WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PATRIZIA Immobilien AG v. Domain Admin / Sébastien Schmitt
Case No. D2010-1495
1. The Parties
The Complainant is PATRIZIA Immobilien AG of Augsburg, Germany, represented by Lorenz Seidler Gossel of Germany.
The Respondents are Sébastien Schmitt of Sainte Ruffine, France and Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <patrizia.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2010. On September 7, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 7, 2010, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 8, 2010, 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 amendment to the Complaint on September 13, 2010. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced September 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response October 5, 2010. The Response was filed with the Center October 4, 2010.
The Center appointed Alistair Payne, Torsten Bettinger and David E. Sorkin as panelists in this matter on November 2, 2010. The Panel finds that it was properly constituted. Each member of 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.
The Panel subsequently issued a Panel Order seeking further evidence from the Respondent concerning its registration of the Disputed Domain Name with leave to the Complainant to file an additional submission in response. The Respondent submitted further evidence on November 26, 2010 and the Complainant filed its response on December 3, 2010.
4. Factual Background
The Complainant has since 1984 operated a residential and commercial real estate business based in Germany under the name PATRIZIA. It owns a combined word and device Community Trade Mark registration 0821629 including the word mark PATRIZIA dating from November 30, 1999, and an International Registration for a combined word and device mark incorporating PATRIZIA under number 1042179 dating from May 14, 2010 and operates a website from “www.patrizia.ag”.
The Respondent registered the Disputed Domain Name on December 23, 2003.
5. Parties’ Contentions
The Complainant submits that its business, although based in Germany, is Europe wide and is very substantial with € 3 billion of real estate assets under management. It asserts that its trade mark registrations or its corporate and business name PATRIZIA is identical or confusingly similar to the Disputed Domain Name.
The Complainant submits that the Respondent does not operate a business under the PATRIZIA mark and does not own any registered trade mark rights in respect of this mark. The Complainant says that it has not authorised the Respondent’s use of the mark and has no affiliation with the Respondent. The Disputed Domain Name resolves to the Respondent’s website which features links to a range of advertisers, including some in the real estate business, and as a result the Complainant submits that it has made out a prima facie case that the Respondent has no legitimate rights or interests in the Disputed Domain Name.
As far as bad faith is concerned, the Complainant says that the Respondent’s failure to use the Disputed Domain Name for a website featuring advertising links and not in a bona fide manner is indicative of use in bad faith. Further, the Complainant submits that the Respondent registered the Disputed Domain name with actual knowledge of the Complainant’s trade mark rights, and it is in particular apparent that it chose purposefully to offer the site in the German language in order to attract advertisements from real estate advertisers in terms of paragraph 4(b)(iv) of the Policy, and the Complainant relies on the previous panel decision in Shangri-la International Hotel Management Limited v NetIncome Ventures Inc., WIPO Case No. D2006-1315. Further, the Complainant submits that the Respondent’s refusal to transfer the Disputed Domain Name upon request combined with its false statement that it does not use the Disputed Domain Name for real estate business are indicative of bad faith.
The Respondent submits that the Complainant’s trademark registrations are for figurative marks containing the word mark PATRIZIA and a device mark and that as a result the Disputed Domain Name is not identical or confusingly similar to any of the Complainant’s trademark registrations.
The Respondent says that it does have legitimate rights or interests and that it acquired the Disputed Domain Name at auction on December 23, 2003 for use by his sister in law, Patricia, who goes by the nickname “Patrizia”. Since registration, he says that the Disputed Domain Name has only been used for several e-mail addresses, including “[…]@patrizia.com”. The Respondent says that the Complainant could have participated in this auction but apparently chose not to do so. The Respondent further submits that it had no knowledge of the German based Complainant at the time of registration and that “Patrizia” is a very common Christian name and that there are many entities and domain names that use the name. The Respondent has identified more than 14,000 companies containing “Patrizia” in their corporate name and more than 400 domain names containing the name. In addition, the Respondent submits that many companies use the name in the real estate industry in Europe and in Italy alone, 52 operate in residential management, 141 in residential construction and 127 in the real estate category. The Respondent submits that many of these companies have been operating in the real estate industry prior to the Complainant commencing business and that as a consequence the name is so generic and widely used that the only possible inference is that the Complainant brought this Complaint in bad faith in order to acquire the Disputed Domain Name.
The Respondent submits that the Disputed Domain Name has only been registered and used in good faith. Since registration it has been used for email addresses and was registered in anticipation of his sister building her own website. In the meantime the Respondent says that it has been parked with SEDO and used by the GOOGLE Adsense system to link to sites for jewellery related products, hotels and holidays and he has no control over the way in which the Adsense system brings up other websites, whether relating to real estate or otherwise and relies in particular on the analysis of the way of this system by the panel in Mariah Media Inc. v. First Place Internet Inc., WIPO Case No. D2006-1275. The Respondent further says that up until the time that he received a request to transfer the Disputed Domain Name from the Complainant, he was not aware of any links to real estate sites and surmises as to whether or not the Disputed Domain Name was only linked to real estate sites in the Adsense system after this time and
whether as a consequence of the Complainant’s or of a third party’s actions. The Respondent further submits that had he wanted to aim at German based consumers he would have registered a <.de> domain name and the fact that German consumers are presented with a site translated in German is merely a function of the way in which the site adapts for consumers from differing states and thus, for example, French consumers are presented with a website in French.
