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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Robert Bosch GmbH v Littlewood [2007] DRS 4929 (24 September 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4929.html Cite as: [2007] DRS 4929 |
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Nominet UK Dispute Resolution Service
DRS 04929
Robert Bosch GmbH and D J S Littlewood
Decision of Independent Expert
Complainant: Robert Bosch GmbH
Country: GE
Respondent: D J S Littlewood
Country: GB
boschdrills.co.uk
The Complaint was lodged with Nominet on 31 July 2007. Nominet validated the Complaint and notified the Respondent of the Complaint on 31 July 2007 and informed the Respondent that he had until 22 August 2007 to lodge a Response. No Response was received from the Respondent and, on 23 August 2007, Nominet informed the parties that, in the circumstances, Nominet could not provide mediation and invited the Complainant to pay the fee to obtain an Expert Decision by 7 September 2007. On 30 August 2007 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
On 13 September 2007 the undersigned David King ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as Expert in this case and further confirmed that he knew of no matters which ought to be brought to the attention of the parties which might appear to call into question his independence and/or impartiality. Nominet appointed the Expert in this matter on 17 September 2007.
The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with Paragraph 5a of Nominet's Dispute Resolution Procedure. Nominet has written to the Respondent at the above postal address shown in Nominet's WHOIS query result included in the papers provided by Nominet to the Expert and by e-mail to [email protected] The letter sent by post has not been returned undelivered to Nominet; nor has the e-mail to the postmaster address resulted in a Delivery Failure Report.
The Expert is satisfied that the Complaint was properly delivered to the Respondent and that,
in the absence of a Response from the Respondent, there are no exceptional circumstances
present to prevent the Expert from proceeding with the Decision of this Complaint.
The Complainant is a German company, which is the proprietor of the trade mark BOSCH and the Bosch logo registered in the UK and in other countries throughout the world in respect of, inter alia, electrical goods including power tools and their parts and fittings. The trade mark BOSCH has been registered in the UK in relation to electrically operated tools since 1939.
The Complainant's web-site for the UK market is at www.bosch.co.uk and its worldwide web-site is at www.bosch.com. The Complainant also has a web-site specifically devoted to power tools at www.bosch-pt.com.
The Respondent registered the Domain Name on 28 September 2006.
Complainant
The Complainant has made detailed submissions which can be summarised as follows:
The Complainant has extensive trade mark rights in the name BOSCH, one of which dates back to July 1939. The trade mark BOSCH has been used in the UK for over 40 years in relation to electrically operated tools and their parts including in particular power drills.
The Domain Name web-site purports to sell Bosch power tools but in practice does not. Instead it links to other web-sites, some of which sell and promote power tools, some offer genuine Bosch tools but others promote power tools made by other manufacturers and bearing other manufacturers' brands.
The Respondent has deliberately taken steps to attract visitors to its site and, in so doing, is intercepting visitors who are looking for the genuine Bosch (UK) web-site.
At the time the Domain Name was registered it took unfair advantage of or was unfairly detrimental to the Complainant's rights because a) it deprived the Complainant of the Domain Name to which it was properly entitled as proprietor of the trade mark BOSCH for drills and b) its registration amounted to an infringement of the Complainant's rights in the trade mark BOSCH.
The Respondent has used and is using the Domain Name in a manner which takes advantage of or is unfairly detrimental to the Complainant's rights. The Respondent is using the Complainant's corporate logo to deceive visitors that it is an official web-site authorised by the Complainant. The Respondent has subscribed to the AdSense service offered by Google which means that it receives money for every visitor to the site. The Respondent is deliberately intersecting traffic intended for the Complainant's web-site to its own web-site, which is misleading and confusing and will damage the goodwill in the trade mark BOSCH and the Bosch logo, resulting in pecuniary loss to the Complainant.
The Complainant concludes its Complaint by stating that the Respondent's registration of the Domain Name was made to block registration against the trade mark BOSCH and for the purposes of unfairly disrupting the business of the Complainant and contends that the Domain Name is being used as an instrument of fraud and deception.
In support of its contentions the Complainant has provided substantial documentation, which the Expert confirms he has perused.
Respondent
The Respondent has not responded to the Complaint.
General
Paragraph 2 of Nominet's Dispute Resolution Policy ("the Policy") requires that, to succeed, the Complainant must prove to the Expert, on the balance of probabilities, both that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in paragraph 1 of the Policy.
Complainants' Rights
The Complainant has provided evidence of its extensive CTM and UK trade mark registrations and registered logo for power tools. The Expert is satisfied that the Complainant has Rights in the name BOSCH by virtue of its registered trade marks and established international fame and goodwill. The distinctive element of the Domain Name is the Complainant's trade mark BOSCH. The other element is "drills". Although "drills" is generic, the Expert considers that it has a clear connection with the Complainant and that "boschdrills" is, therefore, similar to BOSCH for the purpose of the Policy.
The Expert finds that, for the purposes of the Policy, the Complainant has Rights in respect of a name or mark which is similar to the Domain Name.
Abusive Registration
Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
i was registered or otherwise acquired in a manner, which, at the time when the registration took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy. It is apparent that the Complainant is relying on the factors set out in paragraphs 3 a i B and C and 3 a ii of the Policy.
Under paragraphs 3 a i B and C, there may be Abusive Registration if circumstances indicate that the Respondent has registered the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights or primarily for the purpose of unfairly disrupting the business of the Complainant. Under paragraph 3 a ii of the Policy, there may be evidence of Abusive Registration if there are circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
Undoubtedly registration of the Domain Name is preventing the Complainant from registering the Domain Name but that is always a feature of Domain Name disputes. The Respondent has not responded to the Complaint and has, therefore, not given any explanation of its prime motives for registering the Domain Name. Although inferences can be made when there is no Response from a Respondent, the Expert would wish to see some evidence of intent in order to find that the Respondent's primary motive was to block registration by the Complainant. The Complainant has alleged that the Domain Name is being used as an instrument of fraud. This is a serious allegation and, in the absence of a Response from the Respondent, the Expert is reluctant to make a finding on this issue. The Complainant, however, has provided compelling evidence that the Respondent has taken unfair advantage of the Complainant's famous trade mark and logo without its authority. The print-out of the Domain Name web-site as at 26 July 2007, provided by the Complainant with its Complaint, incorporates the Bosch logo and looks similar to the Complainant's own web-sites. The Domain Name web-site links to other sites, some of which promote the sale of the Complainant's competitors' power tools. Consequently, the Respondent is able to earn revenue for each click on a linked advertisement, thereby taking unfair advantage of the Complainant's Rights. Although the Complainant has not provided evidence of actual disruption or confusion having occurred, the potential is obvious. It is extremely likely that people and businesses wishing to access the Complainant's web-site, in fact, visit the Respondent's web-site in the belief that the web-site is associated with or authorised by the Complainant. The Expert concludes that, on the balance of probabilities, the Respondent has registered the Domain Name in order to take unfair advantage of the Complainant's distinctive trade mark and world-wide reputation. This is Abusive Registration within the terms of the Policy.
In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name www.boschdrills.co.uk be transferred to the Complainant.
David King 24 September 2007
