Robert-Bosch GmbH v. Registrant Registrant Registrant
Claim Number: FA0607000755417
Complainant is Robert-Bosch GmbH (“Complainant”), represented by Jan Zecher, of Gleiss Lutz Rechtsanwaelte, Maybachstrasse 6, Stuttgart 70469 Germany. Respondent is Registrant Registrant Registrant (“Respondent”), P.O. Box No. 71826, KCPO, Hong Kong HK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <robertbosch.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 26, 2006.
On July 20, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <robertbosch.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 August 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 21, 2006 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 postmaster@robertbosch.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a well-known international seller of power
tools and equipment.
Complainant’s business was established in 1886, and it has
sold millions of power tools and equipment worldwide.
Complainant holds several national and international
trademark registrations for its ROBERT BOSCH mark, including with the German
trademark office (Reg. No. 247758, issued May 31, 1920, last renewed January 4,
2000).
Respondent is not authorized to use Complainant’s ROBERT
BOSCH mark, and Respondent is not
associated with Complainant in any way.
Respondent registered the <robertbosch.com> domain name on May 22, 2003.
Respondent’s domain name resolves to a website that displays links to Complainant’s website as well as to third-party competing websites, some of which are in direct competition with Complainant’s business.
Respondent’s <robertbosch.com> domain name is identical to Complainant’s ROBERT BOSCH mark.
Respondent does not have any rights or legitimate interests in the <robertbosch.com> domain name.
Respondent registered and uses the <robertbosch.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or 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.
Complainant has established rights in the ROBERT BOSCH trademark through its national and international trademark registrations. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002): "Panel decisions have held that registration of a mark is prima facie evidence of validity…." See also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates; it is sufficient that a complainant can demonstrate a mark in some jurisdiction).
Respondent’s <robertbosch.com> domain name is identical to Complainant’s ROBERT BOSCH mark as it contains Complainant’s mark in its entirety with the mere addition of the generic top-level domain (“gTLD”) “.com.” In Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), a panel found that the <pomellato.com> domain name was identical to a complainant’s mark because the generic top-level domain (“gTLD”) “.com” after the name POMELLATO was not relevant. See also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the <termquote.com> domain name is identical to a complainant’s TERMQUOTE mark. Accordingly, the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the <robertbosch.com> domain name. Under the Policy, Complainant must first make a prima facie case in support of its allegations. The burden then shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to Respondent.
Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is not authorized to use its ROBERT BOSCH mark and that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information, made a part of the record in this proceeding, does not suggest that Respondent is commonly known by the disputed domain name. Nor is there evidence in the record to suggest that Respondent is or ever has been known by the <robertbosch.com> domain name. This being so, the Panel concludes that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(a)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) that complainant’s prior rights in the domain name precede that respondent’s registration; (3) that respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark there in question and never applied for a license or permission from a complainant to use the trademarked name).
The evidence of record also shows that Respondent is using the disputed domain name to divert Internet users attempting to locate Complainant’s website and goods to Respondent’s own website where Respondent displays links to other websites that include Complainant’s website as well as third-party websites, some of which are in direct competition with Complainant. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), a panel found that a respondent’s demonstrated intent to divert Internet users seeking a complainant's website to a website of that respondent and for that respondent's benefit was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to that complainant’s competitors, was not a bona fide offering of goods or services). On the facts before us, we agree with those assessments. Accordingly, Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent acted in bad faith by
registering and using the <robertbosch.com> domain name, which is
identical to Complainant’s mark. It is
undisputed that Respondent uses the disputed domain name to redirect Internet
users to a website that displays links to other websites, including
Complainant’s website and websites that are in direct competition with the
business of Complainant. In EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000), a panel found that a respondent registered and used the domain
name <eebay.com> in bad faith where that respondent used the domain name
to promote competing auction sites. See also
S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding that a respondent acted in bad faith by
attracting Internet users to a website that competed with a complainant’s
business).
It also appears from the
uncontested evidence in this proceeding that Respondent has registered and is
using the <robertbosch.com> domain name to benefit
commercially from the good-will associated with Complainant’s ROBERT BOSCH mark
by displaying links to various websites, some of which compete with Complainant,
and, presumably, by receiving click-through fees for the operation of its
website. Such use of Complainant’s mark
in the <robertbosch.com> domain name risks creating confusion as
to Complainant’s possible sponsorship and association with the disputed domain
name and corresponding website.
Respondent’s use of the disputed domain name thus constitutes bad faith
registration and use under Policy ¶ 4(b)(iv).
See TM
Acquisition Corp. v. Warren, FA
204147 (Nat. Arb. Forum Dec. 8, 2003): “Although Complainant’s principal
website is <century21.com>, many Internet users are likely to use search
engines to find Complainant’s website, only to be misled to Respondent’s
website at the <century21realty.biz> domain name, which features links
for competing real estate websites.
Therefore, it is likely that Internet users seeking Complainant’s
website, but who end up at Respondent’s website, will be confused as to the
source, sponsorship, affiliation or endorsement of Respondent’s website.” See also Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits
from its diversionary use of a complainant's mark when the domain name in
question resolves to commercial websites and that respondent fails to contest
the complaint, it may be concluded that that respondent is using the domain
name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Finally under this
heading, it is evident that Respondent registered the contested domain
name with actual or constructive knowledge of Complainant’s rights in the ROBERT
BOSCH mark by virtue of Complainant’s prior registration of its mark with the
pertinent national and international authorities. Registration of an identical or confusingly similar domain name
despite such actual or constructive knowledge evidences bad faith registration
and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
For all of these
reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <robertbosch.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 7, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum