WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robert Bosch Limited, Robert Bosch GmbH v. Elite Comfort Systems Limited
Case No. D2002-0256
1. The Parties
The Complainants are, firstly, Robert Bosch Limited, a limited liability company of P.O. Box 98, Broadwater Park, North Orbital road, Denham, Uxbridge, Middlesex UB9 5HJ, United Kingdom and, secondly, Robert Bosch GmbH a German company, of Wernerstrasse 1, D-70469 Stuttgart, Germany. They are represented by W.P.Thompson & Co. of Coopers Building, Church Street, Liverpool L1 3AB, United Kingdom.
The Respondent is Elite Comfort Systems Limited of First Floor, West House, Redburn Road, Westerhope, Newcastle upon Tyne, NE5 1NB, United Kingdom and it is represented by Ward Hadaway, Solicitors, of Sandgate House, 102 Quayside, Newcastle upon Tyne NE1 3DX, United Kingdom.
The Respondentís administrative, technical and billing contact is Angela Turner, at Elite Comfort Systems Limited of Redburn Road, Newcastle upon Tyne, Tyne & Wear NE1, United Kingdom.
2. The Domain Name and Registrar
The Domain Name, which is the subject of this Complaint, is <boschuk.com>
The Registrar is Abacus America, Inc. dba names4ever of 5266 Eastgate Hall, San Diego, CA 92121, United States of America ("Abacus").
3. Procedural History
On March 18, 2002, a Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and under the Rules for the Uniform Domain Name Dispute Resolution Policy implemented by ICANN ("the Rules"). On March 26, 2002, a single hard copy of the Complaint was received by the Center and the Center acknowledged this on March 19, 2002, and requested four further copies which were forthcoming on April 3, 2002.
The Center sent a Request for Registrar Verification to Abacus on March 21, 2002, by email. Abacus responded on March 25, 2002, and confirmed: (1) that it had not received a copy of the Complaint, (2) that it was the Registrar for the disputed domain name, (3) that the Respondent, Elite Comfort Systems, was the current Registrant of the disputed Domain Name, (4) that the Respondentís contact details as set out above were correct, (5) that the UDRP applied to the disputed Domain Name, (6) that the current status of the contested domain name was ACTIVE, (7) that the language of the Agreement was English, and (8) that the Agreement indicated that the Registrant would submit to the jurisdiction of the courts at the location of the principal office of the Registrar for the adjudication of any disputes as provided in the UDRP Dispute Policy.
On April 8, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier, facsimile, and e-mail, as well as to its Administrative and Technical contacts.
A Response was received from the representatives of the Respondent on April 25, 2002, which was acknowledged by the Center on the following day.
The Center sent a Notification of the Appointment of an Administrative Panel giving a Projected Decision Date of May 16, 2002, to the Respondent and the Complainant on May 2, 2002, via email. A copy was also sent to the Panel on the same date by email.
The Center sent by email a Transmission of Case File to the Panel, copying the Respondent and the Complainant on May 2, 2002. Hard copies of this material were sent to the Panel on the same day and received on May 7, 2002.
4. Factual Background
Activities of the Complainant
The First Complainant is a subsidiary of the Second Complainant who, according to the Complaint, is a multi-national corporation with worldwide sales in excess of £15 billion in 1999. The word ĎBoschí, as well as being included within the name of both Complainants, is its principal trade mark, and it is registered and used throughout the world in connection with a very large number of goods ranging from automotive equipment to consumer goods, communications technology and capital goods. The Second Complainant is a world leader in these fields and the trade mark BOSCH is by any standards a famous trade mark with significant goodwill and reputation in the United Kingdom and, presumably, elsewhere.
The First Complainant is wholly owned by the Second Complainant and carries out all of the activities identified above in the United Kingdom and in all of which it utilizes the trade mark BOSCH. It, its representatives was engaged in all the pre-Complaint negotiations with the Respondent or its representatives.
