A WIPO panel has denied the claim of a Swiss law firm in a UDRP action for RENTSCH.COM. In the case of Rentsch Partner AG v. Domain Hostmaster, Whois Privacy Services Pty Ltd, D2015-2302, where I represented the Respondent, the panel found that the Complainant did not prove that its trademark was famous outside of Eastern Europe. Here is the decision:
1. The Parties
The Complainant is Rentsch Partner AG of Zurich, Switzerland represented internally.
The Respondent is Domain Hostmaster, Whois Privacy Services Pty Ltd., Customer ID_ 78529104178955 of Fortitude Valley, Australia / Stanley Pace of Flower Mound, Texas, United States of America (“United States”) represented by Law Office of Howard M. Neu, P.A., United States.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the RENTSCH PARTNER mark based on its trademark registrations since March 2011 and/or its common law rights in the RENTSCH PARTNER mark since 2001. The question is whether the Disputed Domain Name is confusingly similar to the Complainant’s mark.
Regarding the test for confusing similarity, paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview”) states that “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. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
When applying the test of confusingly similarity, the panel in Islamic Bank of Britain Plc v. Ifena Consulting, Charles Shrimpton, WIPO Case No. D2010-0509, where the complainant established its rights in a device which incorporates the words ”Islamic Bank of Britain”, found that “The disputed domain name omits the words of Britain, which is part of the Complainant’s trade mark, and which is also a geographic reference. This is not of itself sufficient to prevent a finding of confusing similarity because the words Islamic Bank are more distinctive than of Britain in this Panel’s view. The use of Britain in the trade mark is geographic in the sense that it refers to the place where the organisation is based.”
In this case, the Complainant’s mark consists of two words, “rentsch” and “partner” whilst the Disputed Domain Name omits the word “partner”. The Panel is of the view that the word “partner” can be regarded as a descriptive element in the Complainant’s mark, particularly as the Complainant is a law firm and the word “partner” is commonly used and understood as referring to the nature of the business. Having considered the threshold test for confusing similarity under the UDRP and adopting the reasoning of the case above, the Panel accepts that
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has not authorised the Respondent to use the RENTSCH PARTNER mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the RENTSCH PARTNER mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was 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 it has acquired no trade mark 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 trade mark or service mark at issue.
The Disputed Domain Name currently resolves to a parking page which contains sponsored links. As stated in paragraph 2.6 of the WIPO Overview, use of a domain name to post parking pages or pay-per-click links “may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’…or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.” On the other hand, it has been held in a number of cases that business models relying upon pay-per-click parking revenue are not of themselves objectionable unless tainted by evidence of bad faith, see for example, Nursefinders, Inc. v. Vertical Axis, Inc / NURSEFINDER.COM c/o Whois Identity Shield, WIPO Case No. D2007-0417 and Super Supplements, Inc. v. Vertical Axis, Inc. WIPO Case No. D2008-0244.
In this case, the Disputed Domain Name consists of a common German surname “Rentsch” and the pay-per-click links are related to generic job searching websites. Considering this against the background of the Respondent’s apparent business in acquiring and using domain names for business purposes over the years, and that there is no evidence of the Respondent intentionally targeting the Complainant and/or its business in using the Disputed Domain Name (in particular, the Panel notes that the Complainant has provided little evidence of the reputation of its mark outside of Switzerland, and Rentsch is a common surname in Germany, Switzerland, and parts of Eastern Europe), the Panel considers the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
The Panel accordingly finds that the Complainant has not satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
As the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy, the Panel does not need to consider whether the requirements of paragraph 4(a)(iii) are met. However, by the same reasoning as under B above, and particularly in light of the absence of any evidence to suggest that the Respondent targeted the Complainant and/or its trade mark either at the time of his acquisition of the Disputed Domain Name or in his subsequent use of it, the Complainant has failed to satisfy the Panel that the Disputed Domain Name was registered or is being used in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: March 8, 2016