The Complainant is Robert Bosch GmbH of Stuttgart, Germany, represented by DePenning & DePenning, India.
The Respondent is Domain Admin, T Co of Toronto, Canada, represented by John Berryhill, Ph.d., Esq., United States of America. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 21, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 21, 2017, 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 January 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2018. Upon request by the Respondent, the Center granted an extension of Response due date until January 26, 2018. The Response was filed with the Center January 26, 2018.
The Center appointed Nick J. Gardner, Stefan Abel, and, Tony Willoughby as panelists in this matter on February 15, 2018. The Panel finds that it was properly constituted. Each member of 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 is a very large and well-known multinational manufacturing company with headquarters in Germany. It is amongst the largest original equipment manufacturer of components for motor vehicles in the world. It owns numerous registered trademarks for the word BOSCH – see for example European Union trademark no 000067744 registered on June 26, 1996. These trademarks are referred to collectively in this decision as the "BOSCH trademark". As appears below there is no dispute about any of this factual background and accordingly the Panel does not feel it is necessary to set out in more detail the extent of the Complainant's activities.
The Respondent is a well-known ICANN-accredited registrar, and is a publicly traded corporation on the NASDAQ exchange with annual revenue of USD 190 million. In June 2006 the Respondent paid USD 18 million to purchase M Inc. ("Mailbank"), a company that owned over 17,000 domain names for common surnames, such as and . Mailbank generated income from advertisements on its websites (from domain parking) and also from customers who wanted email accounts with their surname in the domain name. In February 19, 2008 the Respondent announced that it was launching a "Personal Names Service" using a portfolio of 39,000 domain names which included the domain names purchased from Mailbank. The Disputed Domain Name was one of the domain names comprised within the portfolio acquired from Mailbank.
The Disputed Domain Name was registered on November 27, 1996.
It is not in dispute that the Disputed Domain Name resolves to a particular webpage. There is however a significant dispute about the nature of this webpage. The Parties' respective contentions in this regard are dealt with below. This webpage is referred to as the "Respondent's Webpage". Given its significance to this decision it is, for convenience, reproduced below.1
5. Parties' Contentions A. Complainant
The Complainant says that the Disputed Domain Name is identical to the BOSCH Trademark.
It says the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and/or in the word BOSCH, as it is not the Respondent's name.
It says that the registration and use of the Disputed Domain Name is in bad faith. Its case in this regard is based upon the Respondent's Webpage. What it says about this is as follows:
"It is also clear that the Respondent is using the domain "www." as a Pay-Per-Click website that links consumers to various goods and services. On entering the search term 'www.', the user is directed to spam links offering virus contents in such links. It is obvious that the Respondent is trying to create confusion in the market by wrongfully representing that the Complainant, being in the automotive industry, are involved in such businesses. Such portrayal of wrongful facts is hugely detrimental to the goodwill / reputation of the Complainant herein, kindly refer to 'Annexure B'." Annexure B is a partial copy of the Respondent's Webpage – the screen shot appears to have been taken in a way which failed to capture the background graphic of the person, although the "speech bubble" is present, and also appears to have been taken after the word "bosch" has been entered in the search box, so the words "enter your full name" are no longer present in that box.
The Complaint goes into some considerable detail as to the Complainant's particular activities in India. The Panel does not understand why this was thought appropriate and does not feel it necessary to seek to summarise that material in this decision. B. Respondent
The Respondent has filed a detailed Response. It admits the Disputed Domain Name is identical to the BOSCH Trademark. It also admits the Complainant is well known.
It denies that it was in any way targeting the Complainant or its business. It says that the Disputed Domain Name is part of a very large portfolio of domain names which it acquired, all of which correspond to surnames. It says the Complainant's corporate name derived from its founder Robert Bosch, and the word "bosch", apart from functioning as a mark for automotive parts, is also a common surname. It says that famous persons named Bosch include the well-known artist Hieronymus Bosch, among the more than 80 notable persons named Bosch listed in the Wikipedia entry for this surname (which includes the Complainant's founder and his heir). It says the word "bosch" is derived from the Dutch word for "forest", and that Bosch is the 64th most common surname in the Netherlands, the 247th in South Africa, the 305th in Spain, and the 456th in Germany. It says that "bosch" is within the top 5,000 most common surnames in the world.
