WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Robert Bosch GmbH v. Maxim SPD CHervinchuk

Case No. D2018-1906

1. The Parties

The Complainant is Robert Bosch GmbH of Stuttgart, Germany, represented by Vasil Kisil & Partners, Ukraine.

The Respondent is Maxim SPD CHervinchuk of Kiev, Ukraine, represented by Andrii Raietsky, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <bosch-ua.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2018. On August 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2018, 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 August 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2018. The Response was filed with the Center on September 15, 2018.

The Center appointed Assen Alexiev as the sole panelist in this matter on October 1, 2018. 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 was founded in 1886 by Robert Bosch and is now a global supplier of technology and associated services in the business sectors of mobility solutions, industrial technology, consumer goods, and energy and building technology. The Complainant employs 389,000 people and has 440 subsidiaries in about 60 countries around the world, and its revenue in 2017 was equal to EUR 78.1 billion.

The Complainant is the owner of the following trademark registrations for BOSCH (the “BOSCH trademark”):

- the international trademark BOSCH with registration No. 265704, registered on February 14, 1963 for the territories of 36 countries, including Ukraine, for goods in International Classes 6, 7, 8, 9, 10, 11, 12, 14, 17, 20, 21, and 26;

- the international trademark BOSCH with registration No. 675705, registered on December 14, 1996 for the territories of 61 countries, including Ukraine, for goods and services in International Classes 7, 9, 11, 12, 20, 35, 36, 37, 38, 39, 41, and 42;

- the Ukrainian trademark BOSCH with registration No. 1544, with application date August 04, 1969, registered for goods in International Classes 7, 9, 11, and 12; and

- the Ukrainian trademark БОШ (Cyrillic transcription of BOSCH) with registration No. 1876, with application date February 16, 1973, registered for goods in International Classes 7, 9, 11, 12, and 17.

The Complainant has a business presence in Ukraine through its Ukrainian subsidiary, Robert Bosch Ltd LLC in Kyiv. This subsidiary of the Complainant operates its official website at “www.bosch.ua”. Another Ukrainian subsidiary of the Complainant is BSH Pobutova Technika LLC. It operates its official website at “www.bosch-home.com.ua”. The domain name <bosch.ua> was registered on November 14, 2001, and the domain name <bosch-home.com.ua> was registered on February 13, 2008.

The Respondent registered the disputed domain name on September 8, 2008. It currently resolves to a website that offers for sale BOSCH branded household appliance products.

5. Parties’ Contentions

A. Complainant

The Complainant points out that the BOSCH trademark has been used extensively and is well-known by consumers worldwide. The element “bosch” is the recognizable part of the Complainant’s company name and the name of its founder.

According to the Complainant, the disputed domain name is confusingly similar to the BOSCH trademark. Its “bosch-ua” element is a representation of the BOSCH trademark with the addition of a reference to the country code Top Level Domain (“ccTLD”) for Ukraine, which is “ua”. This reference indicates the geographical market where the Respondent is operating, without detracting from the overall impression of the dominant part of the disputed domain name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The designation “bosch” is neither a generic term nor a commonly used term in any language or in Ukraine, and the Complainant’s rights in the BOSCH trademark precede the Respondent’s registration of the disputed domain name by many years. The Complainant has not licensed or otherwise permitted the Respondent to use the BOSCH trademark or to apply for any domain name incorporating it. The Respondent has not acquired any trademark rights in the “bosch-ua” designation and is not commonly known by the disputed domain name. No actual person selling the goods offered on the Respondent’s website is indicated, and the private entrepreneur status of the Respondent was terminated.

The Complainant further contends that the Respondent has never been authorized by the Complainant to act as its official online or offline distributor or to use the BOSCH trademark in order to promote the Complainant’s products in Ukraine. However, the Respondent is intentionally using the disputed domain name to target Ukrainian customers and the associated website falsely claims that it is “official Bosch online store”, thus falsely impersonating the Complainant or suggesting its sponsorship or endorsement of the website.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant’s BOSCH trademark is a well-known, globally recognized trademark, and the Respondent was well aware of it when registering the disputed domain name, which is evident from the content of the Respondent’s website. The Respondent is using the disputed domain name in an attempt intentionally to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BOSCH trademark as to the source, sponsorship, affiliation or endorsement of this website. The business status of the Respondent as a private entrepreneur was terminated on September 3, 2015, and its website does not specify the entity that is actually selling the goods on offer there, while the only reference on the website is to the Complainant.

