WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bang & Olufsen v. Esxarcu Inversiones Financieras S.L.
Case No. D2020-2153
1. The Parties
The Complainant is Bang & Olufsen, Denmark, represented by BrandIT GmbH, Switzerland.
The Respondent is Esxarcu Inversiones Financieras S.L., Spain.
2. The Domain Names and Registrars
The disputed domain names <bohifi.com> and <bohifi.online> are registered with Nominalia Internet S.L. and eNom, Inc. (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2020. On August 17, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain name. On August 18, 2020 and August 24, 2020, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the contact information in the Complaint. The Center sent an email communication to the Complainant on August 26, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 3, 2020.
The Center sent an email communication to the parties in English and Spanish on August 26, 2020 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain names was, for the disputed domain name <bohifi.com>, Spanish and for the disputed domain name <bohifi.online>, English. The Complainant submitted a request for English to be the language of the proceeding on September 1, 2020. The Respondent did not submit any communication regarding the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2020. After an extension request, the due date for Response was extended until October 20, 2020. The Respondent contacted the Center on several dates, but did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment on October 27, 2020.
The Center appointed Luca Barbero as the sole panelist in this matter on November 4, 2020. 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 is a global luxury-lifestyle brand founded in 1925 in Struer, Denmark by Peter Bang and Svend Olufsen. It designs and manufactures audio products such as speakers, earphones, headphones, television sets, telephones, and accessorizes thereof. The Complainant operates in more than 70 markets and employs around 900 people worldwide. The Complainant’s audio products are sold worldwide in the Complainant’s flagship stores, online and in multi-branded stores. The Annual Report 2018/2019 reports 522 flagship stores and 4,782 multi-brand points of sales of the Complainant’s products. The Complainant’s revenues in 2018/2019 reached DKK 2.838 million, with 51 % in EMEA region, 8 % in Americas, 33% in Asia and 8% brand partnering and other activities.
The Complainant operates in Spain, where the Respondent is located, through the locally registered company Bang & Olufsen España S.A., founded on February 23, 1988, and 19 flagship stores.
The Complainant has provided evidence of ownership, amongst others, of the following trademark registrations:
- European Union trademark registration No. 000318071 for B&O (word mark), filed on May 27, 1996 and registered on October 18, 2001, in international classes 9, 10, 20, 35, 37, 38 and 42;
- European Union trademark registration No. 000318154 for B&O (figurative mark), filed on May 27, 1996 and registered on August 02, 1999, in international classes 9, 10, 20, 35, 37, 38 and 42;
- European Union trademark registration No. 003458908 for BEO (word mark), filed on October 28, 2003 and registered on February 5, 2008, in international classes 9, 10, 15, 20, 35, 37, 38, 39, 41 and 42;
- European Union trademark registration No. 000781666 for B&O (figurative mark), filed on March 25, 1998 and registered on September 30, 1999, in international classes 9, 10, 20, 35, 37, 38 and 42;
- European Union trademark registration No. 000318113 for BANG & OLUFSEN (word mark), filed on May 27, 1996 and registered on December 4, 1998, in international classes 9, 10, 20, 35, 37, 38 and 42;
- European Union trademark registration No. 000318279 for BEOVISION (word mark), filed on May 27, 1996 and registered on December 09, 1998, in international classes 9, 20 and 37; and
- European Union trademark registration No. 000318212 for BEOLAB (word mark), filed on May 27, 1996 and registered on December 4, 1998 in international classes 9, 20 and 37.
The Complainant is also the owner of over 240 domain names containing the trademark BANG & OLUFSEN or variations thereof, including <bang-olufsen.com>, registered on March 18, 1996 and used by the Complainant to promote its products and services under the trademarks BANG & OLUFSEN and B&O.
The disputed domain names <bohifi.com> and <bohifi.online> were registered on October 22, 2015 and July 24, 2017, respectively, and resolve to websites featuring the Complainant’s trademarks and images taken from the Complainant’s official website and promoting the sale also of Complainant’s products. According to the screenshots submitted by the Complainant and not challenged by the Respondent, the disputed domain name <bohifi.online> was also used in the past to promote the sale of goods of Complainant’s competitors, namely BOSE products, and to redirect users to a third-party websites offering for sale clothing, footwear and digital goods.
5. Parties’ Contentions
A. Complainant
The Complainant contends that disputed domain names <bohifi.com> and <bohifi.online> are confusingly similar to the trademark B&O in which the Complainant has rights as they reproduce the dominant part of the trademark with the exclusion of the ampersand between the letters “b” and “o”, and with the addition of the descriptive term “hifi” and of the generic Top-Level Domains “.com” and “.online”.
