WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RC Ritzenhoff Cristal AG v. Hiroki Mitsuhashi
Case No. D2000-1796
1. The Parties
The Complainant is RC Ritzenhoff Cristal AG, Sametwiesen 2, 34431 Marsberg, Germany, represented by Dr. Andrea Nowak-Over, Heuking Kühn Lüer Wojtek, Cologne, Germany ("Complainant").
The Respondent is Mr. Hiroki Mitsuhashi, an individual with address of 5-39-22-203 Akazutsumi Setagayaku, Tokyo 156-0044, Japan, representing himself ("Respondent").
2. The Domain Name and Registrar
The dispute concerns the domain name "ritzenhoff.com".
The Registrar is AWRegistry Services, Kamas, Utah, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complainantís Complaint in electronic form on December 22, 2000, and in hard copy on December 29, 2000.
The Center verified that the complaint was filed in accordance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for the Policy ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules").
Complainant made the required payment to the Center.
On December 30, 2000, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On January 4, 2001, the Registrar transmitted via e-mail to the Center, the Registrarís Verification Response, confirming that (1) AWRegistry Services is the Registrar of the Domain Name, (2) Hiroki Mitsuhashi (the Respondent) is the registrant, as well as the Administrative, Technical and Billing Contact, (3) the Policy applies to the Domain Name, and (4) the Domain Name is in "Active" status.
On January 6, 2001, the Center received an e-mail message from Respondent, stating some background details on the registration of the Domain Name.
On January 9, 2001, the Center transmitted Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via e-mail and via post/courier to the address identified in the Registrar verification response. The Center advised that (1) the Respondentís Response was due by January 28, 2001, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondentís default as it considers appropriate, (4) the Complainant had elected for the matter to be decided by a single panelist.
The Respondent did not submit a timely Response. Accordingly, the Center sent to the Respondent a Notification of Respondent Default on January 31, 2001.
On February 1, 2001, in view of the Complainantís designation of a single panelist the Center invited Mr. P-E Petter Rindforth to serve as a panelist.
Having received Mr. Rindforthís Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on February 5, 2001, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the sole Panelist. The Projected Decision Date was February 19, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Notwithstanding the fact that the Respondent failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding, the Panel will take into consideration the e-mail message filed by Respondent on January 6, 2001.
Accordingly, the Administrative Panel shall issue its Decision based on the Complaint, Respondentís e-mail message, the Policy, the Rules, and the Supplemental Rules. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is the owner of the following national German trademark registrations:
No 393 38 043 "RC Ritzenhoff Cristal"
Registered: September 25, 1997
Classes: 16, 21, 24 and 42
No 397 38 044 "Ritzenhoff"
Registered: September 25, 1997
Classes: 16, 21, 24, 42
No 399 73 948 "Ritzenhoff"
Registered: February 24, 2000
Classes: 11, 14, 18, 25, 27, 28, 34
Copies (not translated from German) of the Certificates of Registration for these trademarks have been submitted as Annexes 3-5 of the Complaint.
The Complainant is also the owner of the following International Trademarks, registered with the World Intellectual Property Organization:
No 692 073 "Ritzenhoff"
Validity date: March 23, 1998
Classes: 16, 21, 24, 42
Designated countries: Austria, Benelux, France, Italy, Spain, Switzerland, Sweden
No 692 069 "RC Ritzenhoff Cristal"
Validity date: March 23, 1998
Classes: 16, 21, 24, 42
No 740 825 "Ritzenhoff"
Validity date: May 11, 2000
Classes: 11, 14, 18, 20, 21, 25, 27, 28, 34
Copies of the Certificates of Registration for these International Registrations have been submitted as Annexes 6-8 of the Complaint.
The Complainant claims to enjoy strong recognition of its "Ritzenhoff" trademark in various geographical regions. Complainant has a long-established business in its home country, Germany, and has been active on the international market since 1992. Further, the "Ritzenhoff" trademarks are known in Japan as their products have been advertised and sold via Japanese television since 1996.
The Domain Name was registered by the Respondent on December 13, 1999.
The Respondent has not filed a formal Response, however the e-mail message of January 6, 2001 informs that the Respondent was, at the time of the registration of the Domain Name, a Website Developer.
5. Partiesí Contentions
The Complainant contends that the Domain Name is identical to the "Ritzenhoff" trademark, and that it is confusingly similar to the "RC Ritzenhoff Cristal" trademark.
"Ritzenhoff" is the primary distinguishing word of the "RC Ritzenhoff Cristal" trademark, and identical to the "Ritzenhoff" part of the Domain Name.
That the trademark begins with a capital letter "R" makes no distinction as the domain name can use either small or capital case letters. No additional letters, characters, dashes, etc. exist in the domain name to distinguish it in any way from the Ritzenhoff trademark.
The domain name is also confusingly similar to Complainantís trademarks because the marketing of both takes place on the Internet. In this forum, "ritzenhoff.com" and the trademarks "ritzenhoff" appear to be the same source. In this case, it is especially confusing because the Complainant owns and makes use of the ritzenhoff.de site. The Ritzenhoff country TLD website was registered in October 1996, has been in active use since early 1997.
