The Complainant is Berlitz Investment Corporation, of New Jersey, United States of America, represented by Adams and Reese LLP, United United States of America.
The Respondent is Transure Enterprise Ltd, Host Master, Tortola, British Virgin Islands, Overseas Territory of the United Kingdom and Great Britain and Northern Ireland.
The disputed domain names <berlitzlanguage.com> and <berlitzpublications.com> are registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2009. On June 24, 2009, the Center transmitted by email to Above.com, Inc., a request for registrar verification in connection with the disputed domain names. On June 26, 2009, Above.com, Inc., transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 1, 2009 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 amendment to the Complaint on July 7, 2009. The Center verified that the Complaint together with the amendment to the 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 29, 2009.
The Center appointed Pravin Anand as the sole panelist in this matter on August 4, 2009. 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 facts stated in the Complaint by the Complainant Berlitz Investment Corporation, are as follows:
- The Complainant is the owner and proprietor of the registered trademark BERLITZ, and is one of the largest and best known providers of language instructions and related goods and services in the world.
- The Complainant has been active as a provider of language courses since 1878 and advertises and sells its goods and services through its “www.berlitz.com” website and related websites as well as through print media, language centers, book stores, and other retail outlets throughout the world.
- The Complainant has more than 450 centers in over 60 countries and has spent approximately USD 1.8 million in advertising and promotions in the year 2007 itself.
- The Complainant holds valid trademark registrations in over 104 countries of the world including United States, United Kingdom, Australia, India, Hong Kong, Singapore, South Africa.
- The Complainant is also the owner of trademarks and service marks containing the word BERLITZ such as BERLITZ J R, BERLITZ TEENS, BERLITZ CROSS CULTURAL, BERLITZ CULTURAL.
- The Complainant is also the registrant of various domain names such as:
(i) <berlitz.com> (registered since May, 14, 1997);
(ii) <berlitz.org> (registered since August 4, 1998);
(iii) <berlitzit.com> (registered since July 21, 1999);
(iv) <berlitzkids.com> (registered since July 28, 1999);
(v) <berlitzschool.com> (registered since June 21, 2006);
(vi) <www-berlitz.com (obtained transfer pursuant to WIPO Case No. D2006-1082 on October 13, 2006);
(vii) <berlitzlanguageschools.com> (obtained transfer on September 4, 2006);
(viii) <berlitzlanguagecourse.info> (obtained transfer pursuant to WIPO Case No. D2007-0008 on March 13, 2007);
(ix) <berlitzsoftware.com> (obtained transfer pursuant to WIPO Case No. D2007-0483 on May 31, 2007);
(x) <berlitzlanguageschool.com> (obtained by transfer on May 14, 2009);
- Complainant operates its principal website at “www.berlitz.com”.
The Complainant states that it owns United States trademark registration for BERLITZ and BERLITZ.COM. Further, the dominant element of the domain names <berlitzpublications.com> and <berlitzlanguage.com> incorporates the trademark BERLITZ in its entirety.
Since the Complainant's business involves providing language instructions and related publications, the addition of “publications” in the domain name <berlitzpublications.com> and the additions of “language” in <berlitzlanguage.com> actually serves to increase the confusing similarity rather than differentiate the disputed domain name, in which the Complainant has trademark rights.
To summarize the contentions of the Complainant, the domain names are identical or confusingly similar, because the Complainant's BERLITZ trademark is the dominant element of the disputed domain name and the addition of the terms “publication” and “language” describes the aspect of the Complainant's business.
The Complainant submits that it is the exclusive owner of the strong and well-known BERLITZ mark. The Complainant further submits that none of the circumstances as provided in paragraph 4(c) of the UDRP Policy demonstrating the Respondent's rights and legitimate interest in the domain name are present in this case.
The Complainant submits that to the Complainant's knowledge, BERLITZ is not the Respondent's name and the Respondent has not, and has never been, a licensee or franchisee of the Complainant.
It is the Complainant's contention that the Respondent's is not using the disputed domain names in connection with a bona fide offering of goods or in a legitimate non-commercial or fair manner.
The Complainant further contends that the Respondent's attempts to sell the domain name in excess of its registration costs of USD 49.99 is not evidence of rights or legitimate interest in the domain name.
The Complainant submits that given the many trademark registrations for BERLITZ, its international reputation, combination of Complainant's marks with words that accurately describe the Complainant's business, and the fact that the BERLITZ is a highly distinctive mark that is universally associated with the Complainant, it is not plausible that the Respondent could legitimately use the domain names, and further that it is not plausible that the Respondent would not have been aware of BERLITZ at the time of registration.
The Respondent has registered and is using the domain names for the sole purpose of redirecting internet users, and particularly customers and potential customers of the Complainant to the websites of other language instructions and related industries, which may compete with the Complainant. Thus, it is evident that the Respondent is using Complainant's mark to benefit commercially from the goodwill attached to BERLITZ.
It is the Complainant's contention that the coupling of Complainant's core marks with words describing its services, such as “publication” and “language” allows for a strong influence that the respondent is well aware of the Complainant's valuable BERLITZ mark.
The Complainant further contends that the attempts of the Respondent to sell the domain names for a profit to the Complainant are evidence of the registrations and use of the domain name in bad faith under section 4(b)(i) of the UDRP since it indicates the Respondent has registered or acquired the domain name primarily for the purpose of selling.
The Complainant further contends that the Respondent's registrations of multiple domain names containing Complainant's famous trademark BERLITZ is further evidence of bad faith, since it suggests a pattern of conduct prohibited by paragraph 4(b)(ii) of the policy.
The Respondent did not submit any Response.
The Complainant has to prove each of the following elements:
(1) The domain names registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) That the Respondent has no rights or legitimate interests in respect of the domain names; and
(3) That the domain names have been registered and are being used in bad faith.
In the case of a default by a party, paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement, under the Rules, the Panel shall draw such inferences there from, as it considers appropriate.
In this case, the Respondent has not submitted a Response and the Panel will therefore have to operate on the basis of factual circumstances described in the Complaint as well as the evidence to support it.
Accordingly the panel finds that:
The Complainant has exclusive rights over the trademark BERLITZ by virtue of its United States trademark registration No. 524,786 since the year 1950. Additionally, the Complainant is also the registered proprietor of the