The Complainant is RB-Net Romain Bürkle GmbH & Co. KG, Germany, represented by Raible Deissler Lehmann, Germany.
The Respondent is DNS Administrator, nTelos Network, Inc., United States of America (“United States”), represented by Segra, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2020. On October 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 14, 2020, 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 October 19, 2020, 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 amended Complaint on October 22, 2020. The Center verified that the Complaint together with the amended 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 November 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2020. The Response was filed with the Center on November 19, 2020. On November 24, 2020, the Complainant submitted a request for suspension. On the same day, the proceeding was suspended by the Center until December 24, 2020. On December 30, 2020, the Complainant submitted a supplemental filing in response to which the Respondent also submitted a supplemental filing on January 7, 2021. On January 19, 2021, the Complainant requested for the proceeding to be reinstituted. The Center reinstituted the proceeding on January 20, 2021, and notified to the Parties that it was proceeding to panel appointment. The Center appointed John Swinson as the sole panelist in this matter on January 27, 2021. 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 Complainant is RB-Net Romain Bürkle GmbH & Co. KG, a German corporation. Very little information on the Complainant and its business was provided in the Complaint. The Complainant is the owner of two registered trade marks for , including German registered trade mark no. DE302013025322, which was registered on July 17, 2013 (“Trade Mark”). The Complainant is also the owner of a domain name incorporating the Trade Mark, being The Respondent is named in the Complaint as nTelos Network, Inc. This is consistent with the notice of registrant information provided by the Registar. The Response has been filed under the name “Lumos Networks Inc. (fka nTelos Network, Inc.)”. It appears that the Respondent is the same entity as the registrant, and that there has been a change of name from nTelos Network, Inc to Lumos Networks Inc, although no documents were provided to demonstrate this. The Respondent is a telecommunications services provider in the United States. The Disputed Domain Name does not resolve to an active website. According to the Response, the Disputed Domain Name is used as an email platform for the Respondent’s customers. For the reasons discussed below, it is not clear from the Complaint or from the Response when the Respondent acquired the Disputed Domain Name. The Respondent indicates in its Response that the Disputed Domain Name was acquired in 2000, however, the Disputed Domain Name was originally registered on February 17, 1996. According to Wikipedia, “nTelos, Inc. was a wireless telecommunications company and PCS provider based in Waynesboro Virginia. … On August 10, 2015, it was announced that Shenandoah Telecommunications Company, or Shentel, had agreed to merge with nTelos. The deal, expected to close in early 2016, would see the nTelos brand replaced by Sprint through Shentel's affiliation with Sprint. All of nTelos retail stores, indirect locations (authorized agents), and some other employees would be rebranded under Sprint, with those locations managed through Shentel. On May 9, 2016, the merger with Shentel was completed.” 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions. Identical or Confusingly Similar The Disputed Domain Name fully consists of the textual components of the Trade Mark. The Trade Mark is easily recognisable in the Disputed Domain Name. Rights or Legitimate Interests According to the Complainant’s searches, the Disputed Domain Name has never been used in connection with a website offering goods or services, and has not been used for legitimate noncommercial or fair use. The Disputed Domain Name does not reflect the registrant company name “nTelos Network”. Registered and Used in Bad Faith The fact that the Disputed Domain Name has not been used for any legitimate interests since its registration indicates it was registered to prevent any owner of a similar trade mark from reflecting it in a corresponding domain name. The Respondent did not respond to any of the Complainant’s offers to transfer the Disputed Domain Name for reasonable consideration. B. Respondent The Respondent makes the following contentions. Identical or Confusingly Similar The Disputed Domain Name is not similar to the Trade Mark for at least two reasons. Firstly, because the Complainant’s services are sufficiently different from the Respondent’s services (being telecommunications equipment versus telecommunications services). Secondly, the Disputed Domain Name and the Trade Mark are sufficiently different. The presence of a dash in “RB-Net” materially changes the phonetic sound of the mark, the presence of a dash and capital letters “R”, “B”, and “N” in “rb-net” materially change the appearance of the mark and the Trade Mark is four syllables long, as compared to the Disputed Domain Name, which is typically five syllables long, always referred to in its entirety. Rights or Legitimate Interests The Respondent has rights and legitimate interests in the Disputed Domain Name for at least two reasons. Firstly, the Disputed Domain Name is being used for legitimate business purposes. The Disputed Domain Name was acquired by NTelos Corporation (“NTelos Corp”) in 2000 through the acquisition of Roanoke and Botetourt Telephone Company (“R&B”), in Virginia, United States. The Respondent subsequently acquired NTelos Corp. Prior to the NTelos Corp acquisition of R&B, the Disputed Domain Name was legitimately purchased by R&B in the latter part of the 1990s as its source of web based advertising and accommodation of its email customers. The Disputed Domain Name was then acquired as an integral part of the purchase of R&B by NTelos Corp. The Disputed Domain Name has been properly maintained since 2000, and the Disputed Domain Name remains active and in use to this