WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association of Recognized English Language Schools, also known as "ARELS" v. LVI
Case No. D2001-0030
1. The Parties
1.1 The Complainant is Association of Recognized English Language Services ("ARELS"), a company limited by guarantee under the laws of England and Wales (registered no. 675600), having its principal place of business at 56 Buckingham Gate, London SW1E 6AG, United Kingdom.
1.2 The Respondent is "LVI" of Rue John Waterloo Wilsonstr 28, 1000 Brussels, Belgium, BE.
2. The Domain Name and Registrar
2.1 The domain name upon which this complaint is based is "arels.com". The registrar of the domain name at the date of the complaint is Network Solutions, Inc.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999, (the "Policy"), in accordance with the rules for uniform domain name dispute resolution policy, also approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO supplemental rules for uniform domain name dispute resolution policy in effect as of December 1, 1999, (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail on January 5, 2001, and in hard copy on January 16, 2001. An amendment to the Complaint correcting the address of the Complainant was received by the Center by e-mail on January 17, 2001, and in hard copy on January 19, 2001. The Complaint stated that payment had been made of the fees prescribed under the Rules and the Supplemental Rules. It appears from the Complaint that some contact and correspondence has taken place between the Complainant and the Respondent. The Complaint further states that the Complainant sent a copy of the Complaint to the Respondentís registered address by post on January 12, 2001, in accordance with the Rules and a copy was sent to the Registrar on January 12, 2001, in accordance with the Supplemental Rules. The panel notes that Rule 4(b) of the Supplemental Rules requires the copy sent to the Registrar to be submitted "at the same time as [the Complainant] submits its complaint to the Center", and that the Complainant allowed one week to elapse between its submission to the Center and its submission to the Registrar. The panel finds that nothing turns on this discrepancy.
3.3 The Center sent the Complainant an Acknowledgment of Receipt of Complaint by e-mail on January 11, 2001. The Center sent a request for Registrar Verification to Network Solutions by e-mail on January 12, 2001. Network Solutions responded to the Centerís request by e-mail on January 16, 2001, verifying:
(a) that Network Solutions was in receipt of the Complaint sent to it by the Complainant;
(b) that Network Solutions was the registrar for the domain name "arels.com";
(c) that the Respondent, LVI, was the current registrant of the domain name in dispute;
(d) the Respondentís contact details;
(e) that Network Solutions 5.0 Service Agreement was in effect (this applies the Policy); and
(f) that the status of the domain name was "active".
3.4 The Center sent a Notification of Complaint and Commencement of Administrative Proceeding on January 17, 2001, to the Respondent (both at its Registrant address and at the address of its administrative and technical contacts) by post/courier, facsimile and e-mail and by e-mail to "firstname.lastname@example.org".
3.5 The Panel has been furnished with a copy of a facsimile frontsheet addressed to the Administrative Contact at its registered facsimile number, together with a facsimile transmission report sheet indicating that the facsimile was successfully transmitted. The Panel has been furnished with a copy of a shipment airway bill from DHL Worldwide Express evidencing the dispatch of the parcels containing the notifications sent to the Respondent at its Registrant address. No facsimile frontsheet/transmission report or shipment airway bill has been provided in respect of the package sent to the technical contact. The Panel has not been provided with a delivery receipt from DHL Worldwide Express in respect of the dispatch to the Respondentís Registrant address but nor has it been provided with non-delivery report, which would be usual had the courier been unable to deliver the package. Furthermore, there is no evidence that the e-mails to the registrantís e-mail address, the administrative contact e-mail address, the technical contact e-mail address and "email@example.com" were not successfully delivered.
3.6 Accordingly, the Panel is satisfied that the Center has complied with subparagraphs 2(a)(i) to (iii) of the Rules and has discharged its responsibility to notify the Respondent of the Complaint. The Panel finds that the Respondent, its administrative contact and its technical contact received actual notice of the complaint and of the commencement of this proceeding on or about January 17, 2001.
3.7 No response was filed.
3.8 The Center sent a notification of Respondent Default to the Respondent by facsimile and e-mail on February 7, 2001, and to the Complainant by e-mail on the same day. Again, the Panel has been furnished with a facsimile frontsheet together with a facsimile transmission report indicating that the facsimile was successfully transmitted. Nor is there any evidence that the e-mail sent to the Registrantís address was not delivered. No response has been received from the Respondent at any time prior to the Panel commencing its deliberations.
