.com> domain name is registered with Names4Ever, http://www.Names4Ever.com and that the Respondent is the current registrant of the name. Names4Ever has verified that Respondent is bound by the Names4Ever registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 25, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on February 25, 2008.
On March 3, 2008, in compliance with The Forum’s Supplemental Rule 7, Complainant timely submitted an Additional Submission entitled “Reply in Support of Complaint”. On March 10, 2008, Respondent timely made an Additional Submission.
On March 3, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Complaint, Complainant contends as follows:
- The infringing domain name is identical to Complainant's HYDRO-BOOST mark with the exception of the omission of the hyphen and the addition of the ".com" top-level domain.
- Respondent is not generally known by the infringing domain name, and has not acquired any trademark or service mark rights in that name or mark. Complainant has not licensed or otherwise permitted Respondent to use the HYDRO-BOOST mark in connection with the website located at the disputed domain name, or in any other way. Respondent is not making a legitimate noncommercial or fair use of the infringing domain name, nor is Respondent using it in connection with a bona fide offering of goods or services. Instead, Respondent is using the domain name to redirect Internet users to the website of his client Hydratech Braking Systems (“Hydratech”), which advertises and sells products competitive with Complainant's HYDRO-BOOST brake assist units. This use of the disputed domain name does not constitute a bona fide offering of goods or services. Therefore, Respondent does not have rights or a legitimate interest in the disputed domain name.
- The infringing domain name is deliberately used for commercial gain to attract Internet users to Hydratech’s website based on a likelihood of confusion with Bosch's HYDRO-BOOST mark. Respondent registered and began making commercial use of the infringing domain name long after Bosch's adoption and use of its HYDRO-BOOST mark. Bosch's extensive use of its HYDRO-BOOST mark, coupled with the fact that Respondent registered the disputed domain name on behalf of a client who sells products that directly compete with Bosch's HYDRO-BOOST products, leads to the conclusion that Respondent registered and used the domain name at issue with actual knowledge of Bosch's rights. Respondent uses the infringing domain name to redirect internet users seeking information about Bosch's HYDRO-BOOST products to Hydratech's website, which advertises and sells competitive hydraulically actuated brake assist units. Respondent's use of the infringing domain name intentionally to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of Respondent's web site, is evidence of Respondent's bad faith under paragraph 4(b)(iv) of the Policy. All these facts establish that Respondent's registration and use of the infringing domain name was in bad faith in accordance with Paragraph 4(a)(iii) of the Policy.
Respondent’s Response contains the following contentions:
- Prior to the September 24, 2002 acceptance of the trademark, there was no trademark present for the term HYDRO-BOOST.
- Hydratech Braking Systems continues to stand by its claim that the term Hydroboost remains a new generic term for a power assist braking system that relies on hydraulic pressure as opposed to engine vacuum. The domain name refers to a type of product, an eponym that has been created from a product that has been on the market for over 30 years.
- Hydratech has no interest, nor is currently using the HYDRO-BOOST trademark. Hydratech sells hydraulic brake conversion kits for motor vehicles that are no longer in production. These kits consist of a hydroboost unit manufactured by the Robert Bosch Corporation. The domain name is an exact representation of the products sold by Hydratech.
- At the time that the domain name <hydroboost.com> was registered, April 9, 2002, there was no active trademark on the term “hydro-boost”. As such no element of bad faith can be concluded, as there was no infringement of said trademark at the time of domain registration, as they did not exist.
- Hydratech is not in competition with Robert Bosch in any manner. Hydratech makes no statement of affiliation or endorsement with the Robert Bosh Corporation. In order to establish bad faith, there would have to be a financial gain for Hydratech and financial loss for Robert Bosch Corporation. Given that the products sold by Hydratech at a retail level are actually Bosch manufactured units and are not sold to automotive Original Equipment Manufacturers, Robert Bosch actually benefits financially from Hydratech as it creates a new market for their existing products. It is an inaccurate statement made by Complainant that Hydratech is in competition with Robert Bosch.
C. Additional Submissions
In its Additional Submission of March 3, 2008, Complainant contends as follows:
- The HYDRO-BOOST mark has been used for more than 30 years by Bosch and its predecessors in interest as the name of its hydraulically actuated brake assist units. Complainant’s federal registration for the HYDRO-BOOST mark creates a strong presumption that this mark is distinctive, and not generic.
- Respondent – through his client Hydratech – did argue before the USPTO Trademark Trial and Appeal Board (“TTAB”) that the HYDRO-BOOST was generic. Hydratech later withdrew its petition, and the TTAB entered a final judgment with prejudice against Hydratech. Respondent does not address this final judgment of the TTAB on the issue of genericness. As a result, Respondent should be precluded from rearguing this issue in this proceeding.