The Panel notes that there was no independent confirmation of any of the above statements.
It is claimed that as both of the Complainants have rights in trade marks to which the Domain Name is identical and/or confusingly similar, it is therefore appropriate for them to make the Complaint jointly.
Activities of the Respondent
The Respondent is said to be a small, privately owned company operating primarily in the North East of England. It was first incorporated in 1997, and its principal activities are apparently the sales, as agents, of air-conditioning, heating and ventilation products and services. Its turnover (principally commission and installation work) is in the region of £200,000 per year, on sales for principals of in the region of £1,200,000.
The Complainantís Trademarks
The Second Complainant owns a large number of trademarks registered either in the United Kingdom, or as International Registrations, or as Community trademarks all of which consist of the word BOSCH alone or in conjunction with other wording such as MAGNETO, TUNE UP, SERVICE, Ďon boardí, and Ďhat die lösungí, or with various devices. These cover goods and services in Classes 1, 6, 7, 8, 9, 11, 12, 17, 20, 21, 35, 36, 37, 38, 39, 41, and 42.
The information relating to these trade marks was not very well presented. In the first place, many of the marks are more than 10 years old and, as no information was provided relating to their renewal or possible non-renewal, these marks might no longer be in force. However enough of them are less than 10 years old to establish that the Second Complainant does have substantial rights in the trade mark BOSCH. Copies of the trade marks were supplied in two separate annexes, both of which were entitled "Second Complainantís Trade Marks (United Kingdom)". The first of these did indeed contain copies of a number of UK trade marks, but it also contained copies of a number of International registrations which happen to have been extended, among other countries, to the UK. The second annex actually contains copies of only Community trade marks.
Furthermore, no evidence is presented to justify the statement that the First Complainant also has rights in these trade marks.
5. The Partiesí Contentions
The Complainants state that, given the goodwill that both Complainants have in the name BOSCH, it is of great importance to them that they should recover the disputed Domain Name.
It would appear that the first that either Complainant knew of the disputed Domain Name was when e-mails from Mr. Martin Lee Wilson, Director of the Respondent, were forwarded to the legal counsel of the First Complainant, apparently by someone in BSH Home Appliances Ltd. They were dated January 16, 2002, and contained the information that the Respondent was at that time receiving unsolicited e-mails intended for personnel of the First Complainant. Another e-mail on the same day (which was missing from the Complaint and which the Panel only saw because it was annexed to the Respondentís Response) also contained a threat to the effect that the Respondent would take court action in connection with the unsolicited e-mails". The Complainant contends that this demonstrates, by the Respondent's own admission, that the Respondent's registration and maintenance of the Domain Name was giving rise to confusion on the part of the public.
The First Complainant's objections to the tone of correspondence from the Respondent in this respect were outlined in its letter of January 17, 2002, in which it pointed out that the Respondentís use of the disputed Domain Name amounted to passing-off and that its continued use would result in legal action by the Second Complainant. At the same time, the First Complainant asked for the transfer of the disputed Domain name.
In its response of January 18, 2002, the Respondent attempted to justify its registration of the disputed Domain Name on the basis that, at the time the Domain Name was registered, the Respondent was an appointed distributor of the First Complainant. However according to the Complainants the Respondent was not an officially appointed distributor of either Complainant. The Respondent did, however, have a sales account with BSH Home Appliances Limited, a company partly owned by the Second Complainant and hereinafter referred to as "BSH".
The Complainants claim that in any event, the use of the disputed Domain Name constituted trade mark infringement and passing off and would cause confusion to users, or be likely to do so. Consumers visiting the site boschuk.com were at least likely to think that the site had some connection with Robert Bosch GmbH. or Robert Bosch Limited. In that case, they would be confused and misled and the Complainants maintain that it is not relevant whether or not Bosch products were advertised for sale on that site, since there was no guarantee for either Complainant that this would always be the case or that their competitor's products would not also be advertised for sale on the same site.