The Respondent insists that he was not aware of the Complainant at the time of his registration of the Disputed Domain Name and that based on an analysis of the Complainant’s website, it is apparent that the Complainant’s property portfolio is German based, that the Complainant operates in Germany and that there is no chance that he would have been aware of the Complainant having been based in France.
The Respondent says that he has never offered the Disputed Domain Name for sale, nor has he sought to change his details or website, apart from working with Sedo to try and ensure that real estate advertisements were not triggered by the Disputed Domain Name.
Finally, the Respondent says that this is a case of reverse domain name hijacking and that the Complainant simply wants to obtain the Disputed Domain name in place of its current obscure <patrizia.ag> domain name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns a combined word and device Community Trade Mark registration 0821629 including the word mark PATRIZIA dating from November 30, 1999 and an International Registration for a combined word and device mark incorporating PATRIZIA under number 1042179 dating from May 14, 2010. Although the word mark PATRIZIA is a significant element of these combined word and device marks, it does not necessarily follow, based on previous panel decisions, that either of these combined marks will support trade mark rights in the word PATRIZIA. However, for the reasons set out below, the Panel need make no determination on this issue.
The Complainant has provided evidence that since 1984 it has operated a very substantial real estate management business based in Germany, involving the management of a very considerable value of real estate assets and which is operated under the corporate name Patrizia Immobilien AG and from a website at the domain name <Patrizia.ag>. Additionally, the Complainant has provided evidence that it has generally traded under the PATRIZIA name and mark, which is further reinforced by its trade mark registrations dating from as early as 1998 which feature the word mark PATRIZIA. Accordingly, the Panel is satisfied that in this case the Complainant has demonstrated sufficient usage in trade of its PATRIZIA name and mark such as will support its claim to trade mark rights in the PATRIZIA name and mark for the purposes of the Policy.
The Panel finds that the substantive element of the Disputed Domain Name, “patrizia” is identical to the Complainant’s PATRIZIA name and trade mark.
As a result the Complaint succeeds in relation to the first element of the Policy.
B. Rights or Legitimate Interests
The onus is upon the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this case.
The Complainant submits that the Respondent does not operate a business under the PATRIZIA mark and does not own any registered trade mark rights in respect of this mark. The Complainant says that it has not authorised the Respondent’s use of the mark and has no affiliation with the Respondent. The Disputed Domain Name resolves to the Respondent’s website which features links to a range of advertisers including some in the real estate business and as a result the Complainant submits that it has made out a prima facie case that the Respondent has no legitimate rights or interests in the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case under this element of the Policy but that for the reasons set out below in its discussion concerning bad faith, the Respondent has successfully rebutted the Complainant’s case, in that the Panel finds that the Respondent did not register the Disputed Domain name in bad faith and therefore it has not been demonstrated that the Respondent has “no rights or legitimate interests” in the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Policy requires that the Respondent must have been shown to have both registered and used the Disputed Domain Name in bad faith. The Panel finds that on balance the Complainant has not succeeded in its case that the registration was made in bad faith.
The Respondent has submitted that it acquired the Disputed Domain Name at auction in 2003 for the purpose of a website for his sister in law, Patricia, who goes by the nickname Patrizia and has submitted evidence of Patricia’s identity and of his relationship to her. He says that as he does not operate in the real estate business, at the time of registration he had no knowledge of the Complainant’s business activities and it would be surprising in any event if he had been aware of the Complainant’s real estate management activities as even after many years of growth in the business, the assets under management appear to still be based in Germany. He submits that the name Patrizia is very commonly used by businesses as a trading or corporate name and is used in numerous domain names and many of the entities that use the name or mark Patrizia are to be found in the real estate sector.
The Panel finds that the name or mark Patrizia does appear to be in common usage, including within the real estate sector and that many businesses operate domain names which feature Patrizia. There is no evidence to suggest that the Respondent sought to sell the Disputed Domain Name to the Complainant during the seven years prior to the first approach by the Complainant, nor is there anything to suggest that the Respondent operates in competition with the Complainant or that the Respondent’s activity in any way satisfies the requirements of any of the categories of case set out under paragraph 4(b) of the Policy. The Panel notes its finding that the examples of the Respondent’s past activity in the domain name field as provided in the Respondent’s additional submission are inconclusive of a pattern of past conduct of the nature suggested by the Complainant.
On balance, there is in the Panel’s view insufficient evidence to support an inference that the Respondent registered the Disputed Domain Name in bad faith and as a result, the Complaint fails in relation to third element of the Policy. The Panel notes that although the Complainant took seven years to bring this Complaint, there may have been valid reasons for this delay and it does not consider that this case warrants a finding of reverse domain name hijacking as submitted by the Respondent.
For all the foregoing reasons, the Complaint is denied.
David E. Sorkin
Dated: December 8, 2010