The Complainant further contends that the Respondent has no legitimate interest in the Domain Name, as he does not sell products or provide services under the Domain Name, has no trademarks including the name "Ritzenhoff" and the Respondentís own family name or first name is not Ritzenhoff.
The Respondent has made no use of his valuable Domain Name at all, and has no known legitimate interest in the same. Accordingly, the registration of the Domain Name appears to be an attempt in bad faith for the purpose of either selling it to the Complainant or to a competitor of the Complainant.
The Respondent has not contested that the Domain Name is identical and/or confusingly similar to the Complainantís trademarks.
The Respondent states in his January 6, 2001 e-mail to the Center that he was consulted in 1999, by a Mr. Kazuhito Kato, president of Nippon YO-KO Boeki K.K. about their "Internet Sales Strategy", and that the said company is the agent and distributor for the Complainantís products in Japan.
The Respondent further states that he registered the Domain Name on request of Nippon YO-KO Boeki K.K., and that accordingly the registration was not made in bad faith.
Nippon YO-KO Boeki K.K. later developed a web site under another domain name, and therefore the disputed Domain Name has been "left untouched since then".
6. Discussion and Findings
According to Paragraph 4 (a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondentís Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
1. Identical or Confusing Similarity
The Complainant refers to a number of trademark registrations for "Ritzenhoff" and "RC Ritzenhoff Cristal", whereof some are registered after the registration of the disputed Domain Name.
However, there is no doubt that the Complainant has registered trademark rights to "Ritzenhoff" prior to the registration of the Domain Name and that the Domain Name "ritzenhoff.com" is identical to the mark "Ritzenhoff".
The trademark "RC Ritzenhoff Cristal" consists of the letter combination RC Ė which appears to be less distinctive than the main word Ritzenhoff, the distinctive word Ritzenhoff, and the descriptive word Cristal. The Panel therefore concludes that the Domain Name must be considered as confusingly similar to the trademark "RC Ritzenhoff Cristal".
2. No Rights or Legitimate Interest
The Complainant states that the Respondent has no rights to use the Complainantís trademarks, and is not an authorized agent or licensee of the Complainantís products, services or trademarks.
Even if (as claimed by the Respondent) he was asked by the local agent of the Complainant to register the Domain Name, such action does not constitute any legal rights or legitimate interests in the disputed Domain Name and gives the Respondent no rights to register the Domain Name in his own name.
The Panel concludes that the Complainant has fulfilled this second requirement of Paragraph 4 (a) of the Policy.
3. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the Domain Name has been registered and is being used in bad faith.
Nothing in the Complaint indicates that the Complainant has made any attempt to contact the Respondent in order to determine the reasons for the registration of the Domain Name or to request the transfer of the same, prior to filing the Complaint.
The Complainant contends that as the Respondent has made no use of the Domain Name and as he has no known legitimate interest in it, the Domain Name must have been registered in bad faith and for the purpose of selling it to the Complainant or to a competitor of the Complainant. The Panel is not convinced by these arguments.
There are no circumstances indicating that the Respondent registered the Domain Name primarily for the purpose of transferring the Domain Name to the Complainant or to a competitor for a valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the Domain Name (see Paragraph 4 (b) of the Policy). The Respondent has confirmed that he had knowledge of the Complainant and its trademarks when he registered the Domain Name, but there is no evidence that the purpose was to sell the Domain Name for a large amount of money.
There is no evidence that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting the trademark "Ritzenhoff" in a corresponding domain name and the Respondent is known to be engaged in a pattern of such conduct.
As stated in the Complaint, the Respondent has made no use of his "valuable Domain Name". If the purpose of the registration had been to sell it to the Complainant for a valuable consideration in excess of Respondentís costs related to the same, there would normally have been some kind of activities from the Respondent. In the absence of any contacts between the parties, prior to the Complaint, it is not possible to judge the Respondents lack of activities as "use in bad faith".
Considering the above the Panel concludes that, even without any consideration of the January 6, 2001 e-mail message from the Respondent, there are reasonable doubts whether the Domain Name was registered and is being used in bad faith.
The Panel herewith concludes that the Complainant has failed to prove that the Domain Name was registered and is being used in bad faith.
The Panel concludes (a) that the Domain Name "ritzenhoff.com" is identical to the Complainantís registered trademark "Ritzenhoff" and is confusingly similar to the Complainantís registered trademark "RC Ritzenhoff Cristal", (b) that the Respondent has no rights or legitimate interest in the Domain Name, and (c) that the Complainant has failed to prove that the Respondent has registered and used the Domain Name in bad faith.
Therefore, pursuant to paragraphs 4 of the Policy and 15 of the Rules, the Panel denies the Complainantís request to transfer the disputed Domain Name to the Complainant RC Ritzenhoff Cristal AG.
P-E Petter Rindforth
Dated: February 19, 2001