WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BSH Home Appliances Corporation v. Appliance Repair 247
Case No. D2016-0430
1. The Parties
Complainant is BSH Home Appliances Corporation of New Bern, North Carolina, United States of America ("United States"), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
Respondent is Appliance Repair 247 of West Hollywood, California, United States.
2. The Domain Names and Registrar
The disputed domain names <thermador-dacor-repair-center.com> and <thermadorrepair.biz> (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 March 3, 2016. On March 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 3, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 1, 2016.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 5, 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
According to the Complaint, Complainant is a wholly-owned subsidiary of BSH Hausgeräte GmbH, the largest manufacturer of home appliances in Europe and a major worldwide manufacturer of such goods. Complainant makes and sells numerous products under a variety of trademarks, including the THERMADOR mark in association with ovens, ranges, refrigerators, and dishwashers. The THERMADOR mark has been used in commerce for several decades, and Complainant holds several registrations of that mark with the United States Patent and Trademark Office, including United States trademark THERMADOR, registered on December 30, 1980.
Complainant also operates a website at "www.thermador.com" and maintains an online presence via various social media, including Facebook. Complainant maintains a list of "authorized servicers" for its customers who need repairs done on their Thermador appliances.
The Domain Names were registered on February 20, 2013 (<thermadorrepair.biz>) and December 23, 2015 (<thermador-dacor-repair-center.com>). According to Complainant, and as undisputed by Respondent, "the company behind the Domain Names is E Appliance Repair Company based in Sherman Oaks, California." The registrant organization for both Domain Names is Appliance Repair 247, which operates a website at "www.appliancerepair247.com". This website boasts: "We are experts in the repair of all brands including Maytag, Speed Queen, AEG, Bosch, Phillips, Hotpoint, Whirlpool, (…), and many other brands." Most of the listed appliance manufacturers are competitors of Complainant. According to Complainant, and as undisputed by Respondent, there is some type of common ownership or affiliation between E Appliance Repair Company and Appliance Repair 247. This allegation is corroborated by the fact that some of the contact information in the WhoIs record for both of the Domain Names is identical.
The website at "www.eappliancerepair.com" claims that E Appliance Repair is a "certified and preferred service provider" of Thermador products. Complainant states that this is not so.
The Domain Name <thermador-dacor-repair-center.com> resolves to a website claiming to be "San Diego's best choice for appliances and appliance service." The site also claims to offer "delivery and installation services for all appliances we sell," and that installation "is handled by trained Thermador Dacor Repair Center installers." Dacor is unrelated to Complainant, and is also an appliance manufacturer.
The Domain Name <thermadorrepair.biz> resolves to a website featuring the following text:
"Welcome to Thermador Appliance Repair Service
Put your trust in Thermador Appliance Repair!
Thermador Appliance Repair Service has been providing high quality repair services in the LA area for more than 20 years."
5. Parties' Contentions
Complainant asserts that it has satisfied the three elements required under the Policy for a transfer of each of the Domain Names. According to Complainant, Respondent is not and never has been authorized to use the THERMADOR mark in a domain name or otherwise, and that Respondent is not a certified service provider in connection with the Thermador line of appliances. Complainant alleges that Respondent is seeking to exploit Complainant's well-known trademark for commercial gain, which is bad faith within the meaning of the Policy. Also, inasmuch as Respondent purports to repair Thermador appliances and Complainant offers those services as well, Respondent and Complainant are "competitors" within the meaning of the Policy and Respondent is seeking to disrupt the repair segment of Complainant's business.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant clearly holds rights in its registered trademark THERMADOR. The Domain Names incorporate this mark in its entirety and add the descriptive words "repair" or "repair center". One of the Domain Names also adds the unrelated trademark DACOR. In the Panel's view, the additional descriptive words (and the mark DACOR) do not diminish the confusing similarity between the mark and the Domain Names.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
With respect to each Domain Name, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent has not come forward with any explanation of its purported bona fides, and the Panel can discern none. Whether Respondent has the right to carry on a business repairing Thermador and other appliances is not the question. Rather, for purposes of this proceeding, the question is whether Respondent has a legitimate interest in these two Domain Names, which incorporate Complainant's distinctive mark and resolve to websites that misleadingly suggest an affiliation with Complainant.1
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
With respect to each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent registered and has been using the Domain Names in bad faith. Respondent is using the Domain Names to create the false impression that its repair services are somehow sanctioned by, or affiliated with, Complainant, and thereby attract consumers to Respondent's websites. This is bad faith within the meaning of Policy, paragraph 4(b)(iv).
The Panel is also prepared to find that Respondent is in bad faith within the meaning of Policy, paragraph 4(b)(iii) as well, inasmuch as Complainant offers, either directly or through certified repair services providers, appliance repair services as part of its overall offerings to consumers. To the extent Respondent is seeking to lure consumers through the false suggestion that its repair services are affiliated with Complainant, Respondent is seeking to disrupt the business of a competitor.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <thermador-dacor-repair-center.com> and <thermadorrepair.biz> be transferred to Complainant.
Robert A. Badgley
Date: April 10, 2016
1 The Panel notes that while <thermadorrepair.biz> contains a disclaimer of association with Complainant in the footer of the site to which it resolves, this is insufficient to offset the impression of some sort of affiliation with Complainant created by the site, which, for example, states that Respondent's Thermador appliance repair service technicians are "certified".