The Complainant further highlights that the term “hifi” is a known abbreviation for “high fidelity electronic equipment used to play recorded sound, especially music” and that in itself, it is very relevant to the Complainant’s business field as it clearly refers to audio and sound products by making clear reference to the business area (sound and video products) for which the Complainant is known around the world.
With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that the Respondent was never granted any right or license to use the trademark B&O within the disputed domain names, nor is it in any way affiliated, endorsed or sponsored by the Complainant for the use of its trademarks and promotion of its products.
Moreover, the Complainant further states that, when conducting searches on trademark databases, no result was found in relation to the trademarks corresponding to the terms “bo hifi”, “bohifi” or “bohifi.com” and “bohifi.online” owned by the Respondent, which also shows that, apart from the references to the disputed domain names and the company name Bohifi Sound & Video Equipments SRL, the Respondent is not commonly known by the disputed domain names.
The Complainant also contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names nor is it using the disputed domain names in connection with a bona fide offering of goods or services as it seems to be using the websites at the disputed domain names to impersonate or suggest some sort of sponsorship or endorsement by the Complainant, by offering a range of goods that bear the Complainant’s trademarks. In addition, the Complainant asserts that, since the Respondent failed to properly revert to any of the Complainant’s letters, the Respondent has also failed to provide proof of rights or legitimate interests in the disputed domain name.
With reference to the circumstances evidencing bad faith, the Complainant indicates that its trademark registrations predate the registration of the disputed domain names and that the Complainant has never authorized the Respondent to use its registered trademarks or to register the disputed domain names.
The Complainant emphasizes that the disputed domain names incorporate the popular B&O acronym along with the term “hifi” which is descriptive and closely connected to the Complainant’s business, and that along with the content of the websites associated with the disputed domain names, which display the products bearing the Complainant’s trademarks, the Respondent appears to have deliberately attempted to improperly benefit from the Complainant’s earlier rights and reputation. Therefore, the Complainant underlines that the Respondent’s use of the disputed domain names does not constitute good faith, as the Respondent is attempting to trade on the goodwill associated with the Complainant’s trademark.
Moreover, the Complainant contends that the Respondent is likely to gain profit also by diverting traffic to third-party websites especially for the website under the disputed domain name <bohifi.online> which is used to host content redirecting to other websites offering clothing, footwear and digital goods.
The Complainant also highlights that, despite the numerous e-mail exchanges with the Respondent, the latter never provided any proper response to the Complainant’s Cease & Desist (“C&D”) letters. In addition, the fact that the Respondent’s contact information in the WhoIs records was hidden by the privacy shield, would also prove that the Respondent has also taken active steps to conceal its identity and the Respondent’s signature in the replies to the Complainant’s C&D letters – which came initially under the “BÓhifi” signature, then turned into BÔhifi Sound&Video Equipments S.R.L.” and, last, as Lluís Reynés-Manager- BÒhifi Sound&Video Equipments S.R.L.” - also confuses as to the actual identity of the Respondent.
Lastly, the Complainant states that, the fact that the content of the website associated with the disputed domain name <bohifi.online> has been changing and the sections of the English version of the website as well as the products of competing brands were removed, is also a further indication of bad faith.
B. Respondent
No formal Response was filed in reply to the Complainant’s contentions. However, the Respondent informed that it is the web designer and that for any further clarification the Center can contact the owner (and provided an email address which was used for the purpose of the notification of the Complaint). The beneficial holder of the disputed domain names sent several email communications informing that they are checking Complainant’s information with the corresponding trademark offices and requesting an extension for the submission of a response, but no formal response was filed.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Preliminary procedural issues.
1. Identification of proper Respondent
According to the Center’s verifications with the concerned registrars, the disputed domain names are registered by ESXARCU INVERSIONES FINANCIERAS S.L. The registrant informed that it is the web designer but that the owner of the disputed domain names is a third entity. The Panel notes that, based on records, before the filing of the Complaint, the Complainant addressed a C&D letter to such entity, receiving in reply the indication that the domain names had been registered for a third party, and subsequent correspondence was exchanged between the Complainant and an entity named “BÒhifi Sound&Video Equipments S.R.L.” (also named equally as “BÔhifi Sound&Video Equipments S.R.L.” or “BO-hifi Sound&Video Equipments”), whose name and contact details are also provided on the websites to which the disputed domain names resolve. The Panel further notes that the Complainant argues that the consolidation of ESXARCU INVERSIONES FINANCIERAS S.L. and BÒhifi Sound&Video Equipments S.R.L. as the Respondent in this proceeding would be procedurally efficient and fair and equitable to all parties.