3.9 In cases where no response has been filed, the Panel is particularly concerned to ensure that the requirement of paragraph 10(b) of the Rules, that the parties are treated with equality and that each party is given a fair opportunity to present its case, is fulfilled. The Panel is of the view that nothing in the procedural history of this case is likely to have deprived the Respondent of the opportunity to communicate with the Center if it wished to do so prior to the Panel commencing its deliberations.
3.10 The Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant by e-mail and to the Respondent by facsimile and e-mail on February 14, 2001.
3.11 The Center sent a transmission of case file to the Panel by e-mail on February 15, 2001. This did not include certain exhibited documentation. Such documentation was included in the hard copy case file received by the Panel on February 19, 2001, in Sydney, Australia.
3.12 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint and remains uncontested.
The Complainant was incorporated in the UK on November 21, 1960. It has traded under three different names: ARELS and FELCO (1960-1984 (FELCO means Federation of English Language Course Organizations), ARELS-FELCO (1984-1992) and ARELS (1992-present). The Complainant exists as an executive for (at present) 212 member language schools.
The objects for which the Complainant is established are to promote the pursuit of excellence in attaining the highest professional standards in all aspects of the provision of courses in English as a foreign language; to represent the interests of United Kingdom accredited providers of courses in English as a foreign language to governments, agencies and other bodies and individuals worldwide; to promote the United Kingdom by all appropriate means as the destination of choice for students of English as a foreign language; to establish the courses in English as a foreign language provided by members of the Association as the preferred choice of students; to work to continue to provide a rigorous system of accreditation based upon consistent standards and independent inspection; to promote membership of the Association and accreditation under the English in Britain Accreditation Scheme as reliable indicators of high quality courses in English as a foreign language; to require as a condition of membership the maintenance of a high standard of ethical practice and business conduct in all dealings, especially with other members, students and their advisers; to do any legal act which may tend to the achievement of these objects and/or to the general advancement of the interests of members of the Association.
The attachments to the Complaint show that the Complainant has had a web presence at "arels.org.uk" since March 1997, (prior to the Registration of the disputed domain name by the Respondent) and holds, through one of its member schools, the addresses "arels.org" and "arels.co.uk".
4.2 The Complainantís trade mark
The Complaint makes no specific submissions as to the subsistence of a trademark in the letters "ARELS". However, the Complaint asserts the following facts and matters, which remain uncontested.
The Complainant has traded under the name ARELS since 1992, and under variations of that name since 1960. All branding, logos, company stationery, company publications, company publicity materials, printed public listings and web addresses have used the nomination "ARELS".
The Respondent has no affiliation with ARELS and no agreements are in place allowing it to use the ARELS name. As an association, ARELS strictly controls the use of its name as it implies that those affiliated with it have passed the stringent criteria required to become a member or partner of ARELS. The Respondent has not passed those criteria or made any attempt to contact ARELS in relation to attempting to do so. The term ARELS, to the Complainantís knowledge, is nonsensical unless used as an abbreviation of the "Association of Recognized English Language Services", and the Respondent does not publicly offer any good or service bearing the name "ARELS". Nor is it a conceivable acronym for any known activity of the Respondent.
4.3 The website complained of
The following information is asserted as fact in the Complaint and remains uncontested.
The Complaint states that the Respondent acts as an agent for some ARELS member schools, and works in an identical area (English language course provision) of an industry in which ARELS has been extremely well known since 1960.
The "arels.com" website was created on March 29, 1999. The website, which currently exists at "arels.com", promotes direct competitors of ARELS and is detrimental to the Complainantís business. The Complainant alleges that it is very possible that a visitor to the "arels.com" site could mistakenly believe that the services offered are provided by ARELS, and as such the existence of the current "arels.com" website could have potentially disastrous consequences for the Complainantís membersí reputation as superior language course providers.
The Complainant annexes correspondence from the Respondent in which the Respondent states "we do not advertise our services as "ARELS", do not use the name in any active way, did not reference it as ARELS with any search engine, nor do we intend to do so, at least for the time being", states that the Respondent has turned down other offers to buy the name but is willing to give the Complainant priority over other interested parties and offers to lease the name to the Complainant for $1,000 per month or $10,000 per year pending a possible sale to the Complainant or other interested parties.