The Complainant contends that in this latest correspondence, the Respondent further demonstrates its male fides in this matter by making financial demands of the Second Complainant regarding the transfer of the disputed Domain Name. These demands were rebutted by the First Complainant's in a letter dated February 1, 2002, which again, although specifically referred to in the Complaint, was not attached thereto, so the Panel saw it only (again) through the courtesy of the Respondent.
The Complainant further contends that the Respondent's demands for excessive compensation provide evidence that the Respondent has registered and used the Domain Name in bad faith.
No more was heard until February 19, 2002, when, in a letter from the Respondentís representatives, they sought to justify their client's actions, and stated that the development of the website took place with the knowledge of one Mr. Peter Burnett of BSH.
The Complainants assert that at no time was the Respondent's registration or maintenance of the disputed Domain Name consented to by either the First Complainant, or the Second Complainant, or by any individual of those companies or by any company with either sufficient knowledge or authority to give such consent in this matter. As part of the on-going negotiations, on February 27, 2002, the First Complainant made the Respondent a final offer of £220 in return for the transfer of the Domain Name. This offer was believed to equate with the Respondent's direct costs incurred in registering and maintaining the Domain Name and a similar Domain Name boschuk.co.uk. However, the offer was rejected by the Respondent, in a letter from its representatives, dated March 1, 2002.
B. The Respondent
The Respondent accepts that there a number of trade mark registrations for BOSCH in the name of the Second Complainant, and insofar as the Complaint is made on its behalf, then that would appear to satisfy the requirement to show trade mark rights in respect of the Complaint. The Respondent also accepts that the Domain Name is similar to those trade marks.
However, the Respondent contends that it is clear that others within the group of companies of which the second Complainant may be the ultimate parent also have equal rights to use, and to license the use of the BOSCH trade mark.
The Respondent annexed to its Response copies of documents showing discussions between itself and Mr. Peter Burnett of BSH. It contends that those discussions commenced in around September 1999, and, as far as the Respondent is concerned, resulted in the formal appointment of the Respondent as a Distributor for Bosch air conditioning products for the North East and the North West of England. In 2000, the appointment also included Siemens products. That appointment lasted between October 1999 and April 2001. As far as the Respondent was concerned BSH, and in particular Peter Burnett, had authority to appoint the Respondent to that position.
The Respondent is unclear as to precisely what the Complainantsí relationship is with BSH. Prior to the receipt of the Complaint, the Respondent's dealings in respect of the disputed Domain Name had been with or on behalf of the Second Complainant. Indeed, the formal letter seeking undertakings from the Complainantsí representatives, W P Thompson and Co, dated February 27, 2002, says it is sent on behalf of the First Complainant. It would appear to the Respondent, however, that such trade mark registrations as are annexed to the Complaint are all in the name of the Second Complainant.
The Respondent contends that there had never been any suggestion, until the Complaint, that it was not an officially appointed distributor in respect of Bosch products. The Complaint is, the Respondent contends, disingenuous in trying to suggest that BSH Home Appliances Limited is in some significant way separate from the Robert Bosch organizations, and therefore unable to appoint the Respondent to use the BOSCH name in respect of the sale of Bosch appliances. The Respondent has not been able to work out the precise interrelationship between the English and the German companies involved, but BSH's own Report and Accounts which were annexed to the Response, refer to the company as being a "wholly owned subsidiary of BSH Bosch und Siemens Hausgeräte GmbH". The Respondent presumes that "BSH" is short for Bosch und Siemens Hausgeräte and that "Hausgeräte" means Ďhousehold appliancesí. The same Report describes the principal activity of that company as the sale in the United Kingdom of domestic electrical and gas appliances and the sale of related spares and servicing. To all intents and purposes, although the Respondent is not able to point to the exact link with Robert Bosch GmbH, BSH does seem to be in a position to use (and presumably to authorize the use) of the BOSCH name. If that was not in fact the case, the Respondent was unaware of the position. An undated copy of a sales promotional leaflet produced by BSH, which was annexed to the Response, refers to the Respondent as the North East Distributors of "Bosch Air Conditioners", and the name BOSCH also appears above BSHís own details. The fact that the Respondent was conscious of the need to ensure proper use of BOSCH trade marks is made clear in its letter of March 27, 2000, to Mr. Peter Burnett in which it is said "The reason we are contacting you is that we require some additional 'artwork' from yourself so we can include Bosch products and the logo and also this is another area which can be mentioned to the Bosch marketing people".