It categorically denies that the Respondent's Webpage has the characteristics that the Complainant says it has. This issue is discussed further below. It goes on to accuse the Complainant or its representatives of being deliberately untruthful in the way as to which the Respondent's Webpage has been described in the Complaint. It notes that the Complainant has selected representatives based in India to act for it in filing this Complaint even though the case has nothing to do with India – and it suggests this is because India is a jurisdiction where legal counsel cannot readily be held to account for making untrue statements. The Response is extremely clear as to the challenge it makes to the Complainant's case – the Respondent says that it "makes no apology for calling a lie what it is". This issue is discussed further below in connection with Reverse Domain Name Hijacking. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that:
(i) The Disputed Domain Name is identical with 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 Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is not in dispute that the Complainant has rights in the BOSCH trademark.
It is well established that the generic Top-Level Domain ("gTLD"), in this case ".net", does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Disputed Domain Name is therefore identical to the Complainant's BOSCH trademark and paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that (i) applies in this case. The Respondent has provided credible and detailed evidence that the Disputed Domain Name forms part of its portfolio of domain names which are used in a business providing email addresses to persons where the second-level domain name element of the relevant email address corresponds to a person's surname.
The Panel has no doubt that this represents a legitimate and bona fide business. A number of previous UDRP panels have reached the same conclusion in relation to the Respondent's business in this regard (or its predecessors in that business) – see for example Grasso's Koninklijke Machinefabrieken N.V., currently acting as Royal GEA Grasso Holding N.V. v. T Co,WIPO Case No. D2009-0115; International Raelian Religion and Raelian Religion of France v. M Inc.,WIPO Case No. D2000-1210; and Buhl Optical Co v. M, Inc.,WIPO Case No. D2000-1277.
Accordingly, the Panel finds that the Respondent has established a legitimate interest and the Complainant has failed to establish that the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Whilst the Panel's finding under Section B above is sufficient to enable a conclusion to be reached in relation to this Complaint, the Panel also rejects the Complainant's claim that the Disputed Domain Name has been registered and used in bad faith.
The Complainant's case in this regard is based entirely upon what it says is the nature of the Respondent's Webpage (see above). However its allegations about this webpage are manifestly incorrect. The Panel has (as was also requested by the Respondent) visited the Respondent's Webpage and reviewed for itself how it operates. It operates in exactly the manner that one would expect from its contents as reproduced above – it will inform you if an email address in the format "firstname@" is available if you enter "[the desired firstname] bosch" into the search box provided. In fact, if you enter any combination of "firstname lastname" into the search box the Respondent's system informs you if an email address using one of its portfolio of domain names is available. So for example entering "nick gardner" produces a result that nick@ is available; entering "nick bosch" produces a result that "nick@" is available and so on.2 If an email address is available, the Respondent's systems offer to make the email address available on an annual basis, in return for a fee. It accordingly follows that (contrary to the Complainant's allegations) the Respondent's webpage:
(i) Is not a Pay-Per-Click website that links consumers to various goods and services;
(ii) Does not direct users to spam links offering virus contents in such links;
(iii) Is not trying to create confusion in the market by wrongfully representing that the Complainant is involved in such businesses;
(iv) Is not, in the Panel's opinion, detrimental to the goodwill / reputation of the Complainant.
Overall it is clear that the Respondent's webpage has no connection whatsoever to the Complainant or its business, and no sensible visitor to the webpage could conclude otherwise.
The question of how and why the Complainant has come to make such a completely inaccurate characterization of the Respondent's webpage is discussed below in relation to the issue of Reverse Domain Name Hijacking.
Accordingly the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled. D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that if after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking ("RDNH") or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. In assessing this issue the Panel adopts the approach in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 4.16:
"Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant's lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument, (iv) the provision of false evidence, or otherwise attempting to mislead the panel, (v) the provision of intentionally incomplete material evidence – often clarified by the respondent, (vi) the complainant's failure to disclose that a case is a UDRP refiling, (vii) filing the complaint after an unsuccessful attempt to acquire the disputed domain name from the respondent without a plausible legal basis, (viii) basing a complaint on only the barest of allegations without any supporting evidence."
In the present case the Panel considers that factor (ii) applies. Factor (iv) is discussed separately below. In the view of the Panel this is a Complaint which should never have been brought. The Complainant should have appreciated that the Disputed Domain Name was registered over 20 years ago and that the manner in which it had been used over that time period was likely to require careful consideration. Had it considered that usage properly it should have realised that it had been used for a bona fide email service offering email addresses for use by persons with the surname "bosch". It should then have realised there was no proper basis for this Complaint. Had it at this point been in any doubt, some research of previous UDRP decisions should have led it to conclude this was a case without any real prospects of success.