- Respondent’s own evidence supports Bosch’s position. All of the references in the documents submitted by Respondent are to the HYDRO-BOOST units sold by Bosch or its predecessors in interest.
- To justify his registration and use of the infringing domain name, Respondent relies on his client Hydratech’s current claim that the HYDRO-BOOST mark is a generic term. Hydratech has previously admitted that HYDRO-BOOST is Bosch’s trademark. In December 2002, Hydratech’s website contained the following statement: “The term ‘Hydroboost’ is owned by the Robert Bosch Corporation.”
- Respondent has constructive and actual knowledge of Bosch’s rights in the HYDRO-BOOST mark when he registered the infringing domain name. Respondent’ argument that there was no active mark for HYDRO-BOOST at the time of the registration of the domain name is misguided. Bosch filed its application to register the mark on July 2, 2001, more than nine months prior to the registration of the domain name. Even if Bosch had not filed this application, Bosch still had common law rights in the mark, based on the substantial and continuous use of the mark by Bosch and its predecessors in interest. Respondent registered the domain name on behalf of Hydratech, who Respondent admits sells modified Bosch HYDRO-BOOST units. As such, Respondent knew of Bosch’s rights at the time he registered the infringing domain name.
- Respondent does not contest that the domain name is used to redirect Internet users to Respondent’s client’s website at <hydratechbraking.com>. The fact that Hydratech is using the infringing domain name to sell altered HYDRO-BOOST units does not give Respondent any legitimate interests in the domain name or constitute good faith use. Such alterations, done without Bosch’s authorization, make the products non-genuine.
In his Additional Submission of March 10, 2008, Respondent contends as follows:
- There are instances even after the acquisition of the Allied Signal organization where the use of the term remains hydroboost, not HYDRO-BOOST, and the term was not trademarked. It is this long-term non-trademarked use of the term that has created a known automotive industry term – hydroboost. A hydroboost is a commonly used name for a hydraulically actuated brake assist unit. It is this term that Hydratech used in the registration of its domain name. Complainant’s exhibit A (Declaration of Wayne Vance) Paragraph 4, “the reference to “hydroboost” is likely to the Allied Signal Product.” The exhibit substantiates the existence of the term and the lack of any trademark information confirms that the term is generic in nature. Attached Exhibit 2A which is a multiple page listing of the search term “hydroboost” from the Google search engine, substantiates the use of the term hydroboost as a hydraulically actuated brake component, and is not specifically referencing the Robert Bosch Corporation.
- There was a motion put forth by Hydratech to have the trademark terminated. This action was subsequently withdrawn with prejudice by Hydratech without a judgment being rendered by the USPTO. Hydratech simply did not have the financial resources to continue a long drawn out battle with a large corporation's seemingly infinite resources. So the answer to the question of the generic nature of the name as viewed by the U.S. Patent and Trademark Office is still undetermined.
- There is a bona fide offering and a legitimate interest in that the domain describes the products sold at the website. As indicated previously, Hydratech had created a new market segment for these Bosch manufactured units, which directly benefits the Robert Bosch Corporation.
- As there was no previous trademark activity on this term, there is no case of bad faith on behalf of Hydratech Braking Systems. It is unknown to Hydratech why it took in excess of five years after the acquisition of Allied Signal for the Robert Bosch Corporation to pursue the registration of the trademark. Given that, Respondent has not violated ICANN policy in the ownership and use of the <hydroboost.com> domain.
The Panel finds that the domain name at issue is confusingly similar to Complainant’s mark. Respondent is using the domain name to redirect Internet users to a client’s website where products in competition with Complainant's HYDRO-BOOST brake assist units are advertised. The Panel concludes that Respondent does not have rights or a legitimate interest in the domain name. Respondent knew or must have known Complainant’s mark at the time of registration, and used it in a domain name for a commercial purpose, creating the impression that Complainant is endorsing or is associated with the website of a business offering products in competition with Complainant. The Panel finds that the domain name in dispute was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Per the annexed registration certificate, Complainant proved that it has rights in the HYDRO-BOOST U.S. federal trademark for “Vehicle breaking systems comprised of hydraulically actuated force amplifying mechanisms, for use on land vehicles up to 20,000 pounds”, international class 012, registered on September 24, 2002 with Reg. No. 2,625,147.