The Respondent contends that as part of its genuine offering of Bosch products, and in discussion with Mr. Burnett of BSH, it purchased two domain names <boschuk.co.uk> and <boschuk.com> through agents in March 2000. The Respondent then invested in the design and development of websites under these names, solely for the purposes of selling Bosch products. The Respondent claims to be a small and uncomplicated company, and its records are not complete. The Respondent does not have, for instance, any print of the sites as they were maintained between March 2000 and April 2001, when its appointment ceased. The agent used for the purchase of the domain names and much of the development work (McNultys) is in liquidation, and the Respondent has not been able to obtain further details from that source. However, the Respondent is adamant that the sites were used solely for the purposes of promotion of Bosch products and for no other purpose, and that there was no criticism in respect of its use of the "Bosch" name, a fact which was well known to BSH at that time. The Respondent made its intention to set up an e-commerce site clear in a letter of March 21, 2000, BSH. Indeed, Mr. Burnett was also asked to contribute to the cost of the websites, but indicated that this was a cost which should be borne by the Respondent. In short, the Respondent's outlay in respect of those websites was essentially for the ultimate purpose of increasing sales of Bosch products.
Annexed to the Response were copies of cheque stubs showing payments by it in 2000, to McNultys which it contends were in respect of the website development and to others (Monument Computers and Service Link) which it claims were in respect of advertising the website. The two cheques paid to Service Link were for half of a total figure of £1,468.76. The total of the figures for which the Respondent has documentary records (including all the payments to Service Link) is £2,320.64. The Respondent has also paid (but cannot provide documentary evidence for) an annual maintenance fee of £160 plus VAT.
In April 2001, when its appointment ceased, the Respondent states that it had no further use for the websites, and since that time the sites have remained inactive. There was annexed to the Response a print of the non-active page for <boschuk.co.uk> hosted by Multimedia Internet Solutions Limited, which has been the way in which that particular website, and which is apparently the subject of another complaint, has allegedly been presented since April 2001. The Respondent was unable to access the <boschuk.com> site.
No complaints were received from the Complainants until the Respondent itself contacted BSH Home Appliances Limited in January 2002. The Respondent's particular concern arose out of the receipt of e-mails clearly intended for Bosch personnel, and the data protection issues which it thought arose. Copies of all of the correspondence which passed between the First Complainant, the Respondent, and their respective representatives were annexed to the Response, because the Respondent contends that the Complaint itself contained only a selective extract of the relevant correspondence. The Respondent alleges that from all these e-mails and letters it can be seen that it was keen to suggest a solution, primarily on the basis of (probably erroneous) advice from the North East Chamber of Commerce as to the Data Protection Act issues.
The initial response from the First Complainant demanded immediate transfer of the domain names, without compensation and expressed the view that there was "no doubt" that legal action would be taken by its parent company in respect of continued use of the domain names (a contention which the Respondent believes is manifestly unmaintainable).
