WIPO Arbitration and Mediation Ceter

ADMINISTRATIVE PANEL DECISION

Robert Bosch GmbH v. Above.com Domain Privacy, Above.com Domain Privacy / David Woo

Case No. D2018-1549

1. The Parties

The Complainant is Robert Bosch GmbH of Gerlingen-Schillerhöhe, Germany, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Above.com Domain Privacy, Above.com Domain Privacy of Beaumaris, Australia / David Woo of Kwun Tong, Kowloon, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <boschtoolservice.com> (“the Disputed Domain Name”) is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2018. On July 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 16, 2018.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2018.

The Center appointed Isabel Davies as the sole panelist in this matter on August 9, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant has registered trademarks for and including the BOSCH mark in countries around the world from as early as1958, having used the BOSCH mark since 1932.

The Complainant has obtained domain names for or including Bosch from as early as April 4, 1995 and registered <boschtools.com> on October 2, 1996.

The Disputed Domain Name was registered on November 27, 2009. The webpage at the Disputed Domain Name redirects Internet users to a parked website featuring links to third-party websites, as well as offers the Disputed Domain Name for sale.

5. Parties’ Contentions

A. Complainant

A The Disputed Domain Name is Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant states that it is the owner of trademark registrations across various jurisdictions dating back to 1958 and including a United States Patent and Trade Mark Office registration dating from 1966. It states that it registered <boschtools.com> on October 2, 1996.

It states that the Complainant is a privately owned multinational engineering and electronics company founded by German engineer Robert Bosch when he first started the “Workshop for Precision Mechanics and Electrical Engineering” in Stuttgart in 1886. It manufactures a wide variety of products ranging from automotive components (brakes, controls, fuel systems, starter motors, and steering systems) to industrial products and consumer goods including household appliances, power tools, security systems and thermotechnology.

The Complainant states that its products are offered, and recognized across the world, and that it employs about 402,000 associates globally in around 440 subsidiaries and regional companies across 60 countries.

The Complainant states that it actively interacts with its customers via its primary domain <bosch.com> as well as on its official Facebook page (more than 1.25 million likes), Bosch Global Youtube channel (17.5K subscribers), and Twitter page (231K followers). Alexa.com ranks the Complainant’s <bosch.com> domain name as the 46,715th most popular website globally and the 10,402nd most popular website in Germany.

The Complainant’s contends that its brand is well-recognized by consumers, industry peers, and the broader global community. Based on the above, as well as the Complainant’s extensive and continuous use of the BOSCH trademark, and the fact that the Complainant has made significant investments over the years to advertise, promote, and protect these trademarks across numerous regions of the world and various forms of media, including the Internet, the Complainant enjoys a substantial degree of public recognition in the trademarks and has seen them become uniquely associated with the Complainant.

The Complainant contends that, by virtue of its trademark registrations, it has prima facie satisfied the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.

It states that it is standard practice when comparing a disputed domain name to a complainant’s trademark, not to take the generic Top-Level Domain (“gTLD”) extension into account and that this should be disregarded in assessing confusing similarity.

The Complainant states that, in creating the Disputed Domain Name, the Respondent has added the generic, descriptive terms “tool service” to the Complainant’s BOSCH trademark, thereby making the Disputed Domain Name confusingly similar to the Complainant’s trademark and its <boschtools.com> domain name. It states that the fact that such terms are closely linked and associated with the Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. More specifically, the Complainant states that it has a Power Tools division that it is a world market leader for portable electric power tools and power tool accessories. The Complainant operates this business through <boschtools.com>.

The Complainant states that past Panels have consistently held that a disputed domain name that consists merely of a complainant’s trademark and an additional term that closely relates to and describes that complainant’s business is confusingly similar to that complainant’s trademarks.

The Complainant refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”).

The Complainant therefore submits that, based on the foregoing, the Disputed Domain Name is clearly confusingly similar to the Complainant’s BOSCH trademark.

B. The Respondent has no Rights or Legitimate Interests in Respect of the Disputed Domain Name (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))

The Complainant contends that the granting of trademark registrations to the Complainant for the BOSCH trademark is prima facie evidence of the validity of the term BOSCH as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the BOSCH trademark in commerce on or in connection with the goods and/or services for which the trademarks are registered.

The Complainant states that the Respondent is not commonly known by the Disputed Domain Name, which evinces a lack of rights or legitimate interests.

The Complainant evidences that the pertinent WhoIs information identifies the Registrant as “David Woo”, which does not resemble the Disputed Domain Name in any manner and contends that, where no evidence, including the WhoIs record for the Disputed Domain Name, suggests that the Respondent is commonly known by the Disputed Domain Name, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Name within the meaning of ¶ 4(c)(ii).

The Complainant also states that, at the time of filing the Complaint, the Respondent was using a privacy WhoIs service, which past UDRP panels have also found to equate to a lack of legitimate interest.

The Complainant states that it has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark.

