WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BSH Home Appliances Corporation v. Perry Williams, Cooperative Advertising LLC of Las Vegas NV

Case No. D2015-2121

1. The Parties

The Complainant is BSH Home Appliances Corporation of New Bern, North Carolina, United States of America (“United States”, “USA”, or “US”) represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”).

The Respondent is Perry Williams, Cooperative Advertising LLC of Las Vegas, Nevada, USA, self-represented.

2. The Domain Names and Registrar

The disputed domain names <boschappliancepros.com>, <bosch-factory-service.com>, <thermadoreappliancerepair.com> and <thermador-factory-service.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2015. On November 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 December 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2015. The Response was filed with the Center on December 16, 2015.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 4, 2016. 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 is a business corporation organized under the laws of the State of Delaware, USA. It is a wholly owned US subsidiary of BSH Hausgeräte GmbH (“BSH Hausgeräte”), a German company that was originally a joint venture with Siemens AG but is now, since the beginning of 2015, a wholly owned part of the “Bosch Group” of companies. BSH Hausgeräte is the largest manufacturer of home appliances (such as mixers and food processors, coffee makers, dishwashers, ovens and ranges, refrigerators, microwave ovens, and clothes washers) in Europe and one of the largest manufacturers in that sector globally. BSH Hausgeräte controls subsidiaries operating 43 factories in 13 countries in Europe, the USA, Latin America, and Asia, with sales and customer service subsidiaries in some 50 countries, employing altogether more than 53,000 employees.

The Complainant or its predecessors have used the THERMADOR mark in North America since at least 1980 and the BOSCH mark since at least 1995. The Complainant attaches a letter of authorization from the trademark owner, Robert Bosch GmbH, concerning the Complainant’s licensed use of the BOSCH and THERMADOR marks.

The Complainant holds (or has rights to) the following relevant trademark registrations for BOSCH and THERMADOR as standard-character or word marks:

The Complainant and related companies operate websites incorporating the BOSCH and THERMADOR marks, including “www.bosch.com”, “www.bosch-home.com”, “www.thermador.com”, and “www.thermadorappliancerepair.com”.

According to the Registrar, the Domain Names <boschappliancepros.com> and <thermadoreappliancerepair.com> were both created on November 30, 2006, while the Domain Names <bosch-factory-service.com> and <thermador-factory-service.com> were created on February 23, 2009. All four Domain Names are currently registered to the Respondent, a limited liability company registered in the State of Nevada, USA since May 2013, of which Mr. Williams is the managing member (according to the online database operated by the Nevada Secretary of State).

In January 2010, the Complainant became aware that the two Domain Names registered in 2009, <bosch-factory-service.com> and <thermador-factory-service.com>, were being used to redirect Internet users to the website “www.800appliance.com”, which advertises the San Diego-area appliance repair services of Mr. Williams’ company 1-800-Appliance. Screen shots of the website formerly linked to these Domain Names are included with the Complaint. The Complainant sent a cease-and-desist demand by email to the Respondent in January 2010. The Respondent promptly replied by email with the following message:

“I understand you need to protect your trademark and your good name. I registered the website in question in anticipation of becoming the thermador factory servicer in our service area.

It is not my intention to attract or mislead the Thermador Customers in any way. As I have not yet contracted with Bosch/Thermador to perform factory service, the website is not currently in use, and is not advertised in any way.

It is currently parked to a default page which directs customers to our main website.

If you feel that I am somehow attracting customers with an unadvertised / un-googled site, I can change it’s [sic] default page to a dead site until I complete my Thermador Factory authorized servicer paperwork.

Upon completion of our Thermador Factory Service certification, we will indeed be advertising this site in our service area as we will in fact be the Thermador Factory Service center[.]”

The Complainant subsequently ascertained that the Respondent had not become one of the Complainant’s factory authorized servicers but continued to use the two Domain Names to redirect traffic to the Respondent’s 1-800-Appliance website. The Respondent also displayed the Complainant’s marks on the side of the Respondent’s service vehicles, along with those of competitors’. The parties exchanged emails in September 2015, in which the Respondent undertook to remove “potential confusing references” from its websites and vehicles.

