The Complainant is BSH Home Appliances Corporation of New Bern, North Carolina, United States of America (“U.S.”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondents are Michael Stanley of Irvine, California, United States of America; Michael Sipo of Las Vegas, Nevada, United States of America. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , , and are registered with GoD, LLC.
The disputed domain names , , , , , are registered with Wild West Domains, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2014. On August 21, 2014, the Center transmitted by email to GoD, LLC and Wild West Domains, LLC (the “Registrars”) a request for registrar verification in connection with the disputed domain names. On August 22, 2014, the Registrars transmitted by email to the Center their verification response confirming that the Respondents are listed as the registrants and providing the contact details.
On September 2, 2014, the Respondent Michael Stanley submitted a Response to the Complaint prior to the commencement of the administrative proceeding.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 5, 2014.
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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceeding commenced on September 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2014.
The Respondent Michael Stanley filed a second Response with the Center on September 21, 2014. The Panel will treat this document as the operative Response.
The Center appointed Richard G. Lyon as the sole panelist in this matter on September 26, 2014. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On September 23, 2014, the Complainant submitted a supplemental filing. On September 24, 2014, by email communication to the Center, the Respondent Michael Stanley objected to this filing, and on that date the Center advised the Complainant that the admissibility of the supplemental filing would be referred to the Panel upon appointment. By order dated September 29, 2014, the Panel denied leave to submit the supplemental filing. 4. Factual Background
The facts necessary to decide this proceeding are undisputed.
The Complainant and its affiliated companies manufacture and sell home appliances around the world. Three of the Complainant’s brands are Bosch, Thermador, and Gaggenau, each used for a variety of home appliances. The Complainant’s parent company holds registered trademarks in various countries that incorporate each of these brand names. Its first U.S. trademark registered with the United States Patent & Trademark Office (USPTO) for BOSCH was registered in 1991, for THERMADOR in 1980, for GAGGENAU in 1981. Each of the three brands is well known in the United States.
Since 2011 the Respondents operate a business providing aftermarket service on “all brands of home appliances made and sold in the world, including Complainant[’s]”, undertaken through “the dispatching of service technicians for appliance brands”. The Respondents registered the disputed domain names at various times between July 2011 and January 2014.
One or two of the disputed domain names yielded an error message when recently accessed by the Panel. All the others resolved to pages at which the Respondents offer their repair services on appliances bearing the brand name incorporated into the particular disputed domain name. Five include the following statement; “We are independent highly trained and experienced [brand] appliance repair specialists not affiliated with BSH/Bosch appliance manufacturer. If your appliance under warranty contact [sic] the manufacturer, we only work on out of warranty appliance. [Brand] logo trademark of BSH/Bosch appliance manufacturer.” The others do not, stating instead “Factory Trained and Experienced [brand] Appliance Repair Specialist.” The entity providing services is identified as BoschPro, Boschtech, Gaggenautech, Thermadortech, Thermador Xpress,ThermadorPro, ThermadorService Pro, ThermadorService Tech or ThermadorTechnician, with the name corresponding to the brand incorporated into the particular domain name. Eight websites include a link entitled “Consumer Complaints about [applicable brand]” that resolves to an informational page with quotations from dissatisfied customers, reference to a United States Federal Trade Commission (FTC) proceeding against the Complainant, and urging a consumer to contact the FTC “If your [applicable brand] appliances developed life threatening malfunction.”
The Complainant has never authorized the Respondents to use its trademarks and has never authorized the Respondent to perform services on its products.
The Complainant sent the Respondents cease-and-desist letters in 2012 and 2014, but the parties have not been able to resolve the matter. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
1. The Complainant has rights in its BOSCH, GAGGENAU, and THERMADOR marks by reason of its USPTO-registered trademarks. Each disputed domain name is identical to one of these marks or confusingly similar; addition of common or descriptive words to a well-known mark does not obviate confusion.
2. The Complainant has not authorized the Respondents to use its marks and neither Respondent is commonly known by any of the marks. The Respondents’ use of the disputed domain names is not bona fide because such use and website content at the disputed domain names implies affiliation with or authorization by the Complainant; and the disputed domain names were chosen to take advantage of the goodwill attached to the Complainant’s marks. Any association of the Respondents with Complainant’s brand names has arisen through their unauthorized appropriation of the Complainant’s marks and as such does not confer a right or legitimate interest and thus precludes any defense of “commonly known as” under Policy, paragraph 4(c)(i).