4.4 The Respondent
No response was filed, nor other communication received from the Respondent.
5. The Complainantís contentions in the Complaint
5.1 Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) [the] domain name [registered by the Respondent] is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) [the Respondent has] no right or legitimate interests in respect of the domain name; and
(iii) [the] domain name has been registered and is being used in bad faith.
5.2 The Complainant makes the following submissions in respect of each of the elements specified in paragraph 4(a) of the Policy.
5.3 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the Respondent is using an identical name to the Complainantís trading name in use since 1992. The Complaint further asserts that it is very possible that a visitor to the "arels.com" site could mistakenly believe that the services offered are approved by ARELS, with potentially disastrous consequences for the reputation of its members.
5.4 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent has no right to the use of "ARELS" as a domain name. In particular, the Complainant states that the Respondent has no affiliation with ARELS and no agreements are in place allowing it to use the ARELS name. Furthermore, the Respondent (a) presently has a website at the "arels.com" address promoting direct competitors of ARELS, (b) in previous correspondence has offered to lease the domain name to ARELS for a fee of $10,000 per annum and (c) suggested that failing the acceptance of this offer, it would market the domain name for sale especially targeting ARELS competitors, and as such has no legitimate interest in the name.
5.5 In reference to the element in paragraph 4(a)(iii) of the policy, the Complaint asserts that the Respondent has registered and is using the "arels.com" domain name in bad faith. In support of this assertion the Complainant points out that when the Respondent registered the disputed domain name, the Complainant had been trading under the name ARELS for seven years and had an established web presence. The Complainant asserts that against this background, registering "arels.com" could serve no promotional purpose other than to confuse potential visitors to the site into thinking that they were at a site operated or endorsed by ARELS. As the respondent acts as an agent for some ARELS member schools, it is unlikely that the Respondent would not realize that to use the domain name "arels.com" would be suggestive of a strong consensual link with ARELS. Furthermore, the Complainant asserts that the term ARELS is, to its knowledge, nonsensical unless used as an abbreviation of "Association of Recognized English Language Services". The Respondent has not made public any product, service or area of their business, which they have termed "ARELS". The Complainant claims that the use of the word "ARELS" in the domain name is an attempt by the Respondent to attract clients and therefore profit from the use of the ARELS trading name and reputation. Finally, the Respondent is alleged to have attempted to sell or lease the name to the Complainant. The Complainant asserts that this suggests that the Respondent has no interest in the domain name as a legitimate web presence for its own business but rather holds it merely to profit from the potential transfer of the domain name to ARELS.
6. Discussion and Panel Findings
6.1 Complainantís trademark
The Complainant has not sought any trademark registration for "ARELS". It must therefore establish, on the facts, that it has common law trademark or servicemark rights in the term "ARELS" as a prerequisite to obtaining relief on the grounds listed in paragraph 4(a) of the Policy. Prior to addressing the question of whether the Complainant has proved the three elements required by paragraph 4(a) of the Policy, the Panel must therefore decide the preliminary question of whether the Complainant has trademark rights or servicemark rights in those terms.
The Panel observes that, unusually, the Complainant has not cited any authority either from WIPO Administrative Panel decisions or from any other source to support the finding of a trademark in its name. The Panel notes in this regard that the Complaint appears to have been prepared without the assistance of legal representation. The Panel notes from its own findings in relation to the use of the identifying letters "ATT" by AT&T in WIPO Administrative Panel Decision AT&T Corp. v World Class Media.com, case No. D2000-553 that it is possible for trademark rights to subsist in abbreviations and identifying letters. This conclusion is also consistent with this Panelís findings in WIPO Administrative Panel decision Capital Broadcasting Company, Inc. v Private, case No. D2000-1609, relying on WIPO Panel Decision Lin Television Corporation v Home in USA and Home in USA Inc., case No. D2000-0257, that television-broadcasting call letters could serve as trademarks if they were used in a trademark sense.
In this case the Complainant registered as a company limited by guarantee in 1960, and has traded under names incorporating the letters "ARELS" ever since. It has used the letters ARELS exclusively to identify itself since 1992, and all branding, logos, company stationery, company publications, company publicity material, printed public listings and web addresses have used the nomination "ARELS". It has also used that term on its website as viewed by the Panel. It is clear to the Panel that the Complainant has used the identifying letters "ARELS" in a trademark sense. The Panel concludes that the Complainant has trademark rights at common law in the term "ARELS".