The Complainant also points out that the Respondent was found to have registered in bad faith six other domain names reflecting well-known marks of third parties in the following proceedings: Aktiebolaget Electrolux v. Maksim, SPD CHervinchuk, WIPO Case No. D2011-0403, Aktiebolaget Electrolux v. Maksim, SPD CHervinchuk, WIPO Case No. D2012-1859, Aktiebolaget Electrolux v. Maksim, SPD CHervinchuk, WIPO Case No. D2013-1224, Aktiebolaget Electrolux v. CHervinchuk Maksim Nikolaevich, WIPO Case No. D2015-1328, Franke Technology and Trademark Ltd v CHervinchuk Maksim Nikolaevich, WIPO Case No. D2016-1655, and SIEMENS AG v. Domain ID Shield Service Co., Limited / Maksim SPD Chervinchuk, WIPO Case No. D2018-0364.

B. Respondent

The Respondent agrees that the disputed domain name is confusingly similar to the BOSCH trademark.

The Respondent maintains that it has rights and legitimate interests in the disputed domain name. It states that it has openly used the disputed domain name since 2008 in good faith with the intention of offering to sell original BOSCH goods of the Complainant as a bona fide offering of goods and has made substantial expenses to promote the website associated with the disputed domain name. The Complainant, who is a manufacturer and wholesaler but not a retailer, did not object to this use until 2018.

The Respondent contends that it uses the disputed domain name for a legitimate business as an unauthorized reseller. The Respondent is the founder of the limited liability company “EUROPE TEK UKRAINE”, which resells original household appliances for cooling, laundry, dishwashing, cooking, etc., including original home appliances imported in Ukraine by the Complainant’s subsidiary “BSH Pobutova Technik” LLC. The Respondent denies that it is offering for sale counterfeit goods.

The Respondent points out that many businesses have used the BOSCH trademark in domain names without interference by the Complainant, which according to it means that the Complainant tolerates the resulting marketplace confusion, and that Internet users are well aware of this and are not likely to be confused. The Complainant depends upon an independent distributor network to sell its products, and these distributors set their own marketing and pricing strategies with no oversight from the Complainant. Distributors have been allowed by the Complainant to use the BOSCH trademark for years in connection with online marketing and sales without the Complainant’s objection.

The Respondent refers to the UDRP decision in the case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and maintains that its conduct satisfies the criteria developed in this decision and is therefore legitimate. In this regard, the Respondent states that it is actually offering original goods of the Complainant, legally distributed and imported in Ukraine, that it is using its website to sell only these goods and uses the Complainant’s BOSCH trademark only in respect of them and not for any products that are unrelated to the Complainant, and that its website does not emulate the content or appearance

of the Complainant’s website, but accurately discloses the Respondent’s relationship with the Complainant and contains a prominent disclaimer which dispels any affiliation with the Complainant. The Respondent states that its website does not describe the Respondent as an “authorized” or “certified” dealer or agent of the Complainant and does not suggest any other official connection with the Complainant. The Respondent also points out that consumers get detailed information about the location of the nearest official service agent of the Complainant, and its email address dispels any affiliation with the Complainant.

The Respondent maintains that it is not a competitor to the Complainant, as it is active in the Internet retail business, while the Complainant is active in the offline wholesale trade. Under the principle of exhaustion of rights, the owner of a trademark cannot generally object to the use of that trademark in connection with the advertising and resale of goods that it itself has placed on the market, provided that the trademark is not used in a manner that causes confusion or damages its reputation.

The Respondent further points out that the disputed domain name has been registered and used for a long period of time to conduct a bona fide offering of goods without the Complainant’s objection. Over the course of years an implied authorization for the Respondent to use the Complainant’s BOSCH trademark in the context of a domain name has arisen, because the Respondent has used and advertised the disputed domain name for more than a decade before the Complainant complained of such use, and the Complainant’s failure to timely object to the use of the disputed domain name bars the Complaint under the doctrine of laches. The Complainant was well aware that the Respondent owned the disputed domain name and knew well who the Respondent was, as the two had been in business together as manufacturer and distributor. However, the Complainant waited at least five years after it became aware of the Respondent’s registration and use of the disputed domain name before challenging the Respondent’s rights and interests in it. According to the Respondent, this delay entitled the Respondent to rely on the disputed domain name to conduct its online operations and constituted an implied authorization for the use of the disputed domain name by the Respondent.

The Respondent also states that it has not attempted to “corner the market” in relevant domain names, because the Complainant has registered many other domain names that incorporate the BOSCH trademark. The Respondent denies that it has engaged in a pattern of conduct of registering domain names to prevent trademark owners from registering a corresponding domain name and that it has registered any other domain name. The Respondent also claims that it did not register the disputed domain name in order to prevent the Complainant from registering its trademark in a corresponding domain name. At the same time, the Respondent argues that the fact that it may have engaged in a pattern of conduct as to other trademark owners does not establish that it has done so in the present case.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the BOSCH trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the section “bosch-ua”, which contains the elements “bosch” and “ua”. The Complainant’s BOSCH trademark is easily recognizable within the disputed domain name and the addition of the element “ua” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “[w]here 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 nature of such additional term(s) may however bear on assessment of the second and third elements.”