3. “The Respondent[s’] motivation is to tarnish the Complainant’s mark” by gathering consumer complaints, publishing some on their websites, and otherwise denigrating the Complainant’s products and services on their websites. This results in “provid[ing] a false impression of the Complainant’s brands which has received incalculable amounts of positive reviews over the years.” The Respondent has registered over 200 domain names, most of which incorporate well-known brands. “The sheer amount of registrations spanned over multiple brands can only be for the purpose of pushing the targeted brand out of the area in which it operates. By registering multiple domain names, Respondent is clearly attempting to increase his chance of being found in search engines and consequently catching traffic that he is not entitled to.” B. Respondent
The Respondents contest the Complainant’s charges under each element of paragraph 4(a) of the Policy.
1. The Complainant holds no United States trademarks; all the ones at issue here are held by the Complainant’s German parent company. The Complainant’s marks do not extend to the services performed by the Respondents. The Complainant does not itself perform service on its products in the U.S., instead using third parties such as the Respondents. No confusion “ever may be construed by [Respondents’] use of generic words such as Bosch, Gaggenau or Thermador which inherently refers to the makers of such appliance, are having well known relation to the manufacturer among the public that confusion is impossible. The gap between the mark and the term Appliance Repair, Appliance Serviceman, Technician, Pro or Tech is amply descriptive and wide.” The Complainant has not shown proof of even a single instance of actual confusion.
2. The Respondents are making nominative fair use of the Complainant’s marks and have a right so to do under U.S. law. “[A]s technician providing and promoting service on Complainant manufactured brands and as tradesman that buy genuine factory parts from Complainant factory, Respondent is entitled under the U.S. Fair Use Clause to claim publicly his expertise of the brand and that parts used are genuine Bosch, Gaggenau and Thermador parts without needing any authorization from mark registrant.” Any adverse commentary about the Complainant is true and legitimate. The Respondents’ services, all rendered by highly qualified technicians and using genuine Bosch parts, “add value to Complainant brand and marks”.
3. The Respondents have never tried to sell any of the disputed domain names; all have been used for fair use informative purposes and accurately to describe the Respondents’ business. At no time did the Respondents intend to tarnish the Complainant or its marks. The parties are not competitors. All criticism is accurate and provided to educate consumers. The Complainant has taken no action for four years. The Complainant has acquiesced in the Respondent’s use of the disputed domain names; many third parties use domain names incorporating the Complainant’s brands. The Respondents’ domain name portfolio includes many names not related to appliance repair and the others bear on brands other than those of the Complainant.
The Complaint is part of a campaign of harassment against the Respondents, which the Respondents characterize as “a robbery on Respondent, attempting to steal Respondent goodwill and online business that was established four years ago.” 6. Discussion and Findings A. Procedural Matters 1. Complainant’s Supplemental Filing
The Panel’s September 27, 2014 order stated the basis for denying Complainant’s Supplemental Filing: “The Panel denies leave to file this document on the grounds, now a Consensus View in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, that the filing contains no matter that the Complainant could not reasonably have anticipated prior to the filing of the Complaint and no factual matter arising subsequently to the filing of the Complaint. In the words of the three-member panel in The Teaching Company, LLC d/b/a The Great Courses v. Worldwide Media Inc,WIPO Case No. D2014-0457, the Complainant’s Supplemental Filing consists of nothing more than ‘standard reply brief stuff’ and therefore is not allowed under a standard that permits unsolicited supplemental pleadings only under ‘exceptional circumstances’”. 2. Consolidation
Sixteen of the disputed domain names are owned by Respondent Michael Stanley, the remaining eight by Respondent Michael Sipo. On his own initiative the Panel considers whether it is appropriate to consider all disputed domain names in a single proceeding. Primarily because the Respondents make no objection, but also because the same reasoning applies to all the disputed domain names and consolidation will allow all matters between the Complainant and these Respondents to be resolved in one proceeding, the Panel will consider this case as a single proceeding. The Panel finds that “consolidation would be fair and equitable to all parties.” WIPO Overview 2.0, paragraph 4.16.1 B. Identical or Confusingly Similar
The Respondents raise a preliminary issue about this Complainant’s right to invoke the Policy when its German parent holds the trademarks upon which the Complaint is based. While it is clear that not only a mark owner may have sufficient rights in a mark to maintain a Policy proceeding, little case law focuses on the issue presented here: whether a wholly-owned subsidiary may do so when the parent holds the trademarks. The limited precedent that exists indicates that it may, either under a theory of implied license, see DigiPoll Ltd. v. Raj Kumar,WIPO Case No. D2004-0939, or a more general notion based on corporate control and common sense. As stated in Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796, “It has been accepted in several decisions that a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark. See for example Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756where Complainant’s grand-parent corporation had a long established U.S. trademark registration for the mark for vacuum cleaners.”
