Rödl, LL.M. (Columbia University, New York) v 吴清儒 (wu qing ru)

WIPO Case No. D2024-4377

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Rödl Equity Partner Beteiligungs GmbH & Co. KG and Prof. Dr. Christian
Rödl, LL.M. (Columbia University, New York) v. 吴清儒 (wu qing ru)

Case No. D2024-4377

1. The Parties

The Complainants are Rödl Equity Partner Beteiligungs GmbH & Co. KG, Germany (the “First Complainant”) and Prof. Dr. Christian Rödl, LL.M. (Columbia University, New York), Germany (the “Second Complainant”), internally represented.

The Respondent is 吴清儒 (wu qing ru), China.

2. The Domain Name and Registrar

The disputed domain name <roedl.xyz> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina

( (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on October 29, 2024.
24, 2024. On the same day, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On October 25, 2024, the Registrar transmitted by
email to the Center its verification response disclosing registrant and contact information for the disputed
domain name that differed from the named Respondent (“unknown”) and contact information in the

On October 28, 2024, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On October 29, 2024, the Complainants requested English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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”).

page 2

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on November 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2024. The Respondent did not

submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2024.

The Center appointed Matthew Kennedy as the sole panelist in this matter on December 2, 2024. 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 First Complainant is an auditing and consulting firm founded in 1977. Its headquarters are in Germany, and it has offices in at least 48 countries, including several in China, where it opened its first office in 1994. The Second Complainant is a managing partner of the First Complainant and chairman of its management board. The First Complainant owns multiple trademark registrations in multiple jurisdictions, including:

- International trademark registration number 801971 for RÖDL & PARTNER, registered on February
25, 2003, designating multiple jurisdictions, including China, specifying services in classes 35, 36 and
42; and

- German trademark number 302014041342 for ROEDL & PARTNER, registered on May 16, 2014,
specifying services in classes 35, 36 and 45.

The Second Complainant also holds multiple trademark registrations in multiple jurisdictions, including:

- International trademark registration number 940658 for RÖDL, registered on June 22, 2007,
designating multiple jurisdictions, including China, specifying services in classes 35, 36 and 45; and

- German trademark number 302014041341 for ROEDL, registered on May 16, 2014, specifying
services in classes 35, 36 and 45.

The above trademark registrations are current. The Complainants have registered multiple domain names containing “roedl”, including almost 90 consisting simply of “roedl” and a Top-Level Domain (“TLD”) extension. One of these domain names is <roedl.com>, registered on June 25, 1997, that the Complainants use in connection with a website where they provide information about themselves and their services.

The Respondent is an individual based in China. His email contact address username is
“premiumdomainseller”.

The disputed domain name was created on March 6, 2024. It currently redirects to a webpage hosted by a domain name broker where the disputed domain name is offered for sale. The asking price is USD 1,450 to “buy now” or USD 99.69 per month to “lease to own”.

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainants contends that the disputed domain name is identical or confusingly similar to the RÖDL & PARTNER, ROEDL & PARTNER, RÖDL, and ROEDL trademarks. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorized by the Complainants to use their marks. The disputed domain name was registered and is being used in bad

page 3

faith. The Respondent can use and may have already used the disputed domain name to send fraudulent emails such as messages containing spam, phishing attempts and spam to the Complainants’ clients and employees. Therefore, the Complainants hold that the Respondent has registered the disputed domain

name in bad faith in the attempt to attract, for commercial gain, Internet users to his website, by creating a

likelihood of confusion with the Complainants’ mark as to the source of the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Preliminary Issues

A. Consolidation: Multiple Complainants

The Complaint was filed by two complainants. The Second Complainant is a managing partner, and chairman of the management board, of the First Complainant. Both Complainants own relevant trademark registrations. The Panel finds that the Complainants have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below separately and collectively as “the Complainant” except as otherwise indicated.

B. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint and amended Complaint were filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that the disputed domain name is registered in Latin characters; the Registrar uses English; and the use of English minimizes delays and potential translation costs.

Despite the Center sending emails regarding the language of the proceeding and the notification of the language of the proceeding or express any interest in otherwise participating in this proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. The Panel would have accepted a Response in Chinese, but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to the disputed domain name:

page 4

(i) the disputed domain name is identical or confusingly similar to a trademark 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. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. See WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of the ROEDL and ROEDL & PARTNER trademarks for the purposes of the Policy. See WIPO Overview 3.0, section 1.2.1. Given that finding, it is unnecessary to consider the RÖDL and RÖDL & PARTNER trademarks further.

The operational element of the disputed domain name is “roedl”, which constitutes the entirety of the ROEDL mark and the dominant element of the ROEDL & PARTNER mark. The only additional element in the disputed domain name is a generic TLD extension (“.xyz”) which, as a standard requirement of domain name registration, may be disregarded in the assessment of identity or confusing similarity. Accordingly, the disputed domain name is identical to the ROEDL mark and confusingly similar to the ROEDL & PARTNER mark for the purposes of the Policy. See WIPO Overview 3.0, section 1.7.

Therefore, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.

In the present case, the disputed domain name currently redirects to a webpage where it is offered for sale. In the Panel’s view, this does not constitute use in connection with a bona fide offering of goods or services such as to create rights or legitimate interests for the purposes of the Policy, nor does it constitute a

legitimate noncommercial or fair use of the disputed domain name. Further, the Registrar has confirmed that
the Respondent is named “吴清儒 (wu qing ru)”, not “Roedl” or “Rödl”. Nothing on the record indicates that
the Respondent has been commonly known by the disputed domain name.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Based on the record, the Panel finds the second element of the Policy has been established.

page 5

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The first of these circumstances is as follows:

“(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the
domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs

directly related to the [disputed] domain name;”

In the present case, the disputed domain name was registered in 2024, years after the registration of the circumstances, the Panel finds it more likely than not that the Respondent was aware of the Complainant at the time when he registered the disputed domain name.

Complainant’s ROEDL and ROEDL & PARTNER marks, including in China, where the Respondent is
resident. The disputed domain name is identical to the ROEDL mark and confusingly similar to the ROEDL
& PARTNER mark. The Panel takes note that the disputed domain name is a German family name that is
also spelt “Rödl”. However, the Complainant has made longstanding use of its marks in China, where the
Respondent is based, and almost all the top results of a search for “roedl” in Baidu (the most popular Internet
search engine in China) relate to the Complainant. The disputed domain name is also identical to the
domain name used in the Complainant’s international website address, but for the TLD extension. The

As regards use, the disputed domain name currently redirects to a webpage where it is offered for sale. The asking price is USD 1,450 to “buy now”. The Panel considers that amount likely to be in excess of the costs directly related to the disputed domain name. The Respondent provides no explanation of any intended

good faith use of the disputed domain name. Accordingly, the Panel finds that the circumstances indicate
that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or
otherwise transferring the disputed domain name registration to the Complainant or its competitor for
valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the

disputed domain name within the terms of paragraph 4(b)(i) of the Policy.

Therefore, the Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <roedl.xyz> be transferred to the Complainants.

/Matthew Kennedy/
Matthew Kennedy
Sole Panelist
Date: December 16, 2024