In the light of the escalating correspondence, the Respondent instructed solicitors, who wrote to the First Complainant on February 19, 2002, detailing the circumstances of the Respondent's appointment, confirming that the Respondent wanted to achieve a commercial settlement which reimbursed it for its out of pocket costs directly related to the domain names, and giving details of those costs. However, The Respondent contends that the response on behalf of the First Complainant through its patent attorney, W P Thompson and Co dated February 27, 2002, failed to deal with any of the issues raised in the letter of February 19, 2002, and offered a "take it or leave it" £220, representing what that firm considered to be the "direct costs" of registering and maintaining the domain names. A further attempt by the Respondentís representatives in its letter of March 1, 2002, to deal with matters in correspondence produced the Complaint to WIPO (and a similar Complaint to the United Kingdom authorities in respect of the domain name <bosch.co.uk>), with no further attempt on behalf of the Complainants to deal with the issues.
The Respondent's position is that it has behaved entirely responsibly throughout, to be met by the classic "bullying" tactics of a very much larger organization. There is no doubt in the Respondentís mind that the costs of the dispute resolution procedures will be substantially in excess of the modest figures sought by the Respondent for the transfer of domain names which it has legitimately acquired, maintained and spent money on in developing and promoting websites associated with the sale of the products of the Complainants (or their sister companies).
In terms of the UDRP, which the Respondent alleges have been largely ignored by the Complainants and their representatives, the Respondent maintains that its position is as follows:-
a) It acquired the Domain Name for the purposes of selling the Complainantsí own products (or those of an associated or sister company);
b) It had no intention at the time it acquired the Domain Name of seeking to sell the Domain Name to the Complainants, and there is no evidence produced to the contrary (nor could there be);
c) There was no intention on the part of the Respondent to prevent the Complainants or any other company using a corresponding domain name - it was doing its best to promote the Complainantsí own products;
d) There was no question of the Respondent unfairly disrupting the business of the Complainants - it was working with an associated company of the Complainants to make sales on behalf of that company;
e) Since the termination of its distribution agreement, the Domain Name has not been actively used in any way. The Respondent is no longer seeking to attract Internet users for commercial gain, and has not done so since the termination of its relationship with BSH Home Appliances Limited. The only likelihood of "confusion" is in the similarity of the name BOSCH and the Domain Name (which the Respondent accepts). That is not a "use" of the Domain Name by the Respondent;
f) The Complainants cannot demonstrate that the Respondent's acquisition of the Domain Name was for any purpose other than a genuine offering of products. Therefore, the amounts of compensation sought by the Respondent for the transfer of the Domain Name are not strictly relevant. Nevertheless the amounts which the Respondent has sought by way of compensation (as set out in its representative's letter of February 19, 2002), are modest, and consist of those costs which are the "out-of-pocket costs directly related to the Domain Name". They include the website development and some promotional costs, because that amounted to the "use" of the Domain Name for the purpose of selling the Complainant's products. The request for payment was not made "mala fides" as the Complainants suggest, but to reimburse the Respondent for its outlay effectively on behalf of the Complainants or their sister companies;
g) The Respondent considers that it has used the Domain Name in connection with a bona fide offering of goods. The Complainants cannot therefore demonstrate that either the past registration or the current use of the Domain Name is in bad faith (and of course, under the UDRP it needs to show both to succeed).
The Respondent maintains that in the circumstances, the Complainants fail at every
hurdle to show that they are entitled to any form of remedy under the UDRP. The Complaint was made on the back of unjustified threats of proceedings by the Complainants. The Complainants and their advisors have refused to deal with issues in correspondence. The Complainants have also raised matters for the first time in their Complaint (without proper particulars) such as the position of BSH Home Appliances Limited. Those factors, allied to the clear conclusion that the Complainants cannot begin to make out a respectable case under the UDRP, suggest strongly that the Complaint is not made bona fide, and in fact is an attempt by the Complainants at Reverse Domain Name Hijacking and to harass the Respondent. The Respondent seeks a finding that the Complaint was brought in bad faith and is an abuse of the administrative proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving that all of three elements are present in its Complaint, and the Panel will now examine each of them in turn.
That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complaint has established that the Second Complainant has registration rights in the trademark BOSCH. This is acknowledged by the Respondent who also accepts that the trademark and the disputed Domain Name are confusingly similar. The Panel agrees, and therefore rules that the contested domain name is confusingly similar to the trademark.