This Panel will follow that approach and allow the Complainant, the mark owner’s wholly-owned subsidiary, to maintain this proceeding. This is not a case where there exists an obvious impediment to the mark owner’s bringing the Complaint directly, and nothing in the record suggests any advantage sought or gained by having the subsidiary rather than the parent file the Complaint.
With that standing objection overruled, the Panel easily finds confusing similarity between the Complainant’s marks and the disputed domain names. “The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion.” WIPO Overview 2.0, paragraph 2.1. Applying that test and longstanding Policy precedent, confusion is obvious. The marks at issue are distinctive, not everyday words (and not “generic” as the Respondents assert). The dominant feature of each disputed domain name is one of the Complainant’s marks, and the surrounding words indicate either a geographic area or the services the Respondents provide. That suffices for purposes of paragraph 4(a)(i). Proof of actual confusion is not necessary.
Most of the Respondents’ arguments on this Policy head are better placed in an infringement action. They may also bear on the Complainant’s burden of proof under paragraphs 4(a)(ii) and 4(a)(iii). C. Rights or Legitimate Interests
The Complainant has made its prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names by demonstrating without contradiction that the Complainant has never authorized the Respondents to use its marks and that the Respondents have not been commonly known by the disputed domain names. The Complainant correctly asserts that a domain name owner cannot create a “commonly known as” defense (see Policy, paragraph 4(c)(i)) simply by doing business under a name registered without authority. By the Respondents’ own admission the disputed domain names are not used to promote a business that operates independently of the disputed domain names.
The burden of production thus shifts to the Respondents to provide proof of a right or legitimate interest, with the ultimate burden of persuasion remaining with the Complainant. WIPO Overview 2.0, paragraph 2.1. The Panel addresses each of the Respondents’ arguments in turn. 1. Criticism
Though not directly asserted, the Respondents imply a right freely to criticize the Complainant in order “to educate consumers about the repair of particular problem and likely costs or repairs.” Even if this assertion be true the safe harbor of paragraph 4(c)(iii) of the Policy is not available to the Respondents. The Respondents’ websites at the disputed domain names are unabashedly commercial, and the safe harbor applies only to sites that practice only criticism, without a commercial purpose. WIPO Overview 2.0, paragraph 2.4. 2. Fair use
Some UDRP panels have found nominative fair use, based upon U.S. law, to demonstrate a right or legitimate interest when the trademark is used in the domain name. “[T]he referential use of another’s trademark is permissible where (1) the trademark owner’s product or service cannot be readily identified without using the mark, (2) the mark is used only so much as is necessary for such identification, and (3) such use does not suggest sponsorship or endorsement by the mark owner.” Project Management Institute v. CMN.com,WIPO Case No. D2013-2035, citing two cases from the United States Court of Appeals for the Ninth Circuit, New Kids on the Block v. News American Publishing, Inc., 971 F.2d 302 (1992) and Toyota Motor Sales, U.S.A., Inc. v. Tabari,.610 F.3d 1171 (2010). The Panel refers to these requirements as the “Toyota test.”
The first question on this subject should be whether or to what extent the Toyota test’s second requirement for showing nominative fair use allows reference to the mark in the disputed domain name. A persuasive line of decisions implies that unadorned use of the mark by itself in a domain name is not permissible under the Policy.2 So do both common sense and the purpose of the Policy,3 which is to address abusive registration of domain names that are intended to mislead Internet users. Some use of the Complainant’s marks may be necessary accurately to describe the Respondents’ services, and the Respondents are correct in asserting that some limited use may be legitimate. But limited “referential” use, in text on a website, is one thing. Making the mark the dominant feature of a web address, the first thing an Internet user sees and the means of attracting Internet users, is quite another. As many UDRP decisions concerning resellers, discussed at greater length in the following section, make clear, use of another’s mark in a domain name generally requires some form of authorization, express or implied, that ordinarily includes conditions and limitations. As this Panel stated in Malwarebytes, Corp. v. Charlie Jones,WIPO Case No. D2014-0226, it is more a question of contract law than infringement. While not ruling out the possibility that inclusion of a mark together with a descriptive term in a domain name may in some circumstances be nominative fair use,4 this Panel is skeptical about such use being “only so much as is necessary for . . . identification” (emphasis supplied).