The Domain Name <boschappliancepros.com> resolves, at the time of this Decision, to a website for “Bosch Appliance Pros San Diego”, which advertises repair and service “for all Bosch Home Appliances” in San Diego, California, USA. No such entity with that name appears in the database of registered companies maintained by the California Secretary of State. The website displays the BOSCH word mark and design mark used by the Complainant and related companies. The website includes a service order form and does not advertise repair services for other brands of appliances.

The other three Domain Names, <bosch-factory-service.com>, <thermadoreappliancerepair.com> and <thermador-factory-service.com>, all currently resolve to a landing page with a cartoon drawing of a man holding a hammer, with blackened face and disordered hair, in front of a kitchen oven that appears to have recently burned or exploded. The cartoon displays the words “Oops?” and “Feeling lost?” To the side, under the heading, “Looking for a manufacturer website?” is a list of links to the websites of various major appliance manufacturers, including the Complainant and more than a dozen of its competitors, such as Electrolux and LG. At the bottom of the list is a disclaimer: “This is NOT a manufacturer owned website.”

Another message in smaller print appears above the list of manufacturer’s links:

“Websites go quick! So we reserved this site for when we become factory authorized. For now, you must work your way through the manufacturer sites directly. No referrals allowed! (Lawyers) -Sorry for the inconvenience.”

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Names are confusingly similar to the BOSCH and THERMADOR trademarks, and that the Respondent has not obtained permission to use those marks. The Complainant argues that the Respondent has no relevant rights or legitimate interests in making commercial use of the Domain Names and does not satisfy the standards articulated in such decisions as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (Oki Data), to justify a reseller’s or distributor’s nominative use of a manufacturer’s mark in a domain name.

The Complainant contends that the Respondent registered and used the Domain Names in bad faith, in an effort to misdirect Internet users for commercial gain. The Respondent competes with the Complainant’s authorized “Thermador Factory Service Technicians” and “Bosch Factory Service Technicians” in the San Diego area, and so the Complainant argues as well that the Respondent registered the Domain Names to prevent the Complainant from reflecting the THERMADOR and BOSCH marks in corresponding domain names for the service and repair business.

B. Respondent

The Respondent contends that confusion is unlikely because the Complainant itself does not offer repair and maintenance services, and it is common for independent servicers to name the brands that they service.

The Respondent states that it is currently an authorized servicer for several competing manufacturers and plans to become an authorized servicer for the Complainant, suggesting that this furnishes a legitimate interest in using the brand names in corresponding domain names.

The Respondent argues that it is not profiting by misdirecting potential service customers. The Complainant does not pay non-authorized servicers for in-warranty service work. Thus, the Respondent cannot perform those services until it becomes an authorized servicer; until then, the Respondent can only refer customers with appliances that are still under warranty to an authorized service center. The Respondent acknowledges that it can profitably service the Complainant’s appliances that are no longer under warranty, but the Respondent argues that it does not expressly advertise out-of-warranty service and that its websites have not been focused on advertising or recording leads for that business.

The Respondent seeks a ruling that the Complainant has engaged in Reverse Domain Name Hijacking.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant has rights in the registered BOSCH and THERMADOR marks either as the owner or as a licensee using the marks in its business.

The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2). Applying this test, the Panel finds that the Domain Names are all confusingly similar to the Complainant’s BOSCH and THERMADOR marks, adding to those distinctive marks generic terms that do not avoid confusion, particularly since they would appear to be relevant to the repair or maintenance of the Complainant’s home appliances products. See WIPO Overview 2.0, paragraph 1.2. While the Domain Name <thermadoreappliancerepair.com> incorporates a slightly misspelled version of the THERMADOR mark (adding an “e” to the end), it is confusingly similar to the THERMADOR mark in appearance and sound, and it is also joined with the apparently relevant words “appliance repair”.

The Panel concludes, therefore, that the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, including the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.

Here, the Complainant has established that its marks are widely known and distinctive, and that the Respondent has used them in the Domain Names without permission to advertise repair and maintenance services and to offer links to competing manufacturers. The Respondent claims that it plans to become an authorized warranty servicer for the Complainant. But this has not happened in the nearly seven years since the Respondent registered the first two Domain Names, and the Respondent has not offered evidence of “demonstrable preparations” to use the Domain Names in connection with such a business. Moreover, while the Domain Name <boschappliancepros.com> now resolves to a website headed “Bosch Appliance Pros San Diego”, there is no evidence that such an entity exists or that the Respondent actually has performed warranty or non-warranty service business under that name.