The Complainant has presented evidence showing that the Respondent is using the Disputed Domain Name to redirect Internet users to a parked website featuring links to third-party websites, some of which directly compete with the Complainant's business. For instance, the website at which the Disputed Domain Name resolves feature multiple third-party links. Further, the Respondent’s website also features links that directly reference the Complainant and its business. Presumably, the Complainant submits, the Respondent receives pay-per-click fees from the linked websites that are listed at the Disputed Domain Name’s website. Prior UDRP panels have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name.

The Complainant therefore submits that the Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii).

The Complainant states that the Respondent registered the Disputed Domain Name on November 27, 2009, which is significantly after the Complainant filed for registration of many of its BOSCH trademark and also significantly after the Complainant’s first use in commerce of its trademark in July 1932.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. The Disputed Domain Name was Registered and is Being Used in Bad Faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant states that it and its BOSCH trademark are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using this trademark since 1932, which is many decades before the Respondent’s registration of the Disputed Domain Name on November 27, 2009.

The Complainant contends that, at the time of registration of the Disputed Domain Name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with the Complainant’s business prior to the Respondent’s registration of the Disputed Domain Name, the Complainant states that it serves customers through its 402,000 associates globally in around 440 subsidiaries and regional companies across 60 countries. In 2017, the Complainant achieved EUR 78.1 billion sales revenue and received four awards for its smart products at the CES 2017 Innovation Awards which demonstrates its fame.

Further, the Complainant states, performing searches across a number of Internet search engines for “bosch tool service” returns multiple links referencing the Complainant and its business which the Complainant evidences. Therefore, while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past UDRP panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain name in bad faith, where the complainant’s mark is well-known and the circumstances support such a finding, as, the Complainant contends, is the case here.

The Complainant states that the Respondent creates a likelihood of confusion with the Complainant and its trademarks by registering a domain that incorporates the Complainant’s BOSCH trademark, which demonstrates that the Respondent is using the Disputed Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Disputed Domain Name and website. By creating this likelihood of confusion between the Complainant’s trademarks and the Disputed Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name, the Respondent, the Complainant asserts, has demonstrated an intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the Disputed Domain Name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to the Respondent’s website, some of which directly reference the Complainant.

Moreover, the Complainant submits, previous UDRP panels have concluded that evidence of prior panel decisions in which domain names have been transferred away from the Respondent to complaining parties supports a finding that the Respondent has engaged in a bad faith pattern of “cybersquatting”. The Complainant states that the Respondent here has previously been involved in the cases listed below, which provides evidence of the pattern of cybersquatting in which the Respondent is engaging.

The American Automobile Association, Inc. v. Above.com DomainPrivacy a/k/a Oliver Goldsmith/ Host Master, Transure Enterprise Ltd. / David Woo, DNWDNS/ Shu Lin, WIPO Case No. D2011-1884, Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy / David Woo, WIPO Case No. D2010-1566, Intesa Sanpaolo S.p.A. v. Above.Com Pty Ltd./ David Woo, WIPO Case No. D2010-1611, Revlon Consumer Products Corporation v. David Woo / Above.com Domain Privacy, WIPO Case No. D2010-1483, Universidad Autónoma de Nuevo León v. Above.Com Domain Privacy / David Woo, WIPO Case No. D2010-1160.

The Complainant states that the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held to serve as further evidence of bad faith registration and use. The Complainant refers to WIPO Jurisprudential Overview 3.0, section 3.6 (“Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”).

The Complainant states that the Respondent even ignored its attempts to resolve this dispute outside of this administrative proceeding. Past Panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. The Complainant refers to Encyclopedia Britannica v. Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”).

Finally the Complainant submits, on balance of the facts which it has set out in the Complaint, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant is the owner of trademark registrations across various jurisdictions dating back to 1958 and including a United States Patent and Trade Mark Office (USPTO) registration dating from 1966 and that the Complainant has spent a considerable amount of time and money protecting its intellectual property rights having started using the Bosch name since 1932.

The Panel accepts that, as <bosch.com> was registered on April 4, 1995 and <boschtools.com> on October 2, 1996, these predate the Respondent’s registration of the Disputed Domain Name.

The Panel accepts that the Complainant is a privately owned multinational engineering and electronics company founded by German engineer Robert Bosch in Stuttgart in 1886 which manufactures a wide variety of products ranging from automotive components to industrial products and consumer goods including household appliances, power tools, security systems and thermotechnology.

The Panel accepts that the Complainant actively interacts with its customers via its primary domain name <bosch.com> as well as on other media sites.

The Panel acknowledges that the Complainant’s products are offered, and recognized across the world, and that the BOSCH trade mark is well known.

The Panel accepts that it is standard practice when comparing a Disputed Domain Name to the Complainant’s trademark, not to take the extension into account. The Panel refers to WIPO Jurisprudential Overview 3.0, section 1.11.1 (“The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”).

