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Robert Bosch GmbH v. Lee Young Pyo [2005] GENDND 1800 (10 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Robert Bosch GmbH v. Lee Young Pyo

Case No. D2005-0162

1. The Parties

Complainant is Robert Bosch GmbH, Gerlingen-Schillerhöhe, Germany, represented by Telefónica Deutschland GmbH, Germany.

Respondent is Lee Young Pyo, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <boschcarservice.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2005. On March 14, 2005, the administrative proceeding was suspended on request of Complainant with a view to reaching an agreement with the then registrant of record. The administrative proceeding was re-instituted on June 30, 2005 on receipt by the Center of a revised Complaint (thereafter “Revised Complaint”) against a new registrant of record, “Y.G. Cho”. On July 8, 2005, the Center received an amendment to the Revised Complaint reflecting a change of registrant identified as “kim in ho”. On July 21, 2005, Complainant filed a second amendment to the Revised Complaint reflecting another change of registrant identified as “Lee Young Pyo”, namely Respondent.

On July 21 and 22, 2005, eNom, the Registrar, confirmed that the domain name in dispute had been placed under a locked status as to prevent any transfers or changes to the registration information during the proceedings, and that the contact information for the domain name could be found by doing a whois lookup at their website.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 22, 2005.

Some time between July 22 and August 1, 2005, the registrant of record was changed again to a third party identified as “shirai morymotoo”. Alerted to this change, which was in breach of Policy, paragraph 8(a), eNom reversed the registration on August 15, 2005, to reflect Respondent as registrant of record.

In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 18, 2005.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on August 26, 2005. 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.

On September 8, 2005, the Panel, through a Panel Order, made a request for further information pursuant to paragraph 12 of the Rules. Submissions by Complainant in response to the Panel’s inquiry were received by the Center on September 15, 2005.

4. Factual Background

Complainant is a well-known international company acting in the field of industrial technology, technique for durable goods and buildings and in automotive technology for which the company is known on the market under the name of “Bosch Carservice”.

Complainant registered several BOSCH trademarks:

- BOSCH, Community trademark n° 000067744, filed on June 26, 2000, covering products and services in classes 7, 9, 11, 12, 20, 35, 36, 37, 38, 39, 41 and 42.

- BOSCH, International trademark n° 675705, filed on December 14, 1996, covering products and services in classes 7, 9, 11, 12, 20, 35, 36, 37, 38, 39, 41 and 42.

- BOSCH, Korean trademark n° 448200, filed on May 21, 1999, covering products and services in class 12.

- BOSCH, Korean trademark n° 353291, filed on January 8, 1997, covering products and services in class 34.

- BOSCH, Korean trademark n° 80921, filed on January 23, 1982, renewed and covering products and services in classes 6, 7, 11, 17, 18, 19 & 20.

The disputed domain name <boschcarservice.com> was registered on May 29, 2005, through the registrar eNom and is currently held by Respondent, Lee Young Pyo, living in Seoul, Republic of Korea.

On July 6, 2005, Complainant informed Respondent by email that he was infringing Bosch Company’s trademark rights. He did not reply.

Respondent is not a licensee of Complainant and is not otherwise authorized to use any of Complainant’s trademarks.

The domain name has been used by the first Respondent (E.M.B. Jetronic Center S.L.) to resolve to a website under construction where Complainant’s logo was reproduced. Later, the domain name redirected Internet users to the official website of the online newspaper Netzeitung.de.

The domain name is no longer active (but is on registrar hold and lock for the purpose of this UDRP proceedings).

5. Parties’ Contentions

A. Complainant

The grounds of the Complaint can be summarized as follows:

(i) The relevant part of the domain name at issue, the term “BOSCH”, is confusingly similar with the trademark owned by Complainant, which is well known all over the world. In addition, Complainant markets some services under the name “CARSERVICES” and has done so for many years.

Complainant adds that anyone who hears about the disputed domain name would automatically think that it is related to Robert Bosch Company for its car-related services.

(ii) Concerning Respondent’s right or legitimate interest in the disputed domain name, Complainant contends that Respondent has still not provided evidence of it.

All the more, Respondent has not been licensed or otherwise permitted to use Complainant’s trademark or its name to apply for a domain name incorporating said trademark.

Complainant argues that Respondent is not the owner of any “BOSCHCARSERVICE” trademark or of any similar trademark, nor is he known under that name.

(iii) Furthermore, Complainant points out certain circumstances indicating that the domain name has been registered for the purpose of transferring said domain name to the owner of the trademark for valuable consideration in excess of the registrant’s out-of-pocket costs.

(iv) The domain name in dispute is not being used by Respondent.

(v) Concerning use in bad faith, Complainant contends that since the re-institution of administrative proceeding, the registrant of the domain name changed three times in order to avoid any transfer of domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is of the opinion that Complainant has demonstrated that it is the owner of several BOSCH trademarks throughout the world and especially in the Republic of Korea where Respondent is established according to the Whois data.