That the Respondent has no rights or legitimate interests in respect of the domain name
In connection with any legitimate rights or interest, the Complainant has established an arguable case, so the burden of proof is therefore now shifted to the Respondent to show, by providing concrete evidence, that he has rights to or legitimate interests in respect of the disputed domain name.
The Respondentís case is that it was given permission to register and use the disputed Domain Name, but on the evidence before the Panel this claim must be open to some doubt. The correspondence between the Respondent and Mr. Peter Burnett of BSH contains nothing to indicate the granting of such a permission, and indeed appears to be little more than a perfectly normal exchange between a supplier and his customer. There is nothing in it to suggest that Mr. Burnett of BSH encouraged or gave permission to the Respondent to purchase either the disputed Domain Name (or another name, <boschuk.co.uk>, which is apparently the subject of separate proceedings). The correspondence itself also fails to confirm either that the Respondent was, as it says it was, appointed a distributor for Bosch air conditioning products for the North East and North West of England, or why this alleged appointment was terminated after little more than a year. However a BSH publicity leaflet which was annexed to the Response, and which describes the Respondent as "North East distributors" is persuasive. The question as to whether this Ďappointmentí gave the Respondent the right to register the names will be discussed below.
However, assuming that Mr. Burnett did give the Respondent permission to purchase the disputed Domain Name Ė and the Panel finds it strange that a mere Sales Executive (which is how he signs his letters) would have that authority Ė did his company, BSH, have the right to do so? Certainly the Respondent believes so, saying that "it is clear that others within the group of companies of which Robert Bosch GmbH may be the ultimate parent equally have rights to use, and to license the use of the "BOSCH" mark". But in fact a right to license the use of the name BOSCH is not made clear from the documentation supplied by either party. BSHís Annual Report and Accounts provides nothing in the way of a direct link between it and the Second Complainant. That there is a link, and that it is permitted to use the name BOSCH either by a written or implied license, can however be deduced from the facts firstly that BSH displays the name prominently in its sales literature, and secondly that it is a "wholly owned subsidiary of BSH Bosch und Siemens Hausgeäte GMBH". The Complaint describes BSH as being "partly owned by the Second Complainant" and what seems probable is that the company is jointly owned by the Second Complainant and the German company Siemens AG and that it was set up to act as a distributor in the UK for some of the products from the very diverse range made by these two German giants.
On the whole therefore, the Panel prefers to believe the statement in the Complaint that "at no time was the Respondentís registration or maintenance of the Domain Name <boschuk.com> consented to be the First Complainant or the Second Complainant or by any individual of those companies or by any company with either sufficient knowledge or authority to give such consent in this matter" (emphasis added).
As a result the Panel rules that the Respondent had no rights or legitimate interests in respect of the disputed Domain Name.
That the domain name has been registered and is being used in bad faith
The Complainantís third hurdle is to establish that the Respondent has registered and used the Domain Name in bad faith. Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith.
The first is the acquisition of the domain name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark . . . or to a competitor of that complainant, for valuable consideration in excess of [registrantís] documented out-of-pocket costs directly related to the domain name."
The Complainant contends that this type of bad faith exists and its evidence is that it offered the Respondent £220 for the disputed Domain Names which it considered to be the Respondentís original cost in registering it, but the Respondent rejected this offer believing that the Domain Name had a higher value.
