WIPO Arbitration and Mediation Center

The Complainant is von Rundstedt & Partner GmbH, Königsallee 70-72, D – 40212 Düsseldorf and is represented by Cohausz, Hannig, Dawidowicz & Partner, Schumannstr. 97-99, D 40237 Düsseldorf, Germany.

The Respondent is Mario Koch, Effnerstr. 1e, D 85049 Ingolstadt, Germany.

The Domain Name at issue is <rundstedt.com>. The Registrar is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia, USA.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) which received hardcopies on September 18, 2001, and, on request, received the electronic copy on September 25, 2001. The Center acknowledged the receipt of the Complaint on September 19, 2001.

On September 24, 2001, the Center sent to NSI a Request for Verification of registration data. On September 25, 2001, NSI confirmed to be the Registrar, that Mario Koch is the Registrant, as well as the administrative and billing contact of the domain name <rundstedt.com>, that the technical contact is Domain Registration, Burlington, MA 01803, USA and that the domain name registration is in active status.

The Center verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied this is the case.

On September 26, 2001, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced.

On October 18, 2001, the Center sent to the Respondent a Notification of Respondent Default. On the same day, the Respondent sent a belated communication to the Center, which essentially was a repetition of a communication, which he had sent to the Center already on September 18, 2001 (when he apparently had received a copy of the Complaint).

On October 29, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.

No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel’s decision is November 12, 2001.

The Complainant was founded in 1985 and is, according to the Complaint, a leading management consultancy company with 9 offices in Germany. It uses the company logo von Rundstedt und Partners ("von Rundstedt" in larger script, and below in smaller script "UND PARTNERS"), including the distinctive name "Rundstedt", in its advertising, company stationary, publications, publicity materials and on its website, accessible under <rundstedt.de>. The Complainant submits to be also internationally active through cooperation with DBM, the world’s largest outplacement consultancy and MPS S.A., an international leading firm of Personnel-Management Consultants.

Eberhard von Rundstedt, managing partner ("vorsitzender Geschäftsführer") of the Complainant, is the owner of a registration for the word mark "Rundstedt" in Germany for services in classes 35, 38 and 41. The mark (the term "mark" is used in the following as including trademarks and service marks) was applied for registration on August 22, 2000, and was registered, under the number 300 63 018, on April 6, 2001.

These facts are evidenced by the attachments to the Complaint and, in the absence of any submission of the Respondent to the contrary the Panelist is satisfied that the documents submitted by the Complainant are truthfully reflecting the factual circumstances of the case.

The Respondent registered on June 11, 2000, the domain name <rundstedt.com> with NSI.

The Complainant submits that (1) the domain name <rundstedt.com> is identical or confusingly similar to a mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.

The Respondent submits in a belated correspondence that his domain name was registered before the registration of the mark "Rundstedt" of Eberhard von Rundstedt. Since this fact is self-evident, the Panelist admits this submission. The Panelist also takes into consideration that the belated communication of the Respondent is nearly identical with a communication which he sent by e-mail to the Center on September 18, 2001, probably the day at which he received a copy of the Complaint from the Complainant. The Panelist does not wish to ignore a communication of the Respondent only because he sent it before the Center requested the submission of a Response (the more so as, on September 24, 2001, the Respondent referred once more to that communication).

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name be transferred to the Complainant:

1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and

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.

1) Identity or Confusing similarity with a mark in which the Complainant has rights

The mark "Rundstedt" is registered in the name of Eberhard von Rundstedt and not in the name of the Complainant. The Complainant has not submitted that it has the right to use that mark. However, since Eberhard von Rundstedt is the managing partner ("vorsitzender Geschäftsführer") of the Complainant, the Panelist assumes that he has authorized the Complainant to submit the present Complaint and that the Complainant has the right to use the registered mark "Rundstedt" (both the Complaint and the registration of the mark "Rundstedt" were filed by the same representatives).

The domain name <rundstedt.com> is identical to the word mark "Rundstedt. The generic top level domain indicator ".com", cannot be taken into consideration when judging identity or confusing similarity. In view of this identity, the question of confusing similarity does not arise and the Panelist needs not to consider for which activities the Respondent uses or intends to use that domain name.

In conclusion, the Panelist is satisfied that the domain name <rundstedt.com> is identical to a mark in which the Complainant has rights.

The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name. The Respondent has not submitted that he has been authorized to use the name "Rundstedt" by some other person bearing that name or having rights in that name. Furthermore, the Respondent does not submit that he makes any legitimate use of the website in connection with a bona fide offering of goods or services. The Respondent even submits that he does not offer any goods or services at the website <rundsted.com>. Also, the Respondent does not claim that it has been commonly known by the domain name. Finally, Respondent does not submit that he makes a legitimate noncommercial or fair use of the domain name. He only submits that he registered the domain name because he found it in a list of recently deleted domains.

There are, therefore, strong indications that the Respondent has no rights or legitimate interests in the domain name <rundstedt.com>. However, the Panelist does not see a need to arrive at a final conclusion, since the Complainant has failed to prove that the Respondent registered the domain name in bad faith:

For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith.

