WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Berlitz Investment Corporation v. Pierre Hacopian, Mr. Cheap.com LLC
Case No. D2007-0483
1. The Parties
Complainant is Berlitz Investment Corporation, Princeton, United States of America, represented by Adams and Reese LLP, United States of America.
Respondent is Pierre Hacopian, Mr. Cheapo.com LLC, Hoboken, United States of America.
2. The Domain Names and Registrar
The disputed domain names are
registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2007. On March 29, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain names at issue. Dotster, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the registrant’s contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2007. The Response was filed with the Center on May 2, 2007.
The Center appointed Mark Partridge as the sole panelist in this matter on May 11, 2007. 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.
The Panel has allowed and considered a supplemental filing by Complainant.
4. Factual Background
Complainant has provided language courses since 1878 under the mark BERLITZ. The BERLITZ mark has been widely used and promoted throughout the world. Complainant has registered the mark as a trademark in numerous countries, including the United States of America. Complainant operates its principal website at <berlitz.com>.
In March 2006, Complainant learned that Respondent operated a website at “www.berlitzsoftware.com”, which purported to sell Complainant’s courses. After notice of Complainant’s objection, Respondent replied that it would disable the domain name and website.
In January 2007 Complainant learned that the domain name <berlitzsoftware.com> was used for a site with links to Complainant’s competitors and with a link to an offer for sale of the disputed domain names at an asking price of $2,000. Respondent offered to sell the domain names to Complainant for $250 each, an amount it deemed to cover its out-of-pocket expenses.
5. Parties’ Contentions
Complainant contends that the disputed domain names are confusingly similar to its famous trademark, that Respondent lacks any right or legitimate interest in the domain names, and that the domain names were registered and used in bad faith.
Respondent claims it used the domain names for a bona fide offering of goods and services because it registered and used the domain names as a reseller of genuine BERLITZ language courses. It further claims that it did not act in bad faith because it offered to sell the domain names to Complainant for no more than its out-of-pocket costs.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established rights in the BERLITZ mark. The disputed domain names combine Complainant’s mark with apt descriptive terms for Complainant’s products. Such use increases, rather than avoids, the potential for confusion. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark.
B. Rights or Legitimate Interests
Respondent claims that it has a legitimate interest in the domain names because it made bona fide use of the domain names to sell genuine Berlitz products. Other decisions have addressed similar issues with respect to the resellers of genuine goods. For example, in Dr. Ing.h.c.F. Porsche AG v. Del Fabbro Laurent, Case No. D2004-0481 (WIPO, August 20, 2004), the Panel found in favor of a respondent who used the domain name <porsche-buy.com> for the resale of Porsche automobiles. On the issue of bona fide use, the panel stated:
“To be bona fide, the offering must meet several requirements (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Those include the following:
- A respondent must actually be offering the goods or services at issue;
- A respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent;
- A respondent does not corner the market in all domain names or deprives the trademark owner of reflecting its own mark in a domain name.”
Applying these principles to the dispute at issue, the Panel finds as follows:
- Respondent apparently offered genuine Berlitz goods at “www.berlitzsoftware.com” but later changed the site to include links to competitors and links for sale of the domain names.
- Respondent’s site failed to adequately disclose the lack of relationship between Complainant and Respondent. The language on the initial site creates the impression that the users of the site are dealing with an official site operated by Complainant. Complaint Annex 4. This is not a case where the Respondent fully disclosed its lack of official relationship with Complainant.
- Nothing in the domain names themselves suggests to Internet users that the domain names are used by a party unrelated to Complainant.
- After objection, Respondent offered the domain names for sale at a premium.
Accordingly, the Panel finds that Respondent’s use did not constitute use of the domain names for a bona fide offering of goods and services and that Respondent lacked any right or legitimate interest in the domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:
“(i) circumstances indicating that respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on the website or location.”
Respondent contends it acted in good faith by registering the domain names for the purpose of selling genuine Berlitz goods and that it offered to sell the domain names to Complainant for reasonable out-of-pocket cost.
The Panel finds as follows regarding Respondent’s registration and use:
- Respondent was aware of the Complainant’s marks when it registered the domain names.
- Respondent used <berlitzsoftware.com> for a site that created the false impression that it was an official site operated by Complainant. Complaint Annex 4. Thus, it was likely that Internet users believed they were buying goods directly from Complainant or Complainant’s authorized agent, when in fact, they were not. Respondent would unfairly benefit from that confusion by increasing the demand for its goods and by the ability to charge a higher price than it might otherwise obtain. If the site had fully disclosed that it was not an official site operated by Complainant, the likely result would have been lower consumer confidence and lower sales.
- Respondent later used the domain names for a parking page with sponsored links to various sites, including sites selling products in competition with Complainant. Complaint Annex 7. This conduct presumably resulted in commercial gain to Respondent via linking fees from traffic driven to the web page as a result of the use of domain names that are confusingly similar to Complainant’s famous mark.
- Respondent offered the domain names for sale at an asking price of $2000 at <afternic.com>. It appears more likely than not that this step was taken to avoid Complainant’s demand for transfer and to profit from the sale of the domain names.
The Panel believes these actions are sufficient to constitute bad faith use and registration of a domain name in violation of the Policy, including but not limited to Paragraph 4(b)(iv)(deliberate use of confusing domain names for commercial gain).
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <berlitzfrench.com>, <berlitzgerman.com>, <berlitzsoftware.com>, and <berlitzspanish.com> be transferred to Complainant.
Dated: May 31, 2007