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the BOSCH trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Complainant’s rights in the BOSCH trademark precede the Respondent’s registration of the disputed domain name by many years, that the Complainant has not licensed or otherwise permitted the Respondent to use the BOSCH trademark or to apply for any domain name incorporating it, that the Respondent has not acquired any trademark rights in the “bosch-ua” designation and is not commonly known by the disputed domain name, and that the Respondent has never been authorized by the Complainant to act as its official online or offline distributor or to use the BOSCH trademark in order to promote the Complainant’s products in Ukraine. However, the Respondent is intentionally using the disputed domain name to target Ukrainian customers and the associated website falsely claims that it is an official online store for Bosch goods, thus falsely impersonating the Complainant or suggesting its sponsorship or endorsement of the website. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has alleged that is has rights and legitimate interests in the disputed domain name because it has openly used the disputed domain name since 2008 in good faith for a legitimate business as an unauthorized reseller of original BOSCH goods of the Complainant through its own company “EUROPE TEK UKRAINE”. The Respondent refers to the UDRP decision in the case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and maintains that its conduct satisfies the criteria developed in this decision and is therefore legitimate. The Respondent also submits that its website contains a prominent disclaimer for the lack of an affiliation with the Complainant.

The evidence in the case file shows that the Respondent has used the disputed domain name for a website that offers BOSCH household appliance products for sale. The disputed domain name incorporates the Complainant’s BOSCH trademark in its entirety with the addition of the element “ua”, which refers to the ccTLD for Ukraine. This makes it likely that Internet users may regard the disputed domain name as being an official online location of the Complainant for Ukraine, rather than that of a third party distributor. This likelihood of confusion is further increased by the content of the Respondent’s website at the disputed domain name which prominently displays the BOSCH trademark and describes itself as the “official BOSCH Internet shop”. The website makes numerous references to BOSCH as a manufacturer and to its history, and includes a picture of a BOSCH building, but makes no reference to the Respondent or to its Europe Tek Ukraine company.

The Respondent’s allegation that its website contains a prominent disclaimer of the lack of affiliation of the website with the Complainant is controverted by the evidence submitted by the Complainant, which shows that the main page of the Respondent’s website did not include any disclaimer in May 2018. This is confirmed by the record available at the Wayback Machine, which shows that the disclaimer referred to by the Respondent is likely to have appeared very recently. Even if it had been included on the Respondent’s website earlier, the disclaimer is put at the bottom of internal webpages within the website at the disputed domain name and only states in small letters at the end of a long paragraph of text that the website is not an official site of the Complainant.

In these circumstances, the Panel finds that the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, are not met by the Respondent in the present case, as the disputed domain name and the associated website are likely to confuse Internet users into believing that they are dealing with the Complainant. The Respondent may legitimately resell original BOSCH products in Ukraine, but this does not entitle it to suggest a connection with the Complainant for the purpose of selling products, even if they are original.

On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the Complainant, is likely to have registered and used the disputed domain name in an attempt to exploit the popularity of the BOSCH trademark to mislead Internet users that the Respondent’s website is an official Internet location of the Complainant. In the Panel’s view, such conduct is illegitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent in the disputed domain name.

The Respondent’s reference to the doctrine of laches and its allegation that the Complainant has consented to the registration and use by the Respondent of the disputed domain name through its inaction for a number of years is not supported by evidence that the Complainant was aware of the Respondent’s website for a significant period of time prior to the filing of the Complaint or that the Respondent has relied on the Complainant’s delay to its detriment. Moreover, as summarized in section 4.17 of the WIPO Overview 3.0, the mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits, and Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you 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 web site or other online 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.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain name fully incorporates the BOSCH trademark with the addition of the ccTLD “ua” for Ukraine, and is thus likely to be viewed by consumers as an online location that is authorized to sell the Complainant’s BOSCH products in Ukraine. The likelihood of confusion of Internet users is increased by the content of the website at the disputed domain name, which appears to be an official website of the Complainant. The disclaimer referred to by the Respondent is included as the last sentence at the end of a long paragraph of small text at the bottom of certain internal webpages on the Respondent’s website, and is likely to have been included there only very recently.

This conduct of the Respondent appears to be very similar, if not identical, to the conduct described in at least one of the other UDRP decisions referred to by the Complainant that have found the Respondent to have registered and used domain names in bad faith – the decision in SIEMENS AG v. Domain ID Shield Service CO., Limited / Maksim SPD Chervinchuk, WIPO Case No. D2018-0364. The Respondent has not denied that it was the respondent in that case as well.

On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the BOSCH trademark in an attempt for commercial gain to confuse Internet users that they are reaching an official online location endorsed by the Complainant. On the basis of the above, the Panel accepts that this conduct of the Respondent amounts to bad faith registration and use of the disputed domain name.

7. Decision

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 <bosch-ua.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: October 19, 2018