Moreover, even though more relevant under the third element of the UDRP, the Panel notes that these trademarks have been filed before the contested domain name was registered by Respondent.

Besides, the Panel is convinced of the renown of Complainant’s company.

The contested domain name is formed of the trademark BOSCH as prefix, to which the term “carservice” is added, which is precisely the name of a service provided for years by Complainant.

The disputed domain name incorporates in its relevant part Complainant’s trademark BOSCH, and it is well established that the addition of a suffix such as “.com” is not relevant to appreciate risks of confusion ( Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Therefore, the Panel is of the opinion that the domain name <boschcarservice.com> is confusingly similar to the numerous trademarks registered by Complainant, in conformity with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in respect of the domain name. In this regard, paragraph 4(c) of the Policy foresees a set of circumstances where Respondent may be considered as holding said rights or interests. Those circumstances are:

- To have used the Domain Name or to have made demonstrable preparations for its use before any notice of the dispute in connection with a bona fide offering of goods and services; or

- To have been commonly known by the Domain Name, even when no trademark or service mark right has been acquired; or

- To make a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent is not affiliated with Complainant and Complainant has not authorized Respondent to register any domain name incorporating its BOSCH mark. Complainant has not granted any license or otherwise permitted Respondent to use its trademark and Respondent is not known under the name BOSCH, BOSCH CARSERVICE or any similar term.

Besides, the disputed domain name is currently non-exploited and used to be directed to the official website of the online newspaper Netzeitung.de.

In addition, the Panel notes that Respondent did not contest any of Complainant’s allegations. It can consequently reasonalby be inferred that Respondent is not making any legitimate or fair non-commercial use of the domain name and was not preparing to exploit the domain name.

Also, the Panel is convinced that Respondent has knowledge of Complainant’s famous car services and is interested into taking advantage of Complainant’s reputation.

These facts can not be considered as a legitimate or fair non-commercial use of the domain name.

As Respondent did not reply, he failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. The Panel is entitled to draw any inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (See e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 and Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867).

Lastly, the Panel finds inconceivable that Respondent would have any rights or legitimate interests in the use of a domain name which is confusingly similar to a famous trademark and to a service provided by Complainant.

In accordance with the above, Complainant has established prima facie that Respondent has no rights or legitimate interests in the domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

“(i) circumstances indicating that you [Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As Respondent failed to reply to the Complaint, he could not provide evidence of his good faith in the registration or use of the domain name at issue.

However, the Panel can not conclude by itself that the use and registration of the disputed domain name was made in bad faith. The burden of proof is on Complainant.

According to the Complaint (Annex 8 to Revised Complaint), a Mr. Cho offered, on June 30, 2005, to sell the disputed domain name to Complainant for an amount of US$6,530, an amount obviously well in excess of out—of—pocket expenses for the registration and transfer of a domain name.

Following Complainant’s refusal of said offer and subsequent filing of the Revised Complaint, the domain name was successively transferred to several registrants (see paragraph 3, supra). These transfers occurred after Respondent was made aware of the administrative proceeding and was in breach of paragraph 8(a) of the Policy forbidding any transfer of the domain name during a UDRP proceeding.

The Panel is of the opinion that the successive registrants are the same person in effect. As stated in ABB Asea Brown Boveri Ltd. v. Yvonne Bienen, Bienen Enterprises, WIPO Case No. D2002-0178, the successive names provided in the Whois data could be “either an alias of the original registrant or one of its alter ego, being the name of another entity selected by the original registrant to suit his cyberflighting purpose”. This kind of behavior clearly demonstrates Respondent’s intention to disrupt the administrative proceeding. This is obviously a clear case of cyberflighting which proves bad faith use and registration. Indeed, as quoted by the panel in Merck KGaA v. Taha Chhipa, WIPO Case No. D2004-0905, “If there has been a transfer of the registration of the disputed domain name after the administrative proceeding has been commenced, then there is a clear case of “cyberflighing” and this itself constitutes bad faith”.

As a result, transferors and transferees have to be treated as the same person for the purpose of this Administrative proceeding. In this context, the offer made on June 30, 2005 to sell the domain name for an amount in excess of the out-of-pocket costs directly related to the domain name is to be considered as emanating from Respondent and is further evidence of use in bad faith of the domain name by Respondent.

Lastly, the domain name was first redirected to the website Netzeitung.de and then non exploited. This is also an indication of a bad faith use of the disputed domain name as various administrative panels have held that passive use of a domain name constitutes bad faith registration and use in certain circumstances (See, e.g., Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel is of the view that the facts in this case warrant a similar finding than in the Telstra case.

Consequently, in view of the above, it is established that Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <boschcarservice.com> be transferred to Complainant.

Nathalie Dreyfus
Sole Panelist

Date: October 10, 2005