Matters however go further in that the Respondent alleges that the Complainant has presented this case in a dishonest manner and deliberately selected representatives in a jurisdiction where legal counsel cannot be held to account for making untrue allegations. In other words it alleges that factor (iv) above also applies. These are serious allegations against a major corporation. Equally however, the Respondent says that it too is a major corporation and the Complainant has made serious and untrue allegations about its conduct.
The Respondent has suggested that the Panel should issue a procedural order seeking further information from the Complainant about how the Complaint came to be presented in the manner it has been, and specifically as to how it came to mischaracterize Exhibit B in the way described above. It also invites the Panel to try to imagine any circumstances which are not dishonest, and which could have led to the Complaint as presented to the Panel.
The Panel has considerable sympathy for the Respondent's position in the present case and understands its obvious sense of indignation. It has been put to the time, trouble and cost of defending an entirely unmeritorious Complaint, which is based upon a mischaracterization of the relevant facts. The Panel finds it very difficult indeed to understand how Exhibit B came to be so mischaracterized by the Complainant. The only real possibility the Panel can envisage that was not the result of a deliberate decision to mislead, is an incompetent "cutting and pasting" of the relevant text from an earlier complaint with different facts. It is however worth noting that in substance the same allegations appear elsewhere in the Complaint – see for example the following extracts from the Complaint:
"The Respondent illegally and wrongfully registered the domain name comprising of the Complainant's well-known trademark BOSCH with obvious intention to create an impression of association with the Complainant and thereby deceive consumers and related public"
and
"It is but obvious that the intention of the Respondent is to deceitfully usurp the reputation and goodwill attached with the internationally acclaimed brand and trademark BOSCH. It is also pertinent to note that the Respondent has blatantly copied the Complainant's trademark BOSCH and are deceiving the Internet users.
Moreover, it is important to highlight that the Respondent has not included any disclaimer on their page that they are in no manner connected with the Complainant. Such acts further accentuate the malafide of the Respondent in creating confusion/ deception in the world market"
and
"The facts and circumstances in the present case prove beyond doubt that the registration of the impugned domain name by the Respondent amounts to passing off with a manifest intention to commit fraud to mislead innocent and gullible customers by resorting to unfair and dishonest trade practices."
It is also in the Panel's opinion appropriate to note that if the Complaint had included these types of allegation as a result of some sort of mistake, the Panel assumes the Complainant and/or its representatives would have realised this mistake when they saw the Response, which presumably they have read and considered. It would have been possible at that stage to take steps to withdraw the serious and misplaced allegations that the Complaint makes. However nothing was done.
The function of this Panel is to decide the issues set out in section 6 above, and also (if appropriate) whether or not the Complainant's conduct amounts to Reverse Domain Name Hijacking. Beyond deciding these issues it is not the function of the Panel to commence a wider investigation to find out how or why particular allegations came to be included in the Complaint, even if these allegations are both serious and entirely unwarranted. The Panel therefore declines to follow the Respondent's suggestion that further investigation by way of a procedural order is appropriate.
Ultimately the only sanction the Panel can make is to find that the conduct of the Complainant amounts to Reverse Domain Name Hijacking. The Panel so finds. In reaching this finding the Panel does not need to make a finding as to whether or not the conduct of the Complainant and/or its representatives was deliberately dishonest, although it is of the view that the nature of the Complaint and the allegations it contains is, at the very least, extremely unsatisfactory. In this respect the Panel takes the same view as the panel in The Procter & Gamble Company v. Marchex Sales, Inc,WIPO Case No. D2012-2179, which stated that "This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature". Exactly the same is true in the present case. 7. Decision
For the foregoing reasons, the Complaint is denied. The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Nick J. Gardner
Presiding Panelist
Stefan Abel
Panelist
Tony Willoughby
Panelist
Date: February 28, 2018
1 The Panel took this screenshot on February 26, 2018 – see discussion below.
2 For completeness the Panel records that it was unable to replicate precisely the same behaviour in the Respondent's Webpage as the Respondent shows in its evidence. That evidence shows the "speech bubble" on the page reading "tanya@". The Panel only ever observed that bubble reading "tanya@" irrespective of what search was performed. The Panel does not consider this detail matters.
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