The disputed domain
name consists of the “hydro” and “boost” elements, without the hyphen, and with
the addition of the gTLD “.com”. These
minor differences are inapt to distinguish the domain name at issue from
Complainant’s mark. See Health
Devices Corp. v.
Moreover, Respondent does not contest that the domain name is confusingly similar to the mark. The Panel thus concludes that the first element of the Policy is met.
Respondent states that he registered the domain name
on behalf of his client, Hydratech, because the domain name is a generic term
that refers to braking assist units for motor vehicles. However, during a cancellation proceeding
initiated by Hydratech before the TTAB against the validity of the HYDRO-BOOST,
Hydratech filed a withdrawal of the petition for cancellation without the
written consent of Robert Bosch, the Complainant in the present proceeding. Accordingly, the TTAB dismissed the petition
for cancellation with prejudice. In his
Additional Submission Respondent contends that Hydratech’s withdrawal and
TTAB’s finding do not equal to a final determination on the issue of
genericness. The Panel cannot agree with
Respondent because a federal trademark registration enjoys a presumption
of validity, inter alia that the trademark is not generic. See Electronic Commerce Media cited above (“Complainant has two federal trademark registrations
for the mark EC.COM which, under
Respondent also contends that Hydratech sells hydraulic brake conversion kits for motor vehicles that are no longer in production, that these kits “consist of a hydroboost unit manufactured by the Robert Bosch Corporation”, and that the domain name is an exact representation of the products sold by Hydratech.
We learn from the Response that Hydratech kits consist of HYDRO-BOOST units manufactured by Complainant, and adapted or modified by Hydratech without Complainant’s authorization. That is, Hydratech apparently is marketing non-genuine equipment, where units manufactured by Bosch, but altered or modified by Hydratech, are being used as parts for the final product. Therefore, contrary to Respondent’s allegation, the term “HYDROBOOST” cannot be an exact representation of Hydratech’s products. Hydratech is not an authorized distributor or reseller of Complainant’s goods marketing genuine goods, but a company selling equipment competing with Complainant’s HYDRO-BOOST units, and profiting from the use of the disputed domain name consisting of Complainant’s mark, to attract Internet users to its own website and business. This is not a bona fide or a fair use of the domain name either by Respondent or by Hydratech pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Volvo Trademark Holding AB v. Franks Foreign Auto D2004-0315 (WIPO Jun. 21, 2004) (“Respondent’s intent is not only to make a commercial gain, but to do so by attracting customers to its site by using the famous VOLVO mark, thereby misleading and deceiving them into believing its business and goods are somehow sanctioned or approved by Complainant and are genuine.”)
The Panel concludes that Complainant has proved the second element of the Policy.
Respondent contends that he registered the domain name on behalf of a client, Hydratech, a company that normally buys Bosch’s HYDRO-BOOST and uses them to build hydraulic brake conversion kits. Thus, at the time of the domain name registration, Respondent knew or must have known of the HYDRO-BOOST mark.
When considering registration in
bad faith, it is irrelevant that the trademark registration was obtained after
the domain name was registered. On the
one hand, Complainant’s rights in the HYDRO-BOOST mark do not arise with
registration, but instead date back to the filing date.
On the other hand, Respondent contends that HYDRO-BOOST brake assist units are well known in the automotive industry since the 1970’s. As see above, Respondent did not succeed in evidencing that “hydroboost” was a generic term before of after Complainant filed the application for the registration of the HYDRO-BOOST mark. Complainant and its predecessors in interest possessed common law rights in the mark since as early as November 30, 1974. As Respondent knew or must have known this fact, the Panel concludes that the registration of the domain name was in bad faith.
As to use in bad faith, the website at the domain name in dispute redirects Internet users to Hydratech’s website at <hydratechbraking.com>. Given that this website is commercial in nature, and that the goods and services advertised and marketed by Hydratech are related to brake assist units, there is a risk that web surfers searching for Complainant’s HYDRO-BOOST product and trademark, after being diverted to Hydratech website, might conclude that Complainant is somehow associated with Hydratech, or that it endorses or supports Hydratech or its products and services.
Respondent contends that in order to establish a circumstance of bad faith registration and use, the Policy requires that Hydratech have a financial gain corresponding to a financial loss for Robert Bosch. The Panel does not agree with Respondent. Policy ¶ 4(b)(iv) states the following:
by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location. (Panel’s emphasis).
This circumstance of bad faith registration and use merely requires a purpose of commercial gain. No specific financial result, positive or negative, either for the complainant or the respondent (or any third party) is required.
In sum, Complainant has proved the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hydroboost.com> domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: March 17, 2008
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