WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rudolf A. Oetker v. Joe Rao
Case No. DBIZ2001-00033
1. The Parties
The Complainant is Rudolf A. Oetker of Ost-West-Strasse 59-61, 20457 Hamburg, Germany, represented by Michael Buch of the same address.
The Respondent is Joe Rao of 2922 Western Avenue #432, Seattle, Washington, United States of America, representing himself.
2. The Domain Name and Registrar
The disputed domain name is <rao.biz> and the Registrar is Network Solutions, Inc., of Herndon, Virginia, United States of America.
3. Procedural History
This is an administrative proceeding in accordance with the Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the STOP"), the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules").
The Complaint was filed at the WIPO Arbitration and Mediation Center ("the Center") by email on December 13, 2001, and in hard copy on December 17, 2001. Its receipt was acknowledged on December 14, 2001. On December 19, 2001, the Respondent protested that the Complaint was filed out of time. On December 27, 2001, the Center informed the Respondent that the Complaint was filed within time.
On January 11, 2002, the Center drew certain deficiencies in the Complaint to the Complainantís attention and on January 15, 2002, by email and January 17, 2002, in hard copy, the Complainant filed an amended Complaint.
On January 23, 2002, the Center formally dispatched copies of the Complaint and Amended Complaint by post/courier (with enclosures) to the Respondent at the address as recorded with the Registrar and by email (without attachments). The Center included with that material a letter dated January 23, 2002, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint and Amended Complaint without attachments) to the Complainant, the Registrar and ICANN.
The last day specified by the Center for a Response was February 12, 2002. On January 28, 2002, the Respondent requested an English translation of an annexure in German to the Complaint. The Complainant provided a certified English translation on February 12, 2002. Meantime the Center had extended the time for a Response until February 22, 2002. A Response was filed by email on February 21, 2002, and in hard copy on March 5, 2002. On February 25, 2002, the Center acknowledged receipt of the Response.
On March 11, 2002, the Center formally notified the parties of the appointment of Alan L. Limbury as panelist, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. That day the Center transmitted the case file to the Panel and notified the parties of the projected decision date of March 25, 2002.
The Panel is satisfied that the Complaint, as amended, complies with the requirements of the STOP Rules and the WIPO Supplemental STOP Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the STOP Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; a Response was filed within the time specified in the STOP Rules and the Panel was properly constituted.
The language of the proceedings was English, being the language of the Registration Agreement.
4. Factual Background
Founded in 1952, the Complainant is a member company of the international shipping group Hamburg Süd. Under the abbreviation "RAO", the Complainant operates several vessels in the international bulk trade, especially between Europe and South and North America. That abbreviation has been well-known in the shipping market for nearly 50 years and has a high reputation. The abbreviation "RAO" appears on all company flags on the vessels of the Complainant's fleet. RAO is a trade name of the Complainant.
The Respondent was born on October 24, 1976 and was named Joseph Richard Rao by his father, Jerome Paul Rao MD, FACS, who has been practising under his surname as a physician in the State of Washington, United States of America for the last 20 years. Dr. Rao currently holds a Washington State license to practise as a physician and surgeon and (at least in 2001) a Washington State business license. Dr. Rao owns his own business, registered under the name of "Rao Adult and Pediatric Urology".
The Respondent is employed by Dr. Rao as an IT Consultant, in which capacity the Respondent registered the disputed domain name, for use in connection with Dr. Raoís business.
5. Partiesí Contentions
The domain name of the Respondent is identical to a registered company name in which the Complainant has rights. It is identical to the abbreviation "RAO".
The Respondent has no rights or legitimate interests in respect of the domain name. The Respondent could use the address <joerao.biz> as he does with the domain "com". He does not have a 50 years history of using the abbreviation as the Complainant does. Therefore a change of his domain would have a much lower impact than a change of the domain for the Complainant would have. The Respondent already has an email address <email@example.com>.
The disputed domain name is not identical to a trademark or service mark in which the Complainant has rights. The Complainant's company name is Rudolf A. Oetker and in no part of the official document translated for the purposes of this proceeding is the company referred to specifically with the abbreviation "RAO". The Complainant has not produced any evidence that "RAO" is an official trademark. The evidence demonstrates nothing more than the use of an abbreviation of the Complainant's company name as a method of shorthand. Accordingly, the Complainant has no rights to the designation "RAO" under STOP. Research of European, US and Canadian registered trademarks has failed to list the Complainant as an owner of such a trademark or designation.
The Respondent has legitimate rights to the disputed domain name by virtue of his given surname, RAO. Dr. Rao uses the surname to identify his own privately owned business and medical practice. Use of a given surname to identify one's business is considered a trademark or service mark under common law. It is the private business owned by Jerome P. Rao, M.D. that will occupy the<rao.biz> domain.
The Respondent registered the disputed domain name as a representative and employee of his father, Dr. Rao. The primary intended use of the disputed domain name is to provide a root domain for the business of Dr. Rao.
The Respondent had no prior knowledge of the Complainant nor of the Complainantís use of the abbreviation "RAO" prior to the notification given by the Complainant to the Respondent on December 11, 2001.
The Complainant's arguments are invalid and the STOP proceedings should now desist.
6. Discussion and Findings
STOP Rule 15(a) requires this Panel to decide this Complaint on the basis of the statements and documents submitted and in accordance with the STOP, the STOP Rules and any rules and principles of law that it deems applicable.
The Complainants is required by paragraph 4 (a) of the STOP to prove each of the following three elements: --
(a) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered or is being used in bad faith.
Rights in a trademark
The Complainant claims the name RAO is an abbreviation of its company name. It does not claim that RAO is a trademark. However, on the evidence it has provided, it appears that all ships in the fleet fly flags with RAO on them and that RAO has been used for 50 years as an abbreviation denoting the Complainant and its services. Under these circumstances the Panel is prepared to accept that the Complainant has established common law rights in the mark RAO in relation to ships and shipping services.
The disputed domain name is clearly identical to the Complainantís common law trademark RAO. The Complainant has established this element.
The Complainant bears the onus of proof on this, as on all issues. The Complainant has produced no evidence and its assertions fail to articulate any basis which, even if proved, would establish this element.
The Respondent has, however, conclusively demonstrated rights and legitimate interests in respect of the disputed domain name, both as regards the Respondentís surname and as regards the intended use of the disputed domain name in his father, Dr. Raoís business.
The Complainant has failed to establish this element.
The Complainant has not even asserted bad faith, despite having its attention drawn by the Center to this deficiency in the Complaint. The Respondent has clearly refuted any possible claim of bad faith that could be made.
The Complainant has failed to establish this element.
Pursuant to paragraphs 4(i) of the STOP and 15(d) of the STOP Rules, the Panel finds that this dispute is not within the scope of paragraph 4(a) of the STOP and accordingly the Complaint is dismissed.
Alan L. Limbury
Dated: March 25, 2002