DECISION
BSH Home Appliances Corporation v. Sylveser Hornet / Thermador appliance repair
Claim Number: FA1807001796427
PARTIES
Complainant is BSH Home Appliances Corporation (“Complainant”), represented by Jaime Rich Vining of Friedland Vining, P.A. Florida, USA. Respondent is Sylveser Hornet / Thermador appliance repair (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thermadorappliancerepairservice.com>, registered with GoDaddy.com, LLC.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on July 12, 2018; the Forum received payment on July 12, 2018.
On July 13, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thermadorappliancerepairservice.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thermadorappliancerepairservice.com. Also on July 13, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
1. Complainant, BSH Home Appliances Corporation, is a wholly owned subsidiary of BSH Hausgeräte GmbH – one of the largest appliance manufacturers in the world. Complainant has rights in the THERMADOR mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,144,768, registered Dec. 30, 1980). See Compl. Annex B. Respondent’s <thermadorappliancerepairservice.com> domain name is confusingly similar to the THERMADOR mark; it includes the mark in its entirety, differing only in the addition of generic terms and a generic top-level domain (“gTLD”).
2. Respondent does not have rights or legitimate interests in the <thermadorappliancerepairservice.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its THERMADOR mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Sylveser Hornet / Thermador appliance repair” as the registrant. See Compl. Annex E. Respondent is not using the <thermadorappliancerepairservice.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to divert Internet users to a website offering services that directly compete with Complainant’s business.
3. Respondent registered and is using the <thermadorappliancerepairservice.com> domain name in bad faith. Respondent’s use of the disputed domain name disrupts Complainant’s business. Further, Respondent is exploiting Complainant’s THERMADOR mark and trading on the goodwill created by Complainant for its own financial gain. Finally, Respondent failed to respond to Complainant’s cease and desist letter.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Respondent’s <thermadorappliancerepairservice.com> domain name is confusingly similar to Complainant’s THERMADOR mark.
2. Respondent does not have any rights or legitimate interests in the
<thermadorappliancerepairservice.com> domain name.
3. Respondent registered or used the <thermadorappliancerepairservice.com> domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical and/or Confusingly Similar
Complainant claims rights in the THERMADOR mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its registration of the THERMADOR mark with the USPTO to support its claim (e.g., Reg. No. 1,144,768, registered Dec. 30, 1980). See Compl. Annex B. The Panel therefore finds that Complainant’s registration of the THERMADOR mark with the USPTO is sufficient to establish rights in said mark per Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <thermadorappliancerepairservice.com> domain name is confusingly similar to the THERMADOR mark, as the disputed domain name differs from the mark only by the addition of generic terms and a gTLD. The addition of generic terms and a gTLD to a mark in the creation of a domain name is typically insufficient to differentiate a disputed domain name from said mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Complainant asserts that Respondent merely added the generic terms “appliance”, “repair”, and “service”, as well as a gTLD to Complainant’s THERMADOR mark in creating the <thermadorappliancerepairservice.com> domain name. The Panel therefore finds the <thermadorappliancerepairservice.com> domain name to be confusingly similar to Complainant’s THERMADOR mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent has no rights or legitimate interests in the <thermadorappliancerepairservice.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the THERMADOR mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also La Quinta Worldwide, LLC v. La Quinta WorldWide, FA1505001621299 (Forum July 11, 2015) (holding that the respondent was not commonly known by the <laquintaworldwide.com> domain name even though “La Quinta WorldWide” was listed as registrant of the disputed domain name, because the respondent had failed to provide any additional evidence to indicate that it was truly commonly known by the disputed domain name). The WHOIS information of record for the <thermadorappliancerepairservice.com> domain name lists “Sylveser Hornet” as the registrant and “Thermador Applicant Repair” as the registrant organization. Complainant argues that although the registrant organization information includes the term “Thermador,” Respondent may not be commonly known by the disputed domain name because Respondent failed to provide additional affirmative evidence to indicate that it was truly commonly known by the domain name. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent is not commonly known by the <thermadorappliancerepairservice.com> domain name.
Additionally, Complainant argues that Respondent uses the <thermadorappliancerepairservice.com> domain name to resolve to a webpage featuring Complainant’s THERMADOR mark and offering repair services in direct competition with Complainant’s services. Under Policy ¶¶ 4(c)(i) and (iii), a respondent’s use of a disputed domain to offer services in direct competition with a complainant’s services may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provided screenshots of the <thermadorappliancerepairservice.com> website, which indicate that the site features repair services for dishwashers, refrigerators, and stoves. See Compl. Annex F. As such, the Panel determines that Respondent failed to use the <thermadorappliancerepairservice.com> domain name for a permitted use under the Policy, and holds that Respondent lacks rights and legitimate interests in the domain name.
Registration and Use in Bad Faith
Next, Complainant claims that Respondent is using the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain. Per Policy ¶ 4(b)(iv), use of a domain name to attract Internet users and create confusion as to the source, sponsorship, affiliation or endorsement of the content therein may evidence bad faith. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provided screenshots of the <thermadorappliancerepairservice.com> website, which indicate that the site features Complainant’s THERMADOR mark and information regarding services that directly compete with Complainant’s business. Therefore, the Panel concludes that Respondent attempts to trade off the goodwill of Complainant’s mark for commercial gain and holds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thermadorappliancerepairservice.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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