As evidenced by the attachments to the Complaint, the Respondent registered the domain name <rundstedt.com> on June 11, 2000. At this time the Complainant had no rights in a registered mark. The service mark "Rundstedt" has been registered in the name of Eberhard von Rundstedt on April 6, 2001, with the priority of its application date of August 22, 2000. Both dates are later than the registration date of the domain name <rundstedt.com>. Since there existed no service mark registration and no application for registration of the mark "Rundstedt" at the time of registration of that domain name, the Respondent cannot have registered a domain name which is identical or confusingly similar to such mark in which the Complainant has rights. As a consequence, he cannot, with respect to Complainant’s service mark registration "Rundstedt", have acted in bad faith as requested under the Policy, when he registered this domain name.

To avoid any misunderstanding: The Panelist does not assume that the registration of the domain name <rundstedt.com> created an industrial property right for the Respondent which would enjoy priority over the later service mark registration of the Complainant. However, under the Policy the question to be answered is not whether the Respondent’s registration and use of the domain name <rundstedt.com> infringes trademark rights of the Complainant. The question is, whether the Respondent acted in bad faith, when registering that domain name (and, if yes, whether he is still using that domain name in bad faith).

The Complainant bases its Complaint not only on the registered service mark "Rundstedt", but also on its rights in the corporate name, whose characterizing part is "Rundstedt" and under which name, according to the Complaint, the Complainant is commonly known. It is true that a trade name (understood in the large sense of comprising any sign which is identifying an enterprise, as opposed to a mark which is a sign that identifies goods or services as those of a given enterprise) is protected, under Articles 5 and 15 of the German Trade Mark Law, against infringement. However, under the Policy, the domain name registration can only be challenged if it is infringing rights of the Complainant in a mark (trademark or service mark). Trade names and personal names are not protected under the Policy (it is under discussion, whether they may be submitted to the Policy at a later date, however, they are clearly not covered by the Policy at present).

At first glance this conclusion seems to contradict decisions which have been handed down under the Policy, where names, in particular personal names of celebrities, were protected against bad faith registration of an identical domain name (WIPO Case No. D2000-0235 Jeanette Winterson v. Mark Hogarth; WIPO Case No. D2000-0210 Julia Roberts v. Russell Boyd). However, these decisions were based on evidence that the Complainant had acquired common law trademark rights in its name.

The Panelist agrees with the Complainant that German trademark law is applicable, however, only as concerns the question whether the Complainant has a right in a mark. The application of German Trademark Law cannot lead to trade name (business identifier) protection under the Policy only because that kind of protection now is part of the present German Trademark Law (and not of the Unfair Competition Law, as this was the case under former German legislation).

Since German Trademark Law is considered to be applicable for the question whether the Complainant has rights in a mark, the Complainant could have based his Complaint on another legal ground for acquiring rights in a mark, since under German Trademark Law (Art. 4, No 2) it is possible to acquire rights in unregistered trademarks or service marks (if a sign has become distinctive, for the goods or services offered under that sign, through use, it is protected as a mark as if it were registered). However, the Complainant has even not argued that he had acquired rights in an unregistered mark "Rundstedt" or any other unregistered mark containing the term "Rundstedt" as element. Clearly it has not submitted any evidence for the existence of such rights. The simple submission in the introduction to the Complaint (before entering into the discussion of the legal grounds on which the Complaint is based) that the Complainant is one of the leading HR consultancy companies with 9 offices in Germany, without any reference to a right of the Complainant in a possible unregistered service mark according to Article 4 of the German Trademark Law, and without any evidence of having acquired such right in the word "Rundstedt" or in the company logo "von Rundstedt und Partner", is not sufficient to conclude that the Complainant has rights in such an unregistered mark. The same is true for the submission that the Complainant is commonly known under the name Rundstedt. To succeed under the Policy, the Complainant would have had to submit that the services offered by the Complainant under the mark "Rundstedt" are commonly known to be services emanating from the Complainant.

Furthermore, the Complainant has not submitted any argument or evidence that the Respondent was aware of the (name respectively unregistered) mark of the Complainant when he registered the domain name <rundstedt.com> (the Respondent submitted to have registered the domain name because he found it in a list of recently deleted domains).

The fact that the Respondent offers the domain name <rundstedt.com> for sale (as evidenced by Annex 7 to the Complaint) does not, as such, under the circumstances of the case, constitute registration and use in bad faith. Also the reference to another case in which the Respondent was ordered to transfer the domain name at issue to the Complainant cannot help the Complainant to succeed with the present Complaint (the more as in that case the Respondent apparently was aware of established rights of the Complainant when registering the corresponding domain name). The present case has more similarities to the WIPO Case No. D2000-0005, Telaxis Communications Corp. v. William E. Minkle. In that case, the Panelist also denied registration in bad faith because the Complainant had no trademark rights when the Respondent registered the confusingly similar domain name and denied the request to cancel or transfer that domain name, despite the fact that the Panelist in that case arrived at the conclusion that the Respondent had – after registration – used the domain name in bad faith.

In conclusion, the Complainant has failed to prove that the Respondent registered the domain name <rundstedt.com> in bad faith. The Panelist therefore does not enter into a discussion whether the Respondent is using that domain name in bad faith.

The Panel decides that the Complainant has not proven that the domain name <rundstedt.com> has been registered and is being used by the Respondent in bad faith. The request of the Complainant to grant the transfer the domain name in dispute to the Complainant is therefore denied.

Dr. Gerd F. Kunze
Sole Panelist

Dated: November 7, 2001