There are UDRP decisions finding legitimate, nominative use of a manufacturer’s trademark, authorized or not, for a domain name used to advertise a relevant business of reselling, distributing, or servicing the manufacturer’s products, or selling accessories for them. See Oki Data, supra, and WIPO Overview 2.0, paragraph 2.3. As in US trademark law, there are conditions for making fair use of a trademark in such circumstances, prominently including the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The record does not include evidence of actual sales through any of the Domain Names, and the Respondent points out that it cannot offer warranty service unless it becomes an authorized servicer of BOSCH or THERMADOR appliances. The Domain Names formerly redirected to the Respondent’s website offering service for many manufacturers’ products, which does not satisfy the Oki Data condition of exclusivity. The websites currently associated with three of the Domain Names display referrals to numerous manufacturers. Finally, the website for “Bosch Appliance Pros San Diego” does not “accurately and prominently” describe the Respondent’s relationship with the Complainant; it does not disclose, for example, that it is not one of the Complainant’s authorized servicers and cannot perform warranty service.

The Panel concludes, accordingly, that the Respondent has not demonstrated rights or legitimate interests in the Domain Names within the meaning of the Policy, and the Complainant prevails on the second element of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following:

“(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Citing paragraph 4(b)(ii), the Complainant argues that the Respondent registered the Domain Names to prevent the Complainant from reflecting its THERMADOR and BOSCH marks in corresponding domain names for the service and repair business conducted by its authorized servicers. The Complainant contends that there is a pattern of such conduct, observing that the Respondent has registered eighteen domain names containing the marks of appliance manufacturers, including DACOR, GE, HAIER, HILLCREST, JENNAIR, KITCHENAID, LG, SAMSUNG, and WHIRLPOOL, in addition to the Domain Names at issue in this proceeding.

The Respondent claims to be an authorized servicer for at least some of those manufacturers, and the record does not include sufficient evidence to establish whether the Respondent is using those third-party marks with permission or otherwise satisfies the Oki Data test with respect to any domain names incorporating those marks. The Complainant uses a variety of domain names incorporating its marks, and the Panel does not find evidence that the Respondent acted systematically to deprive the Complainant of corresponding domain names. Moreover, the Respondent does not directly compete with the Complainant. Thus, the Panel finds this instance of bad faith inapposite in the current proceeding.

The Complainant contends, more plausibly, that the Respondent registered the Domain Names to mislead Internet users for commercial gain, consistent with the example of bad faith cited in the Policy, paragraph 4(b)(iv). The Panel concurs with this assessment. The Domain Names undeniably have been used to promote the Respondent’s appliance service business, which involves repair services for many brands. Neither the current nor former websites associated with the Domain Names have accurately and exclusively focused on warranty or non-warranty service for the Complainant’s products, as discussed above in connection with the second element of the Policy. It is likely that the Respondent may, in its advertising and website content, lawfully refer to the various brands that it services. But a domain name including one of those marks misleadingly suggests an affiliation with the trademark holder and can only be considered legitimate if the Respondent meets certain conditions to avoid confusion, such as those outlined above. Absent those conditions, the deliberate use of the Complainant’s marks, without permission and for commercial gain, must be deemed exploitative and cannot be considered an act in good faith for purposes of the Policy, paragraph 4(b).

The Panel concludes that the third element of the Policy has been established.

D. Reverse Domain Name Hijacking

Paragraph 15(e) of the Rules states that if, “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

If a complainant merely fails to prevail on the merits, this is not sufficient to establish harassment or infer that the complainant should have known that its complaint could not succeed under a colorable interpretation of the Policy. See WIPO Overview 2.0, paragraph 4.17. In any event, the Panel in this instance finds the Complaint well grounded, and declines therefore to find an abuse of process or attempted Reverse Domain Name Hijacking.

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 Names, <boschappliancepros.com>, <bosch-factory-service.com>, <thermadoreappliancerepair.com> and <thermador-factory-service.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: January 26, 2016