DECISION

FRH Freies Rechenzentrum Heilberufe GmbH v. Ingenieurburo FRH Stuttgart

Claim Number: FA0112000102945

PARTIES

Complainant is FRH Freies Rechenzentrum Heilberufe, Leonberg, Germany (“Complainant”).  Respondent is Ingenieurburo FRH Stuttgart, Stuttgart, Germany (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <frh.biz>, registered with Schlund & Partner.

PANEL

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.

M. KELLY TILLERY, ESQUIRE AS PANELIST

PROCEDURAL HISTORY

Complainant has standing to file a STOP Complaint, as it previously filed an Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on December 13, 2001; the Forum received a hard copy of the Complaint on December 13, 2001.

On December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

A timely Response was received and determined to be complete on December 20, 2001.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to  Complainant.

PARTIES’ CONTENTIONS

A. COMPLAINANT

Complainant, by its authorized representative, Sabina Pezold, contends that it owns two (2) Trademark Registrations for “FRH” as follows:

Trademark Registry      Registration Number     Application Date           Registration Date

Deutschen Patent-und               39529884            20.07.1995                  26.04.1996

Markenamt*

Deutschen Patent-und               39973610            23.22.1999                  21.02.2000

Markenamt*

Complainant further contends that it registered the domain name <FRH.de> in 1996 and has used same continuously up until the present.  Complainant contends that it is a business and registered a claim for the domain name <FRH.biz> on August 7, 2001 only to discover that same was registered already by Respondent.  Complainant contends that the use of <FRH.biz> by Respondent will cause its customers to be confused.

B. RESPONDENT

Respondent contends that both Complainant and Respondent have rights in the mark “FRH” in that both have trademarks registered with the Deutschen Patent-und Markenamt. 

Respondent contends that Complainant has already registered and has long used the domain name <FRH.de> so that there is no need for Complainant to have a second top level domain name utilizing the mark “FRH.”

Respondent contends that it has no other top level domain name with only the letters “FRH” which letters are “a pseudonym for its company.”  Respondent contends that it has always used the domain name <FRH-expert.de> but that such has no direct connection with its name Ingenieurburo FRH.

Respondent contends that it owns a registered trademark for “FRH” registered with Deutschen Patent-und Markenamt #39937589 applied for on 29.06.1999 and registered on 20.10.1999.  Respondent contends that they are technical experts and therefore are in contact with many businesses so that they have a well-founded interest in this business domain name.

Respondent contends that it requested registration of <FRH.biz> on July 13, 2001, nearly one (1) month earlier than the request for same made by Complainant.

Respondent contends that it does not fear any confusion by there being companies having the domain names <FRH.de> (Complainant) and <FRH.biz> (Respondent) since Respondent contends that the domain names <FRH.com>, <FRH.org>, <FRH.net> and others are also not in use by either Complainant or Respondent and to the knowledge of Respondent no confusion has occurred by these uses.

FINDINGS

 (1) Complaint has not proven by a preponderance of the relevant, admissible and credible evidence that the domain name in question is identical to a trademark in which Complainant has rights.

(2) Complainant has not proven by a preponderance of the relevant, admissible and credible evidence that Respondent has no rights or legitimate interests in respect of the domain name.

(3) Complainant has not proven by a preponderance of the relevant, admissible and credible evidence that the domain name has been registered or is being used in bad faith.

DISCUSSION

Paragraph 15(a) of the STOP 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 STOP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

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

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Pursuant to the nature of STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding will involve a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence         of the “.biz” gTLD in the disputed domain name is not a factor for purposes of finding that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

COMPLAINANT’S RIGHTS IN THE MARK

Complainant contends that it owns two (2) registered trademarks for “FRH” registered with the German Patent and Trademark Office.  Although Respondent concedes that Complainant has rights in the “FRH” mark, Complainant’s marks are not identical to the domain name in question. Complainant’s registrations are not for “FRH” alone, but rather both are for stylized versions of the letters “FRH” accompanied by the name of the Complainant, “Fries Rechenzentrum Heilberufe.”  “FRH” is, however, the predominant feature of both marks.  Complainant has not met its burden to prove by a preponderance of the relevant, credible and admissible evidence that the domain name in question is identical to a trademark in which it has rights.

            RIGHTS OR LEGITIMATE INTERESTS

Complainant makes no argument and submits no evidence in support of its contention that Respondent has no rights or legitimate interests in respect of this domain name.  On the other hand, Respondent has presented evidence that it owns a trademark for “FRH” registered with the German Patent and Trademark Office.  Respondent’s registration is also not for “FRH” alone, but rather for a stylized version of the letters “FRH” printed sideways with “Ingenieurburo” in much smaller letters below and with three additional words written much smaller below that.  Those last words are not legible on the copy of the Registration Certificate provided by Respondent.  As with Complainant’s marks, “FRH” is, however, the predominant feature of Respondent’s mark and thus Respondent has at least some rights or legitimate interest in respect of a domain name consisting of the letters “FRH.”  Under these circumstances, Complainant has not met its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent has no rights or legitimate interests in respect to the domain name.

REGISTRATION OR USE IN BAD FAITH

Complainant has presented no argument and submits no evidence in support of its contention that Respondent has registered or is using the domain name in bad faith.  On the other hand, Respondent has presented evidence of its German Trademark Registration, alleged that it is in the business of providing experts to businesses and “FRH” is clearly a part of its name.  Complainant has presented neither argument nor evidence to contradict same.  Under these circumstances, Complainant has not met its burden to prove by a preponderance of the credible, relevant and admissible evidence that the domain name has been registered or is being used in bad faith.

DECISION

                  Complainant’s Complaint is hereby dismissed.

M. KELLY TILLERY, ESQUIRE, PANELIST

Dated: January 18, 2002

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