WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robert Bosch GmbH v. James H Park
Case No. D2019-0127
1. The Parties
The Complainant is Robert Bosch GmbH of Gerlingen-Schillerhöhe, Germany, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is James H Park of GimHae-Shi, Republic of Korea.
2. The Domain Names and Registrars
The disputed domain names <boschbattery.com> and <ebike-bosch.com> (cumulatively referred to as the “disputed domain names”) are registered with DropCatch.com 997 LLC and DropCatch.com 665 LLC (cumulatively referred to as the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2019. On January 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 22, 2019, 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 January 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2019.
The Center appointed William F. Hamilton as the sole panelist in this matter on February 26, 2019. 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 manufactures and sells a wide variety of products ranging from automotive components to household appliances and other consumer goods including an eBike subsidiary which offers for sale various eBike products including eBike batteries. The Complainant offers its products internationally and employs over 400,000 employees across 60 countries. The Complainant owns and operates the website “www.bosch.com”. Nearly four decades ago the Complainant registered the mark BOSCH (the “Mark”) with the Korea Intellectual Property Office (e.g., Reg. No. 4000777400000, registered on August 24, 1981), the United States Patent and Trademark Office, and the European Union Intellectual Property Office.
The disputed domain name <boschbattery.com> was registered on August 13, 2016, and resolves to a pay-per-click (“PPC”) website. The disputed domain name <ebike-bosch.com> was registered on July 12, 2017, and also resolves to a PPC website.
5. Parties’ Contentions
The Complainant asserts the disputed domain names were confusingly similar to the Complainant’s Mark because the disputed domain names include the Mark in its entirety. In one case the generic word “battery” is used as a suffix in the disputed domain name. The other disputed domain name uses the generic term “ebike” as a prefix. The Complainant asserts the Respondent has no rights or legitimate interests in the disputed domain names having never conducted any bona fide business under the disputed domain names. The Complainant specifically disavows having licensed or in any other manner permitted the Respondent to use the Mark in the disputed domain names. Finally, the Complainant asserts the that disputed domain names were registered and used in bad faith in an attempt to attract and divert unsuspecting Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s and its trademarks. The Complainant asserts that the Respondent is currently offering to sell the disputed domain names, which constitutes bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds the disputed domain names are confusingly similar to the Complainant’s Mark. The use of an additional term as either a suffix (here “ebike”) or a prefix (here “batteries”) does not avoid a determination of confusing similarity. A domain name that consists of a complainant’s trademark and an additional term is confusingly similar to that complainant’s trademarks, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at 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 has met its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has failed to respond to the complaint or to offer any evidence of bona fide use of the disputed domain names. There is no evidence that the Respondent is commonly known by the Mark or derivations thereof. The Respondent is “James H Park,” a name without similarity to the disputed domain names or the Complainant’s Mark. The Complainant has specifically stated that the Respondent has never been authorized to use the Mark or the disputed domain names. Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.
The Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds the disputed domain names were registered and used in bad faith. The products sold through the Respondent’s website mirror the products offered by the Complainant. Even the slightest Internet check or due diligence prior to registering the disputed domain names would have revealed the Mark. “It defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. Moreover, the Complainant and the Mark are known in South Korea where the Respondent resides. The Panel further notes that the Respondent is a professional domainer who holds registrations for over 7,000 domain names, including domain names that incorporate the trademarks of well-known brands and businesses which suggests a pattern of abusive registration and use. BHP Billiton Innovation Pty Ltd v. Cameron David Jackson / PrivacyDotLink Customer 2415391 / PrivacyDotLink Customer 2463008, WIPO Case No. D2016-2020. Finally, the Respondent has failed to respond to the Complainant’s cease and desist communications further evidencing bad faith. Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330. It is evident to the Panel that Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website…by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on [Respondent’s] website or location.” UDRP Policy, paragraph 4(b)(iv).
The Complainant has met its burden of proof 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 names <boschbattery.com> and <ebike-bosch.com> be transferred to the Complainant.
William F. Hamilton
Date: March 13, 2019