WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robert Bosch GmbH v. Rohit Mehta
Case No. D2019-2178
1. The Parties
The Complainant is Robert Bosch GmbH, Germany, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Rohit Mehta, India.
2. The Domain Name and Registrar
The disputed domain name <boschrexrothgroup.com> is registered with Wix.com Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 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 September 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2019.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on October 15, 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, Robert Bosch GmbH (“Bosch”), is a privately-owned, multinational engineering and electronics company founded by German engineer Robert Bosch when he first started the “Workshop for Precision Mechanics and Electrical Engineering” in Stuttgart in 1886. Headquartered in Gerlingen, Germany, and part of the Bosch Group, Bosch manufactures a wide variety of products ranging from automotive components (brakes, controls, fuel systems, starter motors, and steering systems) to industrial products and consumer goods including household appliances, power tools, security systems and thermos technology. Its operations are divided into four business sectors:
Mobility Solutions, Industrial Technology, Consumer Goods, and Energy and Building Technology.
As a leading Internet of Things (IoT) company, Bosch offers innovative solutions for smart homes, smart cities, connected mobility, and connected manufacturing. It uses its expertise in sensor technology, software, and services, as well as its own IoT cloud, to offer its customers connected, cross-domain solutions from a single source.
The Complainant’s products are offered, and recognized, across the world, and employs about 402,000 associates globally in around 440 subsidiaries and regional companies across 60 countries. The Complainant achieved EUR78.1 billion sales revenue and invested EUR7.3 billion in research and development in 2017.
The Complainant actively interacts with its customers via its primary domain name <bosch.com> as well as on its official Facebook page (more than 1.25 million likes), its Bosch Global Youtube channel (17.5K subscribers), and its Twitter page (231K followers).
In addition, the Complainant maintains an active website at its domain name <boschrexroth.com> which it uses to promote its REXROTH brand. Alexa.com ranks the Complainant’s <bosch.com> and <boschrexroth.com> domain names as the 52,341st and 51,311th most popular websites globally. In India specifically, <bosch.com> is ranked 46,876th while <boschrexroth.com> is ranked as the 74,412th most popular website.
The Complainant has proven to be the owner of the BOSCH and REXROTH trademarks, which enjoy comprehensive protection through many registrations thereof worldwide.
The REXROTH brand is owned by Bosch Rexroth AG, a wholly owned subsidiary of Robert Bosch GmbH. Through its subsidiary, and on its own, the Complainant is the owner of various trademark registrations in India, Europe, the United States of America and elsewhere that comprise the BOSCH and the REXROTH marks.
The Complainant is inter alia the owner of:
Indian trademark No. 156675 BOSCH, registered on December 16, 1952.
Indian trademark No. 156677 BOSCH, registered on December 16, 1952.
Indian trademark No. 156678 BOSCH, registered on December 16, 1952.
European Union trademark No. 00067744 BOSCH, registered on March 26, 1996.
Indian trademark No. 934402 REXROTH, registered on June 23, 2000.
Indian trademark No. 934403 REXROTH, registered on June 23, 2000.
United States of America trademark No. 0993249 REXROTHregistered on September 17, 1974
European Union trademark No. 002266187 REXROTH, filed on June 13, 2002.
The Complainant registered its <bosch.com> domain name on April 4, 1995 and its <boschrexroth.com> domain name on April 19, 2000.
The disputed domain name was registered on August 2, 2019 and is used to host a website that features the BOSCH and REXROTH trademarks as well as the official logo of Bosch Rexroth, while actively selling products allegedly made by the Complainant as well as products of the Complainant’s competitors.
5. Parties’ Contentions
The Complainant claims that the disputed domain name should be considered a combination of the Complainant’s BOSCH and REXROTH trademarks, together with the generic, descriptive term “group”. As such, the resulting disputed domain name must be considered confusingly similar to those trademarks; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(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.
A. Identical or Confusingly Similar
The disputed domain name is a combination of the Complainant’s BOSCH and REXROTH trademarks, together with the term “group”.
This Panel agrees with the Complainant’s assertion and previous Panels’ determinations, that a disputed domain name that merely combines several of a complainant’s trademarks does not differentiate that domain name from those trademarks. See Citigroup, Inc., MasterCard International Incorporated v. Domain Proxies, LLC, WIPO Case No. D2008-0951 (“Panel finds that each of the trademarks CITI and MASTERCARD is so distinctive that use of the combination CITIMASTERCARD in the disputed domain name is confusingly similar to each of the Complainants’ trademarks”).
Moreover, the addition of the term “group” to such a combination of trademarks does not prevent the confusing similarity.
In fact, it has already been held by previous UDRP panels that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity between a domain name and a complainant’s trademark. Indeed, the Complainant’s trademark is clearly recognizable in the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Therefore, the Panel finds the disputed domain name to be confusingly similar to the BOSCH and REXROTH trademarks in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection to or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions to claim any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.
Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the BOSCH and REXROTH trademarks when the Respondent registered the disputed domain name.
By registering a domain name that merely combines the BOSCH and REXROTH trademarks with the descriptive company designation “group” at the end, the Respondent has clearly shown a knowledge of and familiarity with the Complainant’s brand and business.
This is even more evident when taking into consideration the fact that the Respondent is using the disputed domain name to host a website that features the BOSCH and REXROTH trademarks as well as the official logo of Bosch Rexroth, while actively selling products allegedly made by the Complainant as well as products of the Complainant’s competitors.
The Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business, and that the Respondent must have had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name.
Moreover, the Panel notes that the Respondent’s use of the disputed domain name clearly constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under Policy.
Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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 <boschrexrothgroup.com> be transferred to the Complainant.
Date: October 29, 2019