WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robert Bosch GmbH v. Chinedu Utomi, DK BOSCH
Case No. D2018-0191
1. The Parties
The Complainant is Robert Bosch GmbH of Gerlingen-Schillerhöhe, Germany, represented by Gleiss Lutz, Germany.
The Respondent is Chinedu Utomi, DK BOSCH of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <dkbosch.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2018. On January 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2018, 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 February 19, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2018.
The Center appointed Thomas Hoeren, Pablo A. Palazzi, and Christopher J. Pibus on April 5, 2018. The Panel finds that it was properly constituted. Each member of 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 was founded in 1886 by Robert Bosch and is now a global supplier of technology and associated services in four business sectors: Mobility Solutions, Industrial Technology, Consumer Goods, and Energy and Building Technology. The Complainant employs 389,000 people directly or through its 440 subsidiaries in approximately 60 countries around the world, and it generated revenue of EUR 73.1 billion in 2016.
The Complainant has a business presence in Denmark through its Danish subsidiary, Robert Bosch A/S in Ballerup. The Danish subsidiary of the Complainant operates a website at “www.bosch.dk” and uses the email address of “firstname.lastname@example.org”. Employees of Robert Bosch A/S use email addresses ending “@dk.bosch.com”. The Complainant’s domain name <bosch.dk> was registered on October 22, 1996.
The Complainant owns many trademark registrations for the mark BOSCH around the world, including
European Union Trademark Registration No. 010359966 (registered January 30, 2014) for BOSCH.
The Respondent registered the disputed domain name on November 13, 2017. The Respondent listed on the WhoIs database is Chinedu Utomi. At the time the Complaint was filed the disputed domain name reverted to a website that was “under construction”.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant submits that it owns registered trademark rights in the mark BOSCH by virtue of many trademark registrations around the world, including European Union Registration No. 010359966. The Complainant contends that the disputed domain name <dkbosch.com> replicates the Complainant’s registered trademark in its entirety. The letters “dk” are commonly known to denote the country Denmark, and as such the addition of the geographical designation “dk” as a prefix in the disputed domain name does not serve to distinguish it from the Complainant’s trademark. Accordingly, the disputed domain name <dkbosch.com> is confusingly similar to the Complainant’s registered trademark.
Rights or Legitimate Interests
The Complainant submits that the Respondent is not commonly known by the name Bosch, and that his name Chinedu Utomi has no resemblance to the BOSCH trademark. The Respondent does not own any trademark that consists of “dkbosch”.
The Complainant further submits that the Respondent has not used the disputed domain name in a bona fide offering of goods and services. The disputed domain name reverts to a website that is “under construction”.
Further, the Complainant submits that the Respondent contacted the Complainant’s subsidiary, Robert Bosch A/S, and obtained a statement of account for a customer using the name AB Corepixel. Once this statement of account was obtained, the Respondent created fake email addresses ending in “@dkbosch.com”, which were used to contact AB Corepixel directly, demanding payment of the outstanding account in the amount of EUR 126,605.82. The names created in the email addresses used by the Respondent belong to actual employees of Robert Bosch A/S and were likely retrieved from LinkedIn accounts. The customer, AB Corepixel, became suspicious and did not transfer any money, and then it brought the fraudulent activity to the Complainant’s attention.
The Complainant submits that this use of a confusingly similar domain name for fraudulent purposes is not bona fide use under the Policy.
Registered and Used in Bad Faith
The Complainant contends that the registration and use of a confusingly similar domain name for the purposes of engaging in a fraudulent scheme as described above is evidence of bad faith under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(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; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark. The Complainant has submitted evidence of well-established rights in the BOSCH trademark by virtue of the registrations listed in section 4 of this Decision. The Complainant’s registered trademark has been replicated in its entirety in the disputed domain name. The addition of the geographical abbreviation “dk” denoting Denmark does not serve to distinguish the disputed domain name from the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant obviously has not licensed or otherwise authorized the Respondent to use the BOSCH trademark in any form, and certainly not for the nefarious purpose of deceiving the Complainant’s customers about their accounts.
It is clear that the Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, as the disputed domain name is serving as a platform for fraudulent activity targeting the Complainant’s customer accounts.
Having established a prima facie case, the burden of proof shifts to the Respondent to prove that it holds rights or legitimate interests in its domain name. The Panel notes that no response has been filed in this proceeding.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has provided compelling evidence that the disputed domain name has been registered and used for unlawful purposes, namely to function as a means to defraud customers through fake identities and associated email addresses. The Respondent was clearly aware of the Complainant’s name and trademark rights, and set out to defraud third parties by deliberately misappropriating the Complainant’s trademark. As a result, the Panel finds that the Respondent’s conduct constitutes bad faith in a particularly pernicious form, and is exactly the form of abusive registration and use which the Policy is intended to prevent. See Magna International Inc. v. Roger Wells and William Green, WIPO Case No. D2017-0888.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
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 <dkbosch.com> be transferred to the Complainant.
Christopher J. Pibus
Pablo A. Palazzi
Date: April 17, 2018