Rehau AG + Co. v.
Claim Number: FA0807001217118
Complainant is Rehau AG + Co. (“Complainant”), represented by Jacob
H Rooksby, of McGuireWoods LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rahau.com>, registered with Compana, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 25, 2008.
On July 25, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <rahau.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 18, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete August 18, 2008.
On September 2, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rahau.com> domain name, the domain name at issue, is confusingly similar to Complainant’s REHAU mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent makes the following assertions:
1. Respondent denies that the domain name is identical or confusingly similar to a mark in which Complainant has exclusive rights and asserts that the domain name at issue is composed of generic terms.
2. Respondent claims rights and legitimate interests in the domain name at issue.
3. Respondent denies that it has registered or used the domain name at issue in bad faith.
Complainant has rights in the REHAU mark (Reg. No. 814,217 issued Sept. 6, 1966) through its registration of the mark with the United States Patent and Trademark Office (“USPTO”), as well as other governmental authorities worldwide. The REHAU mark has been continuously used in commerce since 1964 in connection with semi-finished products made of plastics in the form of profiles and form pieces for the automotive, furniture, medical, electrical, textile, road construction and civil engineering industries.
Complainant has never given permission in any form for Respondent to use the REHAU mark in any way and there is no evidence that Respondent is commonly known by that mark or by the domain name at issue. Respondent registered the <rahau.com> domain on February 4, 2005 and uses the website resolving to the domain name to generate “pay per click” revenue with respect to products which Complainant (without specification or proof) alleges are competitive with its own. Complainant does not explain why it has taken more than three years to bring this proceeding to resolve this alleged harmful confusion between REHAU and the website resolving at <rahau.com>.
Respondent does not deny that Complainant has enforceable rights in the REHAU mark. However, it asserts that the word “rahau” is generic and that the domain name at issue is comprised of common, descriptive terms and, as such, cannot be found to be confusingly similar to Complainant’s mark which is, of course, spelled differently. For example, Respondent notes that the word “rahau” is a common surname and first name, a Romanian town, and the Sikh word for “pause.” Further, Respondent contends that the operation of a click-through website constitutes a bona fide offering of goods or services under Policy ¶ 4(c)(i). Although Respondent says that it is not responsible for all of the content on its site as it contracts with a third party for such content, the Panel finds that Respondent is responsible for such content.
There is no evidence that Respondent has any rights in Complainant’s REHAU mark. Similarly, there is no evidence that Respondent has no rights or legitimate interests in the domain name at issue or that Respondent registered or has used the domain name at issue in bad faith. Obviously, REHAU and “rahau” are not identical in spelling, but the words differ by only a single letter. Complainant asserts that Respondent is in the business of purchasing domain names that are typographical misspellings of famous marks.
Paragraph 15(a) of the Rules for Uniform
Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Registration and Use in Bad Faith
Complainant’s mark, REHAU, is not identical to the <rahau.com> domain name at issue and there is no evidence, by affidavit or otherwise, that the domain is confusingly similar to Complainant’s admittedly protected mark other than that the two words differ by a single letter. There is no evidence of actual confusion of the public by affidavit or other evidence. When faced with a disputed domain name that differs by one letter from a mark, however, some previous panels have found confusing similarity. See Vivendi Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct. 31, 2003) (“Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is phonetically identical and confusingly similar to Complainant's mark.”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the to be heightened when the mark is highly distinctive); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). It is not necessary, however, for the Panel to make a finding as to “confusingly similar” and Policy ¶ 4(a)(i) in this case, because there is no proof offered sufficient to satisfy the Panel as to the third element of the Policy.
Unlike Policy ¶ 4(a)(i), which focuses on Complainant’s mark and the confusing similarity of the disputed domain name, Policy ¶ 4(a)(iii) addresses Respondent’s use of the disputed domain name. In this case, the disputed domain name is comprised of a generic term, not merely of Complainant’s mark, and Respondent’s use is justified. See Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (“A respondent does not register or use a disputed domain name in bad faith if the terms of a complainant’s mark are of common usage and the respondent operates a business that could reasonably be marketed under the disputed domain name.”); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (“As to both registration and use, the generic nature of the disputed domain name itself rebuts any allegation by Complainant that Respondent registered or used the disputed domain name in bad faith.”). Thus, Respondent can fairly use the confusingly similar disputed domain name under Policy ¶ 4(a)(iii). In this case, the Panel finds that Complainant and Respondent are using two similar marks for two different purposes, and that each of those uses are legitimate. The Panel finds that Respondent’s registration and use of the disputed domain name was not in bad faith pursuant to Policy ¶ 4(a)(iii). See Thru, L.L.C. v. Okada, FA 849145 (Nat. Arb. Forum Dec. 28, 2006) (“Nor can it be said that Respondent is using the domain name in bad faith since, as noted above, the term “thru” is extremely common and Respondent has the right to use this common term in its business venture.”); see also Paigen v. Research & Design, FA 791739 (Nat. Arb. Forum Oct. 25, 2006) (finding no bad faith registration and use of the <chaco.com> domain name where the respondent registered it to provide information on the “Chaco Canyon” and Internet users did not exclusively associate the CHACO mark with the complainant).
Since the Complainant has failed to satisfy the third element of the Policy, it is not necessary for the Panel to make findings as to the other two. Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA 1106470 (Nat. Arb. Forum Jan. 8, 2008) (finding it unnecessary to examine all three elements of the Policy once shown that the complainant could not satisfy one element); Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (deciding not to inquire into the remaining elements of the Policy where the complainant had failed to meet its burden for one).
The Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dated: September 24, 2008
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