WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rentsch Partner AG v. Domain Hostmaster, Whois Privacy Services Pty Ltd., Customer ID_ 78529104178955 / Stanley Pace
Case No. D2015-2302
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.
2. The Domain Name and Registrar
The disputed domain name <rentsch.com> (the "Disputed Domain Name") is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 17, 2015. On December 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 21, 2015, the Registrar 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 December 28, 2015 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 December 31, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2016. The Response was filed with the Center on January 24, 2016.
The Center appointed Gabriela Kennedy, Tobias Zuberbühler and Tony Willoughby as Panelists in this matter on February 23, 2016. 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.
4. Factual Background
The Complainant is Rentsch Partner AG, a Swiss patent attorney and law firm based in Zurich. The Complainant was established in 2001 as a collective partnership named Rentsch & Partner, and Mr. Rudolf Rentsch was a founding member. The Complainant first obtained a Swiss trademark registration for RENTSCH PARTNER in March 2011 (registration no. 619385) and subsequently obtained an international trademark registration for RENTSCH PARTNER under the Madrid System in September 2011 (registration no. 1100951). The Complainant is also the registrant of the domain names <rentschpartner.ch> and <rentschpartner.com>.
The Respondent is in the business of acquiring and using for business purposes family names when they become available. The Respondent registered the Disputed Domain Name on November 8, 2011.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows:
A. The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
(a) The "Rentsch" element clearly dominates the overall impression of the trademark RENTSCH PARTNER. As the first element of the trademark it is more likely to be remembered by the relevant public since the average person is believed to focus on the beginning of a trademark rather than its ending. The focus on RENTSCH is further emphasized by the second element PARTNER being merely descriptive and commonly used to indicate law firm structures.
(b) The Disputed Domain Name consists of only "rentsch", hence corresponds to the RENTSCH of the Complainant's RENTSCH PARTNER trademark as well as the Complainant's company name and is identical to the characteristics of the founder's family name. As a consequence, this overlap results in a high likelihood of confusion. It would only be natural for the relevant public to assume that the website at the Disputed Domain Name belongs to or is somehow linked with the Complainant, especially since the Complainant has been offering services under its RENTSCH PARTNER trademark for almost 15 years, operating its homepage under the respective "rentschpartner" domain names.
B. The Respondent has no rights or legitimate interests in respect of the Dispute Domain Name.
(c) The Disputed Domain Name was created on October 1, 1996. A snapshot from January 1, 1998 indicates that the Disputed Domain Name was created by a "member of the AMCOR Group", which the Complainant believes refers to a company formerly known as RIG Rentsch Industry Holding AG, which changed its name to Amcor Switzerland Holdings GmbH in November 2009. At some point between January 1, 1998 and 2013 the Disputed Domain Name appears to have been transferred to the Swiss company Rentsch AG.
(d) By October 2013, the Disputed Domain Name was placed on the market for sale and the Complainant received notice of this sale. The Complainant tried to purchase the Disputed Domain Name, but the Disputed Domain Name was grabbed by the Respondent and parked with Sedo. The Complainant made several offers of USD250 to purchase the Disputed Domain Name in January 2014 but received no replies from the Respondent until July 2014, when the Respondent counter-offered to sell the Disputed Domain Name for USD88,888. The Complainant made a new offer of USD 400 in September 2015 to purchase the Disputed Domain Name but did not receive any response from the Respondent.
(e) To the best of the Complainant's knowledge, the Respondent has no rights with respect to the Disputed Domain Name. The Disputed Domain Name is parked with Sedo, a domain name parking service provider. It is obvious that the Respondent's sole purpose of registering the Disputed Domain Name is to generate advertising revenue and ideally force the Complainant to pay a high price to purchase the Disputed Domain Name.
C. The Disputed Domain Name was registered and is being used in bad faith
(f) The Disputed Domain Name is not being used in connection with the offering of goods or services but has instead been parked with the domain name parking provider Sedo right after it was purchased.
(g) In light of the Complainant's clear and specified rights in the sign/name "Rentsch" and taking into account the fact that the Respondent offers its services worldwide, the Complainant has a particular and legitimate interest in the Disputed Domain Name. The Respondent's actions deliberately prevent the Complainant from using the Disputed Domain Name.
The Respondent's contentions can be summarized as follows:
(a) The Respondent is in the business of acquiring and using for business purposes family names when they become available. The Respondent registered the Disputed Domain Name on November 8, 2011 for his generic domain name brokerage business and had no knowledge of the Complainant. The Respondent has not acquired the Disputed Domain Name to sell it to the Complainant, or anyone else for that matter.
(b) The Respondent has continuously parked the Disputed Domain Name with a reputable aggregator, Sedo, which puts links up to related referenced sites. All of the links on the sedo parked page for the Disputed Domain Name relate to job market places. Contrary to the Complainant's statements, the majority of UDRP decisions have held that "parking" domains with legitimate monetization companies is a legitimate business use.
(c) Rentsch is a common surname in Germany and Eastern Europe but is also used in the United States and Canada. It is ironic that the Complainant states that its company's founder's name is Rentsch, a family surname.
(d) A Google search of the word "rentsch" reveals domain names such as <rentsch.cz>, <rentsch-ag.ch>, <rentsch.ch>, <soniarentsch.com>, <rentschphotography.com>, <sauter-rentsch.com>, <alexanderrentsch.com>, <familierentsch.ch>, and <andreasrentsch.com>, none of which are related to the Complainant or the Respondent.
(e) The Respondent had no actual knowledge of the Complainant's RENTSCH PARTNER mark at the time that he registered the Disputed Domain Name and the Complainant has provided no evidence that the trademark was well-known outside of Eastern Europe at the time that the Respondent registered the Disputed Domain Name in the United States or for that matter, at any time since. Less than 60 days had passed from the time of registration of the mark by the Complainant to the registration of the Disputed Domain Name by the Respondent and the Complainant provided no evidence of the mark being famous outside (or even inside) the Eastern European community.
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 <rentsch.com> is confusingly similar to RENTSCH PARTNER. It is a well-established rule that in making an enquiry as to whether a domain name is identical or confusingly similar to a trade mark, the generic top-level domain extension ("gTLD"), in this case ".com", may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
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