WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd.
Case No. D2006-0762
1. The Parties
The Complainant is Rohde & Schwarz GmbH & Co. KG, Munich, Germany, represented by Mitscherlich & Partner, Germany.
The Respondent is Pertshire Marketing, Ltd., Road Town, Tortola, Virgin Islands (British), United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrars
The disputed domain names and are registered with BelgiumDomains, LLC and DomainDoorman, LLC, respectively.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2006. On June 19, 2006, the Center transmitted by email to BelgiumDomains, LLC and DomainDoorman, LLC a request for registrar verification in connection with the domain names at issue. On June 20, 2006, BelgiumDomains,�LLC and DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 on June 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July�18,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2006.
The Center appointed James A. Barker as the sole panelist in this matter on August�7,�2006. The Panel finds that it was properly constituted. 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 non-contested facts are essentially those provided by the Complainant, as no Response was filed. Those facts are as follows.
The Complainant is a leading supplier of solutions in the fields of test and measurement, broadcasting, radio monitoring and radio location as well as mission-critical radio communications. Established more than 70 years ago, the Complainant has a global presence and a dedicated service network in over 70 countries all over the world.
The Complainant is the owner of 22 national, international and European trademarks respectively, each depicting and including respectively the sign “ROHDE & SCHWARZ”. These trademarks are mainly registered for electric and electronic measuring, signaling, checking and testing apparatus and instruments. Evidence of the Complainant’s trademarks was attached to the Complaint.
“ROHDE & SCHWARZ” is also the well-known company name of the Complainant, composed of the family names of the two company founders Dr. Lothar Rohde and Dr.�Hermann Schwarz.
The Complainant is the registered holder of a large number of domain names incorporating its trademark, in various country codes.
5. Parties’ Contentions
A. Complainant
The following is summarised from the Complaint.
Identical or confusingly similar
Both the disputed domain names are confusingly similar to the Complainant’s mark, “ROHDE & SCHWARZ”. The domain name is confusingly similar since only the “c” of the second word element “SCHWARZ” of the Complainant’s company name is missing. This, however, can easily be ignored by the public. The fact that the sign “&” between the two name elements “ROHDE” and “SCHWARZ” is replaced by a hyphen does not exclude the confusing similarity to the Complainant’s mark, because it is well-known practice to replace name elements like “and” or “&” by a hyphen when using the respective name as a second level domain name.
As far as the disputed domain name is concerned, it is confusingly similar since only the “h” of the second word element “SCHWARZ” of the Complainant’s mark is missing. This, however, can easily be ignored by the public. The fact that the sign “&” between “ROHDE” and “SCHWARZ” is replaced in by a hyphen does not lessen the confusion.
Rights or legitimate interests
The Respondent is neither a licensee nor in any other way authorized to use the Complainant’s rights. There is no evidence that the Respondent has used “ROHDE & SCHWARZ” in connection with a bona fide offering of goods or services before the Complainant did so. There is no evidence that the Respondent is known by the second level domain name or by the public. Instead, the respective domain holder appears in business under the name “Pertshire Marketing, Ltd”.
Bad faith
Both the disputed domain names are used in connection with the sale of second hand electronic apparatus manufactured by the Complainant. Consequently, the Respondent has used the disputed domain names intentionally to attract, for commercial gain, Internet users to its website and other online locations respectively, by creating a likelihood of confusion with the Complainant’s trademarks, company name and its websites respectively.
Additionally, the Respondent registered the domain names at speech primarily for the purpose of disrupting the business of the Complainant as its competitor. Consequently, both the disputed domain names have been registered and used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, paragraphs 4(a)(i)-(iii), for the Complainant to succeed and have the disputed domain names transferred to it, the Complainant must prove that:
- the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain names; and
- the domain names were registered and are being used in bad faith.
Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed as follows.
A. Identical or Confusingly Similar
There is no dispute that the Complainant has rights in the trademark ROHDE & SCHWARZ (and other marks related to that one).
The disputed domain names are not identical to the Complainant’s mark. However, the Panel finds that they are confusingly similar.
It is well-established that the “.com” extension should be disregarded for determining confusing similarity. Disregarding that extension, the disputed domain names are only materially different because they incorporates a hyphen, rather than a “&”, and do not include a “c” or an “h” respectively. The disputed domain names are otherwise phonetically and visually highly similar to the Complainant’s mark.
The differences between the disputed domain names and the Complainant’s mark are clearly trivial. Trivial differences will naturally create confusing similarity.
This case is highly similar to others under the Policy, where trivial misspellings of a company’s name were found to create confusing similarity. (See e.g. Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728 which involved trademark “Bang & Olufsen”. That trademark is similar to that in this case: involving a mark incorporating two names separated by “&”. Like in this case, the differences between the mark and disputed domain names involved the substitution of “&” with a hyphen, in addition to a difference of only one letter. The Panel in the Bang & Olufsen case found that the domain names then in dispute were confusingly similar to the then complainant’s mark.) Trivial misspellings by nature create confusion with the marks that they misspell.
B. Rights or Legitimate Interests
The Complainant argues that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(c) of the Policy. Having established an argument against the Respondent, it is well-established that the burden shifts to the Respondent to rebut that argument.
The Respondent filed no Response. There has been no other communications from the Respondent in connection with this case. There is nothing in the nature of the website to which the disputed domain names revert that suggests that the Respondent might have a right or legitimate interest in the disputed domain names themselves. Without a Response, there is nothing else in the case file that indicates that the Respondent has such rights or legitimate interests.
As such, the Respondent has not established a right or legitimate interest in the disputed domain names. Neither is there any other evidence, from all the circumstances of this case, that points to any right or legitimate interest of the Respondent.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides (in part) that there is evidence of bad faith registration and use where, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
There is clear evidence of the Respondent’s bad faith for the purpose of this paragraph of the Policy.
As indicated in the Complaint, the disputed domain names revert to a website which provides links to websites offering the Complainant’s products for sale. The Complaint provides no statement or explanation about what commercial gain the Respondent is obtaining from those websites. But the Respondent has obviously linked a series of websites which operate commercially: the sites offer goods for sale. Without contrary evidence from the Respondent, this context suggests that the Respondent must be obtaining, or attempting to obtain, some commercial gain.
The context also indicates that the Respondent was aware of the Complainant’s mark. As noted above, the Respondent has registered domain names that are confusingly similar to the Complainant’s mark.
The registration of two such domain names, which are both similar, is an unlikely coincidence. Multiple misspellings of trademarks have, in other cases under the Policy, been found to demonstrate bad faith (since the registration of more than one such misspelling, itself indicates an intention to create confusion with the misspelled mark). In this connection, see Bang & Olufsen a/s v. Unasi Inc., WIPO Case No. D2005-0728, cited above, and also Playboy Enterprises v. Movie Name Company, WIPO�Case�No.�D2001-1201.
The disputed domain names also divert to a website which links to others offering the Complainant’s products for sale. This clearly suggests that the Respondent was aware of the Complainant and its business, and sought to divert Internet users.
For these reasons, the Panel finds that the disputed domain names were registered, and are being been used, in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, and , be transferred to the Complainant.
James A. Barker
Sole Panelist
Dated: August 21, 2006
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