WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BSH Hausgeräte GmbH, Robert Bosch Gmbh v. Trading MVK LLC
Case No. D2021-2450
1. The Parties
The Complainant is BSH Hausgeräte GmbH, Robert Bosch Gmbh, Germany, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Trading MVK LLC, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <boschua.com> (the “Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2021. On July 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 6, 2021.
On August 3, 2021, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On August 6, 2021, the Complainant reconfirmed its request that English be the language of the proceedings referring to respective arguments in support of its request. The Respondent did not provide any comments regarding the language of the proceedings.
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 of the Complaint in both English and Russian, and the proceedings commenced on August 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2021.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on October 1, 2021. 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 in the present proceedings is Robert Bosch GmbH (the “First Complainant”) and BSH Hausgeräte GmbH (the “Second Complainant”).
The First Complainant is a global supplier of technology services. It owns 440 subsidiaries in over 60 countries and works with service partners across 150 regions worldwide. In 2019, the First Complainant generated worldwide sales of approximately EUR 77.7 billion. The Second Complainant is one of the largest home appliance manufacturers in Europe.
The First Complainant is the owner of numerous BOSCH trademark registrations, including:
- the International Registration BOSCH No. 265704 registered on February 14, 1963;
- the International Registration BOSCH No. 675705 registered on December 14, 1996;
- the Ukrainian Registration BOSCH No. 1544 registered on September 30, 1993;
- the Ukrainian Registration BOSCH (in Cyrillic) No. 1876 registered on October 15, 1993.
The Second Complainant has been a trade mark licensee of the First Complainant for the BOSCH mark since May 31, 2000.
The Complainant is also the owner of numerous domain names incorporating its BOSCH mark, including <bosch.ua> and <bosch-home.com.ua>. These domain names resolve to active websites offering the Complainant’ goods and services to the Ukrainian market.
The Respondent registered the Domain Name on November 19, 2019.
As of the date of this Decision, the Domain Name resolves to a website featuring the Complainant’s BOSCH mark and offering for sale the Complainant’s products (the “Website”).
5. Parties’ Contentions
The Complainant requests that the Domain Name be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.
First, the Complainant submits that the Domain Name is confusingly similar to the BOSCH trademark registrations of the Complainant.
Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Name.
Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Language of Proceedings
The language of the Registration Agreement for the Domain Name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
As noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case, and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the language of the Registration Agreement is also made available in English by the Registrar. Moreover, the Complainant argues that the Domain Name includes Latin characters which supports the finding that the Respondent is competent in the English language. Moreover, the Complainant alleges that it is unable to communicate in Russian and translation of the Complaint would unfairly disadvantage and burden the Complainant, as well as would delay the proceedings. Lastly, the Complainant submits that translating the Complaint into Russian would lead to substantial expenses incurred by the Complainant.
The Panel accepts that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Moreover, the Panel notes that the Respondent did not comment on the language of the proceedings.
Thus, taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.
The Complainant holds several valid BOSCH trademark registrations, which precede the registration of the Domain Name.
The Domain Name incorporates the Complainant’s BOSCH trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).
This Panel finds that the addition of letters “ua”, which can be considered the geographical abreviation “UA” or other term, does not prevent confusing similarity between the Domain Name and the Complainant’s trademark. UDRP panels have consistently held that 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. See WIPO Overview 3.0, section 1.8.
The Top-level domain “.com” in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.
Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.
On the contrary, it results from the evidence in the record that there are the Complainant’s BOSCH trademark registrations, which predate the Respondent’s registration of the Domain Name. There is no evidence in the case that the Complainant has licensed or otherwise permitted the Respondent to use the BOSCH trademark or to register the Domain Name incorporating this trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name.
Moreover, it results from the evidence in the record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, as well as it does not make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain.
As of the date of this Decision, the Domain Name resolves to the Website featuring the Complainant’s BOSCH mark and offering for sale the Complainant’s products without the Complainant’s authorisaton or the possession of any license.
Moreover, the Panel notes that on January 11, 2021 the Complainant carried out a test purchase to determine the nature of products offered through the Website. It confirmed that the product was made available for purchase by the Complainant in Ukraine only up until 2010. Also, the packaging of the stock was determined to be noncompliant with Ukrainian law. Thus, according to the evidence presented by the Complainant, the Domain Name appears to be used by the Respondent to sell and distribute grey market products under the BOSCH brand. Such use of the Domain Name does not qualify as a legitimate noncommercial or fair use.
Furthermore, the Panel finds that the nature of the Domain Name suggests an affiliation with the Complainant and its BOSCH trademark, as the Domain Name wholly reproduces the Complainant’s trademark in entirety with the additional letters “ua”. Also, the Website features the Complainant’s BOSCH mark. Fundamentally, the Respondent’s use of the Domain Name will not be considered “fair” if it falsely suggests affiliation with the Complainant as a trademark owner. See WIPO Overview 3.0, section 2.5.
Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
As indicated above, the Complainant’s rights in the BOSCH trademark predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the Domain Name. This finding is supported by the type of products offered through the Domain Name. Also, it has been proven to the Panel’s satisfaction that the Complainant’s BOSCH trademark is wellknown and unique to the Complainant. Thus, the Respondent could not likely reasonably ignore the reputation of products the trademarks identify. In sum, the Respondent in all likelihood registered the Domain Name with the expectation of taking advantage of the reputation of the Complainant’s trademark.
The Panel accepts that the addition of letters “ua” in fact adds to the confusion as the Domain Name is likely to be viewed by consumers as an online location authorized to sell the Complainant’s products in Ukraine in a manner similar to the Complainant’s official domain names.
Moreover, the Domain Name is being used in bad faith by the Respondent to offer the Complainant’s products for sale without the Complainant’s authorization. Displaying the BOSCH trademark together with the false disclaimer that the Respondent is an “Official BOSCH guarantee”, as well as offering the Complainant’s products (some of which had been already been discontinued in Ukraine) is undoubtedly aimed at diverting customers from the Complainant’s official Ukrainian websites. Such use of the Domain Name also risks damage to the Complainant’s reputation, as customers would expect to be purchasing the authorized and legitimate Complainant’s products. Additionally, as previously noted, the nature of the Domain Name suggests an affiliation with the Complainant. The Panel accepts that the Respondent is using the Domain Name in an attempt to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the BOSCH trademark as to the source, sponsorship, affiliation, or endorsement of the website or the products offered on this Website by the Respondent.
For the reasons discussed above, the Panel finds that the Complainant has proved the requirements 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 Domain Name <boschua.com> be transferred to the Complainant.
Date: October 15, 2021