Rohde & Schwarz GmbH & Co. KG v Denis Prus
WIPO Case No. D2025-2297
•06-08-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Rohde & Schwarz GmbH & Co. KG v. Denis Prus
Case No. D2025-2297
1. The Parties
The Complainant is Rohde & Schwarz GmbH & Co. KG, Germany, represented by Bettinger Schef felt
Partnerschaf t mbB, Germany.
The Respondent is Denis Prus, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <ru-rohde-schwarz.com> (the “Domain Name”) is registered with REG.RU LLC
(the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2025. On June 12, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the Domain Name. On June 16, 2025, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which dif fered from the named Respondent (Personal data, can not be publicly disclosed according to applicable laws) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 17, 2025, 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 June 17, 2025.
On June 17, 2025, the Center informed the parties in Russian and English, that the language of the registration agreement for the Domain Name is Russian. On June 17, 2025, the Complainant submitted the amended Complaint translated into Russian, but included in it a request that English be the language of the proceedings. The Respondent did not submit any comment on the Complainant’s submission.
The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent in English and Russian of the Complaint, and the proceedings commenced on June 27, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on July 21, 2025.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on July 23, 2025. The Panel f inds 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 a global developer and manufacturer of electronic equipment, particularly in the areas of test and measurement, broadcasting, radio monitoring, radiolocation, and radio communication. Founded in the early 1930s, the Complainant is headquartered in Munich, Germany, with regional of f ices in the United States of America and Asia. It employs approximately 10,000 people and operates in over 70 countries.
The Complainant is the owner of numerous ROHDE & SCHWARZ trademark registrations, including:
| - | the International Trademark Registration for ROHDE & SCHWARZ (word) No. 759770, registered on April 30, 2001; |
| - | the International Trademark Registration for ROHDE & SCHWARZ (figurative) No. 926106, registered on February 14, 2007; and |
| - | the International Trademark Registration for ROHDE & SCHWARZ (word) No. 1568560, registered on September 29, 2020. |
According to the Complainant, it also owns numerous domain names incorporating its ROHDE & SCHWARZ
trademark, including <rohde-schwarz.com>, <rohde-schwarz.shop>, <rohde-schwarz.store>, and
<rohde-schwarz.ru>.
The Domain Name was registered on March 13, 2024.
At the time of filing the Complaint, the Domain Name resolved to a website in the Russian language that displayed the Complainant’s ROHDE & SCHWARZ trademark and offered products bearing that trademark (the “Website”). According to the Complainant, it is unclear whether the products offered on the Website are genuine and originate from the Complainant. The Complainant also states that it discontinued deliveries of its products to Russian Federation.
As of the date of this Decision, the Domain Name continues to resolve to the Website.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.
First, the Complainant contends that the Domain Name is confusingly similar to the trademark in which the
Complainant has rights.
Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the
Domain Name.
page 3
Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Matters – Language of the Proceedings
The language of the Registration Agreement for the Domain Name is Russian. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specif ied otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the
registration agreement.
The Complainant requests that the language of the administrative proceedings be English.
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 section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel notes that the Complainant, a company based in Germany, requested that the proceedings be conducted in English. The Respondent did not comment or let alone object to the Complainant’s request concerning the language of the proceedings. The Panel also notes that the Complainant has provided a Complaint translated into Russian, and the Respondent had an opportunity to f ile a response in either English or Russian, but none was f iled.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceedings shall be English.
6.2. Substantive Matters – Three Elements
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met. At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview 3.0.
A. Identical or Confusingly Similar
Under the f irst element, the Complainant must establish that the Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.
page 4
The Complainant holds valid registrations for the ROHDE & SCHWARZ trademark. The Domain Name incorporates this trademark in its entirety, except an ampersand.
The replacement of the ampersand with a hyphen between the terms “rohde” and “schwarz”, as well as the addition of the prefix “ru-” in the Domain Name, does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s ROHDE & SCHWARZ trademark. Panels have consistently held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a f inding of confusing similarity under the f irst element. See section 1.8 of the WIPO Overview 3.0.
The generic Top-Level Domain “.com” in the Domain Name is viewed as a standard registration requirement and as such is typically disregarded under the first element test. See section 1.11.1 of the WIPO Overview 3.0.
Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s ROHDE & SCHWARZ trademark for purposes of the Policy. In sum, the Panel f inds the f irst element of the Policy has been established.
B. Rights or Legitimate Interests
Under the second element, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name.
A right or legitimate interest in the Domain Name may be established, in accordance with paragraph 4(c) of the Policy, if the Panel f inds any of the following circumstances:
(i) that the Respondent has used or made preparations to use the Domain Name or a name
corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the
dispute; or
(ii) that the Respondent is commonly known by the Domain Name, even if the Respondent has not acquired any trademark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
In the present case, the Complainant’s ROHDE & SCHWARZ trademark registrations predate the trademark or to register the Domain Name incorporating this trademark.
Respondent’s registration of the Domain Name. There is no evidence in the case record that the
Moreover, it results from the evidence on record that the Respondent does not make use of the Domain noncommercial or fair use of the Domain Name.
The Panel notes that, both at the time of f iling of the Complaint and as of the date of this Decision, the Domain Name resolved to a website in the Russian language that displayed the Complainant’s ROHDE & SCHWARZ trademark and offered products bearing that trademark. The Website is purportedly operated by the entity “OOO “MАКСПРОФИТ” (“Maksprofit LLC”). While it is unclear whether such entity actually exists and whether any goods have actually been sold through the Website, regardless of whether the Respondent registered that as a corporate name, there is no evidence before the Panel, in the absence of any Response, to suggest that the Respondent has been commonly known by the Domain Name.
page 5
For completeness, prior UDRP panels have recognized, further to section 2.8.1 of the WIPO Overview 3.0, that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona f ide of fering of goods or services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be of fering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that ref lect the trademark.
In the present case, the above referred requirements are not met. The Domain Name itself , along with the Website, falsely suggests an affiliation with the Complainant and its ROHDE & SCHWARZ trademark. The Panel believes that the use of the Complainant’s trademark in the Domain Name and at the Website
misleads Internet users regarding the lack of relationship between the Respondent and the Complainant, as Internet users may falsely believe that the Respondent is an entity associated with the Complainant. At the same time, the relationship between the Respondent and the Complainant (or a lack thereof) is not disclosed on the Website. This perpetuated the false impression of a relationship between the Respondent and the Complainant.
Additionally, according to the Complainant, it is unclear whether the products of fered on the Website are genuine and originate f rom the Complainant. It is not necessary, however, for the Panel to make any ultimate determination as to the nature of the goods, as the evidence shows the Respondent has attempted to pass itself of f as the Complainant.
Given the above, there are no circumstances in evidence which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests of the Respondent in respect of the Domain Name. Thus, there is no evidence in the case record that refutes the Complainant’s prima facie case. In sum, the Panel f inds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Under the third element, the Complainant must prove that the Domain Name has been registered and is being used in bad faith.
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1 of the WIPO Overview 3.0.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes, without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of -pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a
trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct;
or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
page 6
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
As indicated above, the Complainant’s rights in the ROHDE & SCHWARZ trademark predate the registration trademark.
of the Domain Name. This Panel f inds that the Respondent was or should have been aware of the
Complainant’s trademark at the time of registration. This f inding is supported by the use of the ROHDE &
Moreover, it has been proven to the Panel’s satisfaction that the Complainant’s ROHDE & SCHWARZ
trademark is well known to the Complainant, at least in the f ield of electronic equipment. Thus, the
Respondent could not reasonably ignore the reputation of goods under this trademark, while offering goods
bearing the ROHDE & SCHWARZ trademark. In sum, the Respondent, more likely than not, registered the
Domain Name with the intention of taking unfair advantage of the reputation of the Complainant’s ROHDE &
SCHWARZ trademark.
The Panel thus f inds, on the balance of probabilities, that the Domain Name has been used in bad faith by the Respondent to attract Internet users to the Website. The Panel f inds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Website.
For the reasons discussed above, the Panel f inds the third element of the Policy has been established.
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 Domain Name <ru-rohde-schwarz.com> be transferred to the Complainant,
/Piotr Nowaczyk/
Piotr Nowaczyk
Sole Panelist
Date: August 6, 2025
0
0
0