On the circumstances of this case, the Panel finds that the Respondents’ use of the Complainant’s mark is not bona fide. Use of the Complainant’s marks in the disputed domain names is not in the Panel’s view “only so much as is necessary for” proper identification; further, even if it were, the Respondent’s websites falsely imply the Complainant’s sponsorship or endorsement. Failure to include a disclaimer on most of the sites, use of the Complainant’s marks in the same type font and style as the Complainant does and with photographs of the Complainant’s products, including the Complainant’s logo, and in general mimicking the entire look and feel of the Complainant’s advertising are conclusive evidence that the Respondents’ actions are not bona fide, and that the Respondents have not met either the second or third criterion under the Toyota test for nominative fair use. 3. Reseller’s Right to Use Manufacturer’s Name
Authorized resellers are allowed some use of their manufacturer’s mark under certain conditions. This has reached the point of a Consensus View in the WIPO Overview 2.0, paragraph 2.3:
“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark.”
These conditions derive from the early case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and will be referred to as the “Oki Data test.”
Two preliminary hurdles arguably render the Oki Data test inapplicable to this case. First, the Respondents, as independent service providers, are not strictly a reseller, and by definition their services do not come from the manufacturer. This is not merely a semantic distinction; one criterion for determining an authorized reseller’s right to use its manufacturer’s mark in a domain name without express permission includes the sale of genuine goods. Oki Data Americas, Inc. v. ASD, Inc., supra.
Second, the Oki Data test comes from a case in which the Respondent was an authorized reseller, which the Respondents admittedly are not. Some panels however have extended the test’s reach to unauthorized resellers as well. WIPO Overview 2.0, paragraph 2.3. While this Panel has cautioned against automatic application to unauthorized resellers, some of the criteria that led him to apply the Oki Data test in an aftermarket case, see General Motors LLC v. Flashcraft, Inc DBA Cad Company,WIPO Case No. D2011-2117,5 are present here. As the Respondents note, third party service on home appliances is common in the United States and regularly considered procompetitive by the antitrust authorities and the courts. Toyota Motor Sales, U.S.A., Inc. v. Tabari, supra. The appliance repair industry is regulated lightly if at all. The Respondents claim to provide service that the mark owner Complainant does not.
The Panel need not decide if the Respondents have cleared these preliminary hurdles, however, for an examination of their websites demonstrates that they do not meet the Oki Data test. As noted in the Panel’s discussion of nominative fair use (section 6-C.2 above), these websites, even the few with disclaimers, do not “accurately and prominently” indicate the Respondents’ independent status; rather, they give a false impression of endorsement. Further, by registering twenty-four domain names the Respondents approach the “cornering the market” prohibition in the Oki Data test. There is no basis under the Oki Data line of cases to imply authority to use the Complainant’s marks in the disputed domain names. 4. Competition
The Respondents’ reference to the antitrust laws and the allowance of entities not affiliated with manufacturers to provide aftermarket service misses the point of this proceeding. The issue is not the “the legitimacy of the Respondent’s business. The issue for the Panel to determine under this Policy head is whether the Respondent’s use of the Complainant’s mark in the disputed domain name is bona fide or legitimate.” General Motors LLC v. Flashcraft, Inc DBA Cad Company, supra. The availability of independent (third party) servicing of products almost always is procompetitive and thus beneficial to consumers. Whether the Respondents’ business illustrates this is a question beyond the jurisdiction of a UDRP panel and not relevant to this proceeding. 5. Promoting the Complainant’s Brands
The Respondents’ assertion that their providing quality service in a country where the Complainant provides no service “add[s] value to Complainant brand and marks” is another issue beyond the limited brief of a UDRP panel. It may be pertinent to the Complainant’s charge of tarnishment, which in the following section the Panel finds unproven. This Panel has no way to judge the quality of the Respondents’ services or their impact on the goodwill attaching to the Complainant’s marks. The Panel notes that such assessments are normally the exclusive province of the mark owner. 6. Laches
The Respondents claim a defense based upon non-action by the Complainant for “more than four years.”6 As recently noted in Gamberoso Rosso Holding S.p.A. v. CDN Properties Incorporated, WIPO Case No. D2014-1349, “The non-applicability of the defense of laches (i.e., undue delay) itself in UDRP proceedings has long been recognized by UDRP panels, over many years and a large body of jurisprudence.” See also WIPO Overview 2.0, paragraph 4.10, and cases there cited. Nothing in this case provides any reason to depart from this well-settled precedent.
