Robert Bosch GmbH v. Marketing Total S.A.
Claim Number: FA0701000888552
Complainant is Robert Bosch GmbH (“Complainant”), represented by Dieter Alvermann, of Robert Bosch GmbH, Robert-Bosch-Platz 1, Gerlinger 70839 Germany. Respondent is Marketing Total S.A. (“Respondent”), PO Box 556, Main Street, Charlestown, West Indies KN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boschcompany.com>, registered with Belgiumdomains, LLC.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 15, 2007.
On January 16, 2007, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <boschcompany.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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 January 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 2007, 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@boschcompany.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 16, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <boschcompany.com> domain name is confusingly similar to Complainant’s BOSCH mark.
2. Respondent does not have any rights or legitimate interests in the <boschcompany.com> domain name.
3. Respondent registered and used the <boschcompany.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1886 Complainant, Robert Bosch GmbH, has continuously used the BOSCH mark to refer to a variety of products, including electronic car components, electric power tools, household appliances and security systems.
Complainant has registered the BOSCH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 812,075 issued August 2, 1966) and the German Patent and Trademark Office (Reg. No. 282,781 issued January 14, 1922). Complainant also holds trademark registrations for the mark with the European Community’s Office for Harmonization in the Internal Market (Reg. No. 67,744 issued April 1, 1996) and the World Intellectual Property Organization (“WIPO”) (Reg. No. 265,711 issued February 14, 1963).
Respondent registered the <boschcompany.com> domain name on October 27, 2006 and is maintaining a commercial web directory at the disputed domain name that contains links to third-party websites offering the products of Complainant and its competitors for sale.
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’s trademark registrations for the BOSCH mark in the United States, Germany, and the European Community, as well as with WIPO, sufficiently demonstrate Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
Respondent has failed to adequately
differentiate the <boschcompany.com> domain name from
Complainant’s BOSCH mark my simply affixing the common term “company” to the
mark in the domain name. In Amer.
Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the
panel found the respondent’s <amextravel.com> domain name to be
confusingly similar to Complainant’s AMEX mark because the “mere addition of a
generic or descriptive word to a registered mark does not negate” a finding of
confusing similarity under Policy ¶ 4(a)(i).
As Respondent’s domain name also features a registered mark combined
with a common term, Respondent’s <boschcompany.com> can also not
avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125
(WIPO Apr. 16, 2001) (finding that the respondent’s domain names were
confusingly similar to Complainant’s GOOGLE mark where the respondent merely
added common terms such as “buy” or “gear” to the end).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).
Respondent’s failure to answer the
Complaint raises a presumption that Respondent has no rights or legitimate
interests in the disputed domain name. See
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4,
2000) (finding that the respondents’ failure to respond can be construed as an
admission that they have no legitimate interest in the domain names); see
also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding
that the respondent has no rights or legitimate interests in the domain name
because the respondent never submitted a response or provided the panel with evidence
to suggest otherwise). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Marketing Total S.A.,” and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent has not established rights or legitimate interests in the <boschcompany.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Coppertown Drive-Thru Systems, LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the confusingly
similar <boschcompany.com> domain name for its own commercial gain
by maintaining a website displaying links to third-party sellers of the
products of Complainant and its competitors.
In Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002),
the panel concluded that the respondent was not making a bona fide
offering of goods or services where it used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors. Because similar circumstances exist in the
present case, the Panel concludes that Respondent is not using the disputed
domain name for a bona fide offering of goods or services pursuant to
Policy ¶ 4(a)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(a)(iii). See Chanel, Inc. v.
Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the
complainant’s mark to sell the complainant’s perfume, as well as other brands
of perfume, is not bona fide use).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
By maintaining a website with links to third-party sellers of Complainant’s products, as well as the products of Complainant’s competitors, Respondent appears to have registered the <boschcompany.com> domain name for the primary purpose of disrupting Complainant’s business under the BOSCH mark. As a result, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Moreover, Respondent is likely collecting click-through fees for diverting Internet users to third-party websites selling competing and non-competing products. In The Univ. of Houston Sys. v. Salvia Corporation, FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel determined that the use of a confusingly similar domain name to operate a website with competing and non-competing links provided evidence of bad faith pursuant to Policy ¶ 4(b)(iv). In this case as well, Respondent is taking advantage of the confusing similarity between the <boschcompany.com> domain name and Complainant’s mark and profiting from the goodwill associated with the mark in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <boschcompany.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: February 28,2007
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