Robert-Bosch GmbH v. Heman Hosainpana c/o JahanHosting
Claim Number: FA0608000771816
Complainant is Robert-Bosch GmbH (“Complainant”), represented by Jan Zecher, of Gleiss Lutz Rechtsanwaelte, Maybachstrasse 6, Stuttgart 70469 Germany. Respondent is Heman Hosainpana c/o JahanHosting (“Respondent”), Emam, Divandareh, Kurdestan 66418, Iran, Islamic Republic of.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bosch-group.com>, registered with Onlinenic, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 10, 2006.
On August 8, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <bosch-group.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 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@bosch-group.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
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:
1. Respondent’s <bosch-group.com> domain name is confusingly similar to Complainant’s BOSCH mark.
2. Respondent does not have any rights or legitimate interests in the <bosch-group.com> domain name.
3. Respondent registered and used the <bosch-group.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Robert-Bosch GmbH, manufactures, markets, and distributes electronic car components and electric power tools worldwide generating $51.1 billion in revenue in 2005. Complainant has registered numerous marks throughout the international community including the BOSCH mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 812,075 issued August 2, 1966).
Respondent registered the <bosch-group.com> domain name on July 8, 2006. Respondent’s disputed domain name resolves to a website that prominently displays Complainant’s mark along with a picture of Complainant’s products and provides information for participation in an investment scheme.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant has established rights in the BOSCH mark through
registration with the USPTO. See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Complainant contends that Respondent’s <bosch-group.com> domain name is confusingly similar Complainant’s mark. Respondent’s disputed domain name contains Complainant’s entire BOSCH mark and adds a hyphen along with the generic term “group.” The Panel finds that such changes fail to properly distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent lacks all rights or legitimate interests in the <bosch-group.com> domain name. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant contends that Respondent is using the <bosch-group.com>
domain name to operate a website that prominently displays Complainant’s BOSCH
mark and Complainant’s products in addition to providing information for
participation in an investment scheme.
The Panel finds that Respondent is attempting to pass itself off as
Complainant for its own commercial gain.
Such conduct by Respondent is neither a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum
May 30, 2003) (finding that the respondent attempts to pass itself off as the
complainant online, which is blatant unauthorized use of the complainant’s mark
and is evidence that the respondent has no rights or legitimate interests in
the disputed domain name); see also Crow v.
LOVEARTH.net, FA 203208 (Nat. Arb. Forum
Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to
a registered mark, attempts to profit by passing itself off as Complainant . .
. .”).
Furthermore, Complainant contends that Respondent is neither
commonly known by the <bosch-group.com> domain name nor authorized
to register domain names featuring Complainant’s BOSCH mark in any way. In the absence of evidence suggesting
otherwise, the Panel finds that Respondent has not established rights or
legitimate interests in accordance with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s prior rights in the domain name precede
the respondent’s registration; (3) the respondent is not commonly known by the
domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <bosch-group.com> domain name
resolves to a website that prominently displays Complainant’s trademark as well
as a picture of Complainant’s well-known products. In light of this evidence, the Panel finds that Respondent had
actual knowledge of Complainant’s mark.
The Panel finds that registration and use of a domain name that is
confusingly similar to a known mark is evidence of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See
Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual knowledge of a commonly known mark at the time of
registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th
Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse.").
Furthermore, Respondent’s use will likely cause confusion as to Complainant’s sponsorship of and affiliation with the resulting website. The Panel finds that such use of a domain name for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <bosch-group.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 21, 2006
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