A possible financial settlement was first raised by the Respondent, in its initial letter of January 18, 2002, and it is perhaps worth noting that in this letter and indeed throughout the saga no distinction is made as between this disputed Domain name and <boschuk.co.uk> so presumably any figures mentioned relate to both names. The Respondentís offer was repeated in an e-mail dated January 30, 2002, in which Mr. Martin Lee Wilson said "Ö confirm that I am prepared to sell and transfer both of the domain names to yourselves for an agreed sum. I would respectively suggest that any offer you make be inline with market value of such domain names and to include any value you put on mail not received." The Complainant replied on February 1, 2001, saying: "There is no question of any payment being made for the transfer of the domain names in question over and above the nominal costs of registration". The first time that any figures were mentioned was in a letter dated February 19, 2002, from the Respondentís representatives when it supplied the following: the construction of the website (£1500), the initial registration of the domain names (£160), maintenance fees (£160), transfer costs (£60), and legal advice (£500). They therefore suggested that £2,049 (to include VAT) plus payment of reasonable legal costs would be a fair amount. The letter also asked £10 for every e-mail intended for the Complainants in the Respondentís in-box. The Complainantís representatives replied on February 28, 2002, and offered £220 which was described as the "direct costs incurred in registering and maintaining the domains". It is also suspicious that there is so little documentary proof of the respondentís costs in setting up and operating the website. Such evidence as has been produced (e.g. copies of cheque stubs) cannot be linked directly to the website. The Respondent may be a small company, but even a sole trader is required to retain copies of all VAT invoices.
The Respondentís figures are undoubtedly inflated and include items which could not be described as being "out-of-pocket costs directly related to the domain name", as is required by the Policy, namely the construction of the websites and the legal fees. The figure of £10 for every misdirected e-mail is clearly extortionate. The Complainant contends that the demands are excessive and that this is evidence in itself of bad faith. The Panel disagrees. The Respondentís representatives on the other hand describe the sum as "modest" and, because the Respondent only made a genuine offering of the Complainantsí products, the actual amount requested is "not strictly relevant". Again, the Panel rejects this argument.
It is clear from this history that the Respondent was prepared to sell the disputed Domain Name, but in the opinion of the Panel the initial registration of the disputed Domain Name was not "primarily" for the purpose of selling it which is also a requirement of the Policy. The Respondentís initial demands may have been inflated but, apart from the outrageous cost for transferring the Complainantsí e-mails, not exorbitantly so and to commence a negotiation with a higher figure than one is prepared eventually to accept is not unusual. The initial offer does seem to have been made in a serious attempt to settle the matter.
Therefore, on balance, the Panel finds that Complainant has failed to establish bad faith under Paragraph 4(b)(i) of the Policy.
The second illustration of bad faith in the Policy occurs when the registrant registers a domain name to prevent the trademark owner from reflecting the mark in a corresponding domain name, particularly when Respondent has engaged in a pattern of such conduct. Respondent has engaged in what might arguably be deemed a Ďpatterní, inasmuch as he registered two domain names both containing the mark BOSCH (the other being <boschuk.co.uk> in the .uk TLD). Less clear is whether Respondentís purpose in registering these domain names was to prevent the Complainants from reflecting the Second complainantís mark in a corresponding domain name. The Respondent does not resemble in any way the classic profile of a cybersquatter, and it has given a very plausible reason for its registration of the disputed Domain Name (namely to use it in connection with the sale or distribution of Bosch products). It also appears to have genuinely believed that it had permission to do so. Both Complainants are substantial companies and, although no proof has been provided, the probability is very high that they both already own and operate separate websites under their own domain names.
Consequently the Panel does not find that the Complainants has been deprived of their ability to register or use the trademark BOSCH as a domain name. Paragraph 4(b)(ii) therefore does not apply.
The third illustration of bad faith is registration "primarily for the purpose of disrupting the business of a competitor." Again, there is little evidence suggesting any effort by Respondent to disrupt the business of either Complainant. Indeed, while the disputed Domain Name was active, the Respondent would appear to have been engaged in furthering the Complainantsí business, not disrupting it. In any event, there is no evidence that the Respondent is a "competitor" of either Complainant. Moreover, the Respondent does not currently use the domain name for any purpose as it is inactive. The Panel has not been supplied with any evidence of what the website at the disputed Domain Name comprised.
