WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robert Bosch GmbH v. JUNGYUHKOOK / beats
Case No. D2019-2162
1. The Parties
The Complainant is Robert Bosch GmbH, Germany, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is JUNGYUHKOOK / beats, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names <boschebike.com> and <boschsolar.com> are registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2019. On September 6, 2019, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain names. On September 9, 2019, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 11, 2019, the Center notified the Parties, in both English and Korean, that the Complaint was submitted in English, and that according to the Registrar, the language of the registration agreement is Korean. In the same notification, the Center requested the Complainant to provide, by September 14, 2019:
“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) … the Complaint translated into Korean; or
3) … a request for English to be the language of the administrative proceedings.”
To the Respondent, the Center stated that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by September 16, 2019.” The Center also advised the Respondent:
“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by [September 16, 2019], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On September 12, 2019, the Complainant submitted an amended Complaint, which added text requesting that English be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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, in both English and Korean, of the Complaint, and the proceeding commenced on September 25, 2019. In accordance with the Rules, paragraph 5, the due date for the Response was October 15, 2019. The Respondent did not submit any response. Accordingly, on October 16, 2019, the Center notified the Respondent’s default.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on October 31, 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 describes itself as a “multinational engineering and electronics company” that first began operations in Stuttgart in 1886, and which now “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 Complainant has obtained multiple registrations of the BOSCH mark in several jurisdictions, including Germany (registered on December 18, 1912), Republic of Korea (registered on August 24, 1981), and the United States of America (registered on December 1, 1981).
The Complainant owns and operates the domain names <bosch.com>, registered on April 4, 1995, and <bosch-solarenergy.com>, registered on May 29, 2009.
The Respondent registered the disputed domain name <boschsolar.com> on December 12, 2014, and the disputed domain name <boschebike.com> on September 23, 2016.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. In addition, the Complaint states, inter alia:
“Bosch products are offered, and recognized across the world, and Bosch employs about 402,000 associates globally in around 440 subsidiaries and regional companies across 60 countries.”
“[T]he Complainant’s BOSCH brand is well-recognized by consumers, industry peers, and the broader global community.”
“[The] Complainant enjoys a substantial degree of public recognition in the trademarks and has seen them become uniquely associated with the Complainant.”
“‘ebike’ –Complainant is one of the leading manufacturers of drive systems for electric bicycles (eBikes) which are used by more than 70 well-known bicycle manufacturers worldwide ….”
“‘solar’ – Complainant previously operated a solar cell/panel manufacturing company under the name Bosch Solar Energy AG and utilized the domain name <bosch-solarenergy.com> to promote its business.”
The Respondent did not reply to the Complainant’s contentions. Under paragraphs 5(f) and 14(a) of the Rules, the Panel may decide the dispute based on the Complaint. Paragraph 14(b) allows the Panel to draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
The Panel must initially address the language of the proceeding.
The Registrar informed the Center that the language of the registration agreement is Korean. Paragraph 11(a) of the Rules provides that the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the registration agreement. This paragraph also states that the determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” The Complainant requests that English be the language of the proceeding, asserting that communication in Korean would lead to an undue burden and delay.
After receiving the Complaint submitted in English, the Center notified the Parties, in both Korean and English, of the Center’s procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding conducted in English. The Respondent did not respond to the Center’s notification, and has defaulted. The Panel also notes that all of the Center’s communications to the Parties have been sent in both Korean and English.
With only the Complainant participating in the proceeding, there is little point in requiring the proceeding to be in Korean. The Panel decides that English is the language of the proceeding.
On the merits, in order to prevail, the Complainant must satisfy each of the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel determines that the disputed domain names are identical or confusingly similar to a mark in which the Complainant has rights. The Complainant has provided ample evidence that it has rights in the BOSCH mark. The Complainant’s mark is clearly recognizable in the disputed domain names, <boschebike.com> and <boschsolar.com>. The addition of the term “ebike” or “solar” does not defeat confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The generic Top-Level Domain “.com” is a standard registration requirement, and is not considered in determining confusing similarity. See WIPO Overview 3.0, section 1.11.
The first element is established.
B. Rights or Legitimate Interests
The Complainant states that it “has not given Respondent permission to use Complainant’s trademarks in any manner,” and has met its initial burden of making a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The burden shifts to the Respondent to demonstrate any such rights or legitimate interests. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may demonstrate the Respondent’s rights or legitimate interests in the disputed domain names. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain names, as described in the Policy, or otherwise.
The second element is also satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that each disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that are “evidence of the registration and use of a domain name in bad faith”.
The disputed domain name <boschebike.com> resolves to a website whose content includes a search portal with links for, among others, “Bosch Ebike” and “Bosch Dishwashers”. Likewise, the search portal in the website for the disputed domain name <boschsolar.com> provides links for “Bosch” and “Bosch Solar”. In short, the Respondent’s websites contain links that are related to the Complainant’s products.
The Panel determines that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website … by creating a likelihood of confusion with the [C]omplainant’s mark,” as set forth in paragraph 4(b)(iv) of the Policy.
The third element is demonstrated.
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 <boschebike.com> and <boschsolar.com> be transferred to the Complainant.
Date: November 13, 2019