The Panel also accepts that by adding the generic, descriptive terms “tool service” to the Complainant’s BOSCH trademark, the Respondent has made the Disputed Domain Name confusingly similar to the Complainant’s trademark and its <boschtools.com> domain and its associated power tools business.

The Panel refers, for example, to Inter IKEA Systems B.V. v. Franklin Lavall?e / IkeaCuisine.net, WIPO Case No. D2015-2042 (“The confusing similarity between the disputed domain name and the Complainant’s IKEA trade mark is in fact further enhanced by the inclusion of a term that relates to the furniture business of the Complainant”). The Panel refers also to WIPO Jurisprudential Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”).

The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s BOSCH trademark.

B. Rights or Legitimate Interests

The Panel accepts that the granting of the trademark registrations listed in the Complaint to the Complainant for the BOSCH trademark is prima facie evidence of the validity of the term “bosch” as a trademark, of the Complainant’s ownership of this trademark and of the Complainant’s exclusive right to use the BOSCH trademark in commerce on or in connection with the goods and/or services to which the trademarks relate.

The Panel accepts that the Respondent registered the Disputed Domain Name on November 27, 2009, which is significantly after the Complainant filed for registration of its BOSCH trademark in various jurisdictions and also significantly after the Complainant’s first use in commerce of its trademark in July 1932.

The Panel accepts that the Respondent is not commonly known by the Disputed Domain Name, and that that evinces a lack of rights or legitimate interests. The Panel refers to Policy, ¶ 4(c)(ii) and World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642 (finding that a respondent, or his/her organization or business, must have been commonly known by the at-issue domain name at the time of registration in order to have a legitimate interest in the domain name).

In the light of the WhoIs information identifying the Registrant as “David Woo,” which does not resemble the Disputed Domain Name in any manner there is no evidence, including the WhoIs record for the Disputed Domain Name, which suggests that the Respondent is commonly known by the Disputed Domain Name, the Panel finds that the Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Name within the meaning of ¶ 4(c)(ii). The Panel refers to Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (in which the panel noted “that the Respondent’s name is “Bestinfo” and that it can therefore not be “commonly known by the Domain Name” [moncler.com]”).

The Panel also finds that the use of a privacy WhoIs service here equates to a lack of legitimate interest. The Panel refers to Jackson National Life Insurance Company v. Private WhoIs wwwjacksonnationallife.com N4892, WIPO Case No. D2011-1855. (“The Panel concludes that the Respondent possesses no entitlement to use the name or the words in the Complainant’s marks and infers […] from the “Private Whois” registration that it is not known by such name. There is no evidence of the Respondent ever being commonly known by the name or words now included in the disputed domain name.”)

The Panel accepts that the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark and cites the finding that: “In the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed” as stated in Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.

The Panel accepts that the Respondent is using the Disputed Domain Name to redirect Internet users to a parked website featuring links to third-party websites, some of which directly compete with the Complainant’s business and that the Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii). See WIPO Jurisdictional Overview 3.0, section 2.0 (“Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”)

In view of these points the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts that at the time of registration of the Disputed Domain Name, the Respondent knew, or should have known, of the existence of the Complainant’s trademark and that registration of domain names containing well-known trademarks constitutes bad faith per se.

Further, the Panel accepts that by performing searches across a number of Internet search engines for “bosch tool service” the Respondent would have found multiple links referencing the Complainant and its business. The Panel refers to Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517 (“given the Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed domain name”).

The Panel accepts that the Respondent creates a likelihood of confusion with the Complainant and its trademarks by registering a domain that incorporates the Complainant’s BOSCH trademark. The Panel accepts that the Respondent is using the Disputed Domain Name to confuse Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Disputed Domain Name and website.

The Panel accepts that, by creating this likelihood of confusion between the Complainant’s trademarks and the Disputed Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name, the Respondent has demonstrated an intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the Disputed Domain Name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple links posted to the Respondent’s website, some of which directly reference the Complainant.

Moreover, previous UDRP panels have concluded that evidence of prior Panel decisions in which domain names have been transferred away from the Respondent to complaining Parties supports a finding that the Respondent has engaged in a bad faith pattern of “cybersquatting.” The Panel refers to Arai Helmet Americas, Inc. v. Goldmark, WIPO Case No. D2004-1028 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).

The Panel refers to previous cases in which the Respondent has been involved, which provide evidence of the pattern of cybersquatting in which the Respondent is engaging.

The Panel accepts that further evidence of bad faith is that the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held to serve as further evidence of bad faith registration and use. The Panel refers to WIPO Jurisprudential Overview 3.0, section 3.6 (“Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”).

The Panel accepts that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding and that past UDRP panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. The Panel refers to Encyclopedia Britannica v. Zuccarini, supra (failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”) and also RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (finding bad faith where “the Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).

The Panel accepts that the Respondent knew of and targeted the Complainant’s trademark, and finds that the Respondent has registered and used the Disputed Domain Name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <boschtoolservice.com> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: August 17, 2018