While the Respondentís Managing Director clearly did himself no favors with the Complainant, or further his cause, by threatening at the outset to sue the First Complainant for damages for all the misdirected e-mails, the fact remains that the burden of establishing bad faith is on Complainant, and the Complainant has not disproved the Respondentís contention, that its intention in registering the disputed Domain Name was to use it in connection with the Complainantsí own products, and that for some 15 months it did so. Nor has the Complainant shown that the Respondent engaged in any competition with Complainant.
The Respondentís contention is that it only used the disputed Domain Names with a website used in connection with the legitimate distribution of the Complainantsí products. Assuming that to be true, it is possible that Respondent may have a "fair use" defence to the Complainantís claims. Several UDRP panels have held that the truthful use of a trademark in connection with the sale of the goods or services that are properly identified by that trademark does not constitute bad faith under the Policy. See Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 ; Giddings & Lewis LLC v. Neal McKean d/b/a Machineworks, Inc. d/b/a IMachineTools.com, WIPO Case No. D2000-1150; Frederick M. Nicholas, Administrator, The Sam Francis Estate v. Magidson Fine Art, Inc., WIPO Case No. D2000-0673; The Kittinger Company, Inc. v. Kittinger Collector, AF-0107a,b; Minnesota Mining & Manufacturing Company v. Mark Overby, WIPO Case No. D2001-0727.
Accordingly, the Panel concludes that Complainant has not met its burden of proving bad faith under Paragraph 4(b)(iii). However, the legal interpretation of fair use is far from straightforward, and the Panel does not wish to imply that, in a court of law, and after a thorough examination of all the facts, the Respondent would necessarily prevail. The Complainantsí charge of trademark infringement and passing off might very well be justified.
The fourth illustration, use of the domain name in an effort to attract, for commercial gain, Internet users to a competing web site, also does not appear to be applicable here. There is currently no active web site located at the disputed Domain Name, but even when it was active, its content was apparently not in competition with the Complainant but rather used as a means for promoting and distributing the Complainantsí own products. Therefore paragraph 4(b)(iv) of the Policy does not apply.
The list in Paragraph 4(b) of the Policy is, as was noted above, not exhaustive but there is nothing else in the Respondentís behavior which could, in the opinion of the Panel, contribute to a valid finding of bad faith. The fact that, as the Complainant rightly points out, the Respondent could fill the disputed Domain Name with matter which the Complainants would not wish to see if it were allowed to continue in possession of it, is not an offence under the Policy.
Finally, a finding of bad faith requires both registration AND use. The disputed Domain Name is not, currently, being used but by all accounts it has been so there is no need for the Panel to address that aspect of the case.
In conclusion, the Panel finds that Complainant has failed to establish that Respondent has registered and is using the Domain Name in bad faith.
In the result, the Panel has found that the domain name registered by the Respondent is confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, but that the disputed Domain Name has not been registered and is not being used in bad faith.
Accordingly, the Panel directs that the registration of the domain name <boschuk.com> should not be transferred to Robert Bosch GmbH.
8. Final Remarks
The Respondent, almost as an afterthought, charged the Complainants with reverse-name hijacking. The former is defined in the Policy as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." In view of the Decision, it would follow that this has not been proved, but in the view of the Panel more evidence than it has been presented with would be required to justify the charge.
The Complainants are also charged with Ďbullyingí, Ďunjustified threats of proceedingsí and Ďharassmentí, but again there does not seem to be much evidence of this. On the contrary, it was the Respondent who irresponsibly threatened to bring a totally unjustified court action against the First Complainant whose reaction, in the circumstances, was commendably restrained. Again it was the Respondent who offered to transfer every single misdirected e-mail at a cost of £10 per e-mail, a price which is totally unjustified. If anyone has been irresponsible it is the Respondent, but the burden of proving bad faith under the Policy lies with a Complainant and in the opinion of the Panel, the Complainants in this case have not done so.
David H. Tatham
Dated: May 16, 2002