The fact that other third parties may be using domain names that incorporate the Complainant’s marks provides the Respondents no assistance. It may be that the other users are duly licensed. Which infringers or cybersquatters to proceed against is another exclusive prerogative of the mark owner. While sometimes relevant in defending a trademark infringement action, selective or targeted enforcement of rights does not furnish a defense in a Policy proceeding.
The Complainant has therefore proven that the Respondents lack rights or legitimate interests in the disputed domain names. D. Registered and Used in Bad Faith
The Complainant’s principal argument under this Policy head is to this Panel’s thinking pure speculation. The Complainant’s assertion of tarnishment as the Respondents’ motive is not established by the evidence in the record. The only item offered in support is the Respondents’ acknowledged collection of government action and consumer complaints about the Complainant’s products and including some of them on their websites. To find that the Complainant’s marks were tarnished as a result or that this was the Respondents’ intention in posting the criticism would require the Panel at a minimum to evaluate the truth or falsity of the postings, something he deems impossible without extensive discovery and testimony, before even considering whether the Respondents’ statements or postings might be protected as free speech. And then the Panel would need somehow to find that this was the Respondents’ motivation, a substantial logical leap that defies common sense. Why wouldn’t an independent servicer point out the relative shortcomings of a manufacturer’s own service? On the record in this case the tarnishment claim fails.
The Respondents’ admitted conduct does however fall squarely within two of the examples of evidence of bad faith set out in paragraph 4(b) of the Policy. Having registered more than twenty domain names (more than fifty at one time, if the Complainant’s unsupported allegation is to be believed) qualifies as a “pattern of… conduct” under paragraph 4(b)(ii), which provides as an example of bad faith that “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.” In addition to the Complainant’s marks, the Respondent has registered several dozen other domain names that similarly include as their dominant feature the brand of at least eight other appliance manufacturers.
On a more fundamental level, incorporating the Complainant’s marks as the dominant features of the disputed domain names is a textbook example of “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.” Policy, paragraph 4(b)(iv). The effect of the Respondents’ use of the Complainant’s marks, and very likely the Respondents’ intent, was to attract Internet users to the Respondents’ business by using the Complainant’s marks, implying the Complainant’s endorsement or sponsorship. The look-alike websites and general failure plainly and simply (or in the words of the WIPO Overview 2.0, “accurately and prominently”) to explain the Respondents’ independent status reinforce this conclusion. This demonstrates use in bad faith.
The text of the disputed domain names themselves establishes the Respondents’ knowledge of the Complainant and its marks at registration, and the Panel has found that the Respondents chose the names to target the Complainant.
The Complainant has carried its evidentiary burden under this Policy head. 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 names:
, , , , , , , , , , , , , , , , , , , , , , and
be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Date: October 6, 2014
1 The Response uses the singular “Respondent” throughout, suggesting that the two named Respondents are one person or that one Respondent acquired the other's domain names. In the Panel’s opinion either circumstance has no impact on his decision.
2 See, e.g., NVIDIA Corporation v. Giovanni Laporta, Y Ltd.,WIPO Case No. D2014-0770, Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Giovanni Laporta / y,WIPO Case No. D2014-0686 ( and , Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd.,WIPO Case No. D2014-0637 (, “the Statoil case”), and Mejeriforeningen Danish Dairy Board v. Domain Manager, Y,WIPO Case No. D2014-0730.
3 Toyota Motor Sales, U.S.A., Inc. v. Tabari, supra, indicates the contrary, at least where the mark is adorned by descriptive terms in a Lanham Act action. The Panel chooses not to extend the discussion because as explained in the following paragraph of text the content of the Respondents' websites falsely implies the Complainant's endorsement.
4 A domain name that itself indicated no connection with the mark owner – for example, - might qualify under the Toyota test. That scenario awaits another panel in another case.
5 The Flashcraft case also involved aftermarket services, not a resale of genuine goods.
6 The “four years” apparently refers to the existence of the Respondents’ business, as the first disputed domain name to be registered was acquired in 2011. The claim of four years is undercut considerably by the Respondents' acknowledgment of a cease-and-desist letter in 2012.
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