day. When NTelos Corp acquired R&B, it continued to provide email services using the Disputed Domain Name as a customer satisfaction measure. Secondly, the Disputed Domain Name has been supported and used for the Respondent’s email customers for at least the last 20 years. Providing email services is a legitimate use of the Disputed Domain Name for the Respondent’s customers. The Respondent currently has over 446 actively registered email users operating under the Disputed Domain Name. Registered and Used in Bad Faith The Respondent did not register and use the Disputed Domain Name in bad faith. The Disputed Domain Name was acquired by NTelos Corp in 2000, and was registered long before that. This was at least 13 years prior to the Complainant’s trade mark rights. The Respondent was not aware of the Complainant’s existence at the time of purchase. Purchase of the Disputed Domain Name long before registration of Complainant’s Trade Mark mitigates the possibility that the Disputed Domain Name was purchased in an effort to prevent Complainant from acquiring it. The Respondent purchased the company that purchased the Disputed Domain Name in an effort to build its telecommunications business without any knowledge of the Complainant’s business activity. Under the GoDaddy Safe Harbor, the Respondent’s use of the Disputed Domain Name was a fair use and continues to be otherwise lawful. The Respondent and the Complainant operate in different markets and are not competitors. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (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 in bad faith. A. Procedural Issues – supplemental filings On December 30, 2020, the Complainant submitted a supplemental filing. On January 7, 2021, the Respondent also submitted a supplemental filing. Paragraph 10 of the Rules vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. There is no provision in the Rules for a party to file additional unsolicited submissions. Unsolicited supplemental filings are generally discouraged (see section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In this case, the Panel has decided to allow the supplemental filings given that the non-initiating party (the Respondent) had an opportunity to reply to the initiating party (the Complainant) and there is no prejudice to either party or material delay in the case. B. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognisable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the first element (section 1.7 of WIPO Overview 3.0). The Disputed Domain Name is identical to the textual elements of the Trade Mark, except that the Disputed Domain Name does not contain a hyphen between “rb” and “net”. The Panel considers the Disputed Domain Name to be confusingly similar to the Trade Mark. The Complainant is successful on the first element of the Policy. C. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lack rights or legitimate interests. In light of the Panel’s finding on bad faith, it is not necessary for the Panel to consider this element. D. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. Typically, the date on which the current registrant acquired the domain name is the relevant date for the panel to consider in assessing bad faith (see section 3.9 of WIPO Overview 3.0). To summarise what are very confusing submissions by the Respondent, it appears to the Panel that the Respondent, at some undisclosed point in time, acquired a company called NTelos Corp, that had previously (in 2000) acquired a company called “R&B”, who acquired the Disputed Domain Name some time in the 1990s. It seems to the Panel that NTelos Corp is not the same legal entity as the listed registrant of the Disputed Domain Name (which is nTelos Network, Inc) but is presumably related. It appears as though the listed registrant changed its name from nTelos Network, Inc to Lumos Networks Inc, presumably around the time the Respondent acquired NTelos Corp. While the Respondent claims that the Trade Mark was registered “long after” the Respondent acquired NTelos Corp and the Disputed Domain Name, the Respondent has given no indication of when this occurred. Accordingly, it is unclear to the Panel when the Respondent acquired the Disputed Domain Name for the purposes of determining bad faith under the Policy. It is curious (and frustrating) that the Respondent did not provide this information. In any event, in bringing this Complaint, the Complainant relies on trade mark rights it obtained in 2013. The Complainant has provided very little information about its business, and provided no evidence of its reputation. In particular, the Complainant has not provided any evidence that the Respondent should have been aware of the Complainant and/or the Trade Mark at the time it acquired the Disputed Domain Name. On that basis, the Panel finds that whenever the Disputed Domain Name was registered or acquired by the Respondent (i.e., in the 1990s or in 2000), this was not done by the Respondent with the Complainant in mind. Accordingly, there is no evidence of bad faith registration. The sole grounds upon which the Complainant relies for bad faith use is that the Disputed Domain Name is not being used, and possibly that the Respondent has rejected the Complainant’s reasonable offer to acquire the Disputed Domain Name. The Respondent reasonably states, but provides no evidence, that the Disputed Domain Name is being used for email services. If that is in fact the case, use in email address is use of the Disputed Domain Name. While the Respondent did not provide evidence of email accounts using the Disputed Domain Name, the Respondent’s explanation is credible. In respect of the Respondent’s rejection of the Complainant’s offers, the Respondent has provided a reasonable explanation of its reason for rejecting the offers based the costs that the Respondent would incur to convert its customers to alternative domains for their email accounts. The Panel finds that there is no evidence of bad faith use. The Complaint fails. 7. Decision For the foregoing reasons, the Complaint is denied. John Swinson
Sole Panelist
Date: February 10, 2021
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