The Panel considers that a registrant of a domain name has certain obligations arising from its registration, and the fact that there is a third-entity (commonly referred as beneficial holder) controlling and using such domain name should not serve generally to avoid the registrant’s obligations.
The Panel notes that there is no evidence submitted in this proceeding on the nature, scope and terms governing the relationship between the registrant of the disputed domain names (i.e. ESXARCU INVERSIONES FINANCIERAS S.L.) and its beneficial holder (i.e. BÒhifi Sound&Video Equipments S.R.L.) However, the Panel notes that the registrant on record identifies an email address corresponding to the “owner” of the disputed domain names, and that this email address (linked to the disputed domain name <bohifi.com>) has been used by BO-hifi Sound&Video Equipments to contact the Center regarding the present proceeding. While BÒhifi Sound&Video Equipments S.R.L. was created after the registration of the disputed domain names, it seems from the evidence and circumstance of the case that it has, at least, certain control over the disputed domain names and it is the entity using the disputed domain names.
In view of the foregoing, the Panel finds that the disputed domain names were registered by Esxarcu Inversiones Financieras S.L., and are actually used by BÒhifi Sound&Video Equipments S.R.L.”. References made in the subsequent paragraphs and in the substantive sections of this Decision to “the Respondent” without further specifications shall be read as referred to both them.
2. Language of the proceeding
Pursuant to paragraph 11(a) of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
In the case at hand, the language of the Registration Agreement of the disputed domain name <bohifi.com> is Spanish, while for the disputed domain name <bohifi.online> is English. The Complaint was filed in English. Upon completing the Registrar’s verifications, the Center sent an email communication to the parties about the language of the proceeding requesting them to comment on the issue.
The Complainant submitted a request for English to be the language of the proceeding based on the following grounds:
- the disputed domain names are pointed to websites which use English terms and expressions and are also available in several languages, including English;
- the language of the registration agreement of the disputed domain name <bohifi.online> is English and, therefore, the Respondent is familiar with such language;
- the Complainant is not familiar with Spanish, notwithstanding it made some efforts to communicate in such language in pre-Complaint correspondence with the Respondent, and would incur in additional costs should a translation in Spanish be required;
- the English language being commonly use internationally, thus it would be fair to the Parties that the language of the present proceeding be English.
The named registrant of the disputed domain names ESXARCU INVERSIONES FINANCIERAS S.L. replied to the Center’s request to comment on the language of the proceeding indicating only to have registered the disputed domain names on behalf of a client. The beneficial holder of the disputed domain names, BÒhifi Sound&Video Equipments S.R.L., requested that the language of the proceeding be Catalan, being it based in Catalonia; and later on communicated in Spanish. Both entities, however, did not deny being able to communicate in English language.
In view of the circumstances of the case, exercising its powers under paragraphs 10 and 11 of the Rules, the Panel deems appropriate to accept the Complainant’s request to hold the proceedings in English.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights over the trademark B&O based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 13 to the Complaint.
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Moreover, where the relevant trademark is recognizable within the disputed domain names, the addition of generic or descriptive terms or even letters or numbers does not prevent a finding of confusing similarity under the first element (sections 1.8 and 1.9 of the WIPO Overview 3.0).
In the case at hand, the Complainant’s trademark B&O must be seen, for the purposes of the domain name system, as protecting both the signs “bo” and “bando”, since the ampersand symbol cannot be used in the domain name system. The disputed domain names consist of the Complainant’s B&O trademark in full with the addition of the term “hifi”, which is merely a known abbreviation to identify high fidelity electronic equipment used to play recorded sound, and of the generic Top-Level Domains “.com” and “.online”, which can be generally disregarded being mere technical requirements for registration.
See, along these lines, H & M Hennes & Mauritz AB v. Privacy Guardian, See PrivacyGuardian.org; Joyce Cheadle; Gilberto Andino; Xue Lin,
WIPO Case No. D2019-0454; and Allen & Overy LLP v. Name Redacted,
WIPO Case No. D2019-1148.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain names according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.
Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant shows a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
With respect to paragraph 4(c)(ii) of the Policy, as held in Section 2.3 of the WIPO Overview 3.0, “For a respondent to demonstrate that it (as an individual, business, or other organization) has been commonly known by the domain name or a name corresponding to the domain name, it is not necessary for the respondent to have acquired corresponding trademark or service mark rights. The respondent must however be “commonly known” (as opposed to merely incidentally being known) by the relevant moniker (e.g., a personal name, nickname, corporate identifier), apart from the domain name. Such rights, where legitimately held/obtained, would prima facie support a finding of rights or legitimate interests under the UDRP. Insofar as a respondent’s being commonly known by a domain name would give rise to a legitimate interest under the Policy, panels will carefully consider whether a respondent’s claim to be commonly known by the domain name – independent of the domain name – is legitimate. Mere assertions that a respondent is commonly known by the domain name will not suffice; respondents are expected to produce concrete credible evidence”.
In the case at hand, based on the documents and statements submitted by the parties, the registrant of the disputed domain names claimed to have registered them on behalf of a third party, BÒhifi Sound&Video Equipments S.R.L., whose activity is promoted on the websites to which the disputed domain names resolves. However, as stated above, no formal response was received by both the named registrant and the alleged beneficial owner of the disputed domain names and no evidence has anyway been submitted to demonstrate that the Respondent could have any rights or legitimate interests on the sign “Bohifi” established through registration or use. Noting that the term “Bohifi” included as prefix in the company name BÒhifi Sound&Video Equipments S.R.L. – created after the registration of the disputed domain names – entirely reproduces the Complainant’s trademark B&O and is clearly apt to recall, and to create confusion with, the Complainant and its prior well-known trademarks, the Panel finds that the selection and use of such company name is not sufficient to demonstrate that the Respondent is legitimately commonly known by the disputed domain name.
As mentioned above, based on the Complainant’s submissions, the disputed domain names have been pointed to websites reproducing the Complainant’s trademarks and copyrighted product images taken from the Complainant’s official website and promoting the sale of products of the Complainant. Moreover, the disputed domain name <bohifi.online> has been pointed to a website promoting also competitors’ products and other goods sold by third parties such as footwear, clothing and digital goods. Furthermore, the Panel notes that, on both websites to which the disputed domain names currently resolve, reference is made also to other competitors’ brands, such as LOEWE and HISENSE.
According to paragraph 2.8.1 of the WIPO Overview 3.0, “resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. As outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark”.
In the case at hand, there is no evidence on records of any agreement executed between the parties as to the resale of the Complainant’s products and/or the authorization or prohibition to register the disputed domain name. Therefore, the Panel shall evaluate the presence of the cumulative requirements prescribed by the Oki Data test to determine whether the Respondent could be making a bona fide offering of goods and services and thus have a legitimate interest in such domain names.
According to the screenshots submitted by the Complainant and the Panel’s review of the websites published at the disputed domain names, the first condition is met at least with respect to the disputed domain name <bohifi.online> as the corresponding website appears to actually offer for sale the Complainant’s products; although there is no evidence that the Respondent might have tried to corner the market in domain names reflecting the trademark, the second and third conditions are instead not fulfilled, since i) both websites make reference also to competitors’ goods, and the disputed domain name <bohifi.online> has been used in the past to directly offer for sale competitors’ products as well as to redirect users to a third-party website where unrelated products could be purchased; and ii) no accurate, evident and prominent disclaimer has been published on the top of the home page of both websites aimed at informing users about its relationship with the trademark owner.
In view of the above, the Panel finds that the Respondent has not made, before receiving notice of the dispute, and is currently not making, a bona fide offering of goods or services under the disputed domain names. Moreover, since the activity promoted on the websites at the disputed domain names is clearly commercial in nature, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain names according to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant proves that the disputed domain names were registered and are being used in bad faith.
As to bad faith at the time of the registration, the Panel finds that, in light of i) the prior registration and use of the Complainant’s trademark B&O in connection with the Complainant’s products; ii) the well-known character of the trademark in its sector, in which also the Respondent operates; and iii) the confusing similarity of the disputed domain name with the Complainant’s trademark, the disputed domain names very likely were registered having the Complainant’s trademark in mind.
In fact, the circumstance that the disputed domain names have been pointed to websites featuring the Complainant’s trademarks and promoting the sale of Complainant’s products, clearly demonstrates that the Respondent was indeed well-aware of the Complainant and its trademark.
The Panel also finds that, by pointing the disputed domain names to websites promoting the sale of Complainant and competitors’ products, publishing the Complainant’s trademarks and official images and failing to accurately and prominently disclose the relationship (or lack thereof) with the trademark owner, the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the trademark B&O as to the source, sponsorship, affiliation or endorsement of its websites and the products promoted therein according to paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the Complainant has also proven that the disputed domain names were registered and are being used in bad faith according to paragraph 4(a)(iii) of the Policy.
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 <bohifi.com> and <bohifi.online> be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: November 19, 2020