6.2 The Panel turns next to the three elements of paragraph 4(a) of the Policy, which the Complainant must prove in order to obtain relief.
6.3 Domain names identical or confusingly similar to Complainantís trademark.
The domain name in dispute is "arels.com". The Complainantís common law trademark is in the letters "ARELS". The Panel finds that the domain name is identical to the "ARELS" mark in which the Complainant has rights.
6.4 The Respondentís rights or legitimate interest in the Domain names
The Respondent has asserted no rights or legitimate interests in the disputed domain name. Taking into account the non-exclusive list of factors in paragraph 4(c) of the Policy, the Panel notes that the Respondent has used the Domain name "arels.com" to advertise on behalf of direct competitors of the ARELS organization. The Panel does not regard such a use as a bona fide offering of goods or services. Secondly, the Panel notes that the Complainant has been using the "ARELS" mark (in various forms) for over 40 years and has had a website presence using variations on the mark since 1996. In contrast, the Respondent and associated names bear no resemblance to the domain name in dispute. Thirdly, it appears that the Respondent intends to make commercial gain by misleadingly diverting potential clients to a site promoting competitors of the Complainant and by seeking to sell the Domain name to the Complainant at an inflated rate.
The Complainant denies, and there is no evidence to the contrary, that there is any relationship between the Complainant and the Respondent which would give rise to any license, permission or other right by which the Respondent could own or use the domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
6.5 The domain name has been registered and is being used in bad faith
The Panel notes that paragraph 4(a)(iii) of the Policy requires both registration in bad faith and use in bad faith. The Panel refers to the non-exclusive list of factors found in paragraph 4(b) of the Policy and in particular sub-paragraphs (i) and (iv) thereof. Sub-paragraph (i) refers to:
"circumstances indicting that [the Respondent has] registered or Ö 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 servicemark or to a competitor of that Complainant, for valuable consideration in excess of [the Respondentís] documented out-of-pocket costs directly related to the domain name;"
The factor in sub-paragraph (iv) is that:
"by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondentís] website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the Respondentís] website or location or of a product or service on [the Respondentís] website or location."
In respect of sub-paragraph (i), the Complainant relies on a letter dated December 6, 2000, sent by the Respondent to the Complainant. The Panelís views on this letter are tempered by the fact that it quite clearly forms part of a series of contacts or correspondence and the Complainant has chosen to disclose and rely on only one item from that series. That being said, the letter is signed by the Administrative Contact of the Respondent, in the Panelís view sets out a clear understanding that the use of the word "ARELS" would compete with the Complainant, acknowledges the Complainantís ownership of the domain names "arels.net" and "arels.org"; offers to lease the site "arels.com" to the Complainant for $1,000 per month or $10,000 a year, pending agreement on a sale; and threatens to sell to "the highest bidder" identifying, in particular, "publishing houses, schools in the UK or elsewhere Ö other trade associations or indeed any commercial company involved in any business, with or without connection to languages Ö".
In the Panelís view, the approach demonstrated by the letter brings this case squarely within paragraph 4(b)(i) of the Policy. The Panel agrees with the Complainant that the registration and use of the disputed domain name is (inter alia) to profit from the potential transfer of the site to ARELS. The Panel infers from the references to the Respondent as a "commercial business" and a willingness to lease or sell at "commercial rates" in the letter of December 6, 2000, that the Respondent is seeking to sell or rent the disputed domain name for in excess of its documented out-of-pocket costs.
In respect of sub-paragraph (iv) the Complainant relies on evidence that the disputed domain name promotes direct competitors of the Complainant and is detrimental to the Complainantís business. In the absence of evidence, the Panel is unable to express a view on the detriment claimed in the Complaint. However, the fact that the disputed domain name resolves to a site advertising competitors of the Complainant brings the case squarely within paragraph 4(b)(iv). The Panel is of the view that the registration and use of the disputed domain name for financial gain was intended to exploit the Complainantís goodwill in its ARELS trademark.
Accordingly, the Panel finds that the domain name "arels.com" has been registered and is being used by the Respondent in bad faith.
7.1 The Panel has found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the Policy, the Panel orders that the domain name "arels.com" be transferred by Network Solutions, Inc. to the Complainant, Association of Recognized English Language Services.
Philip N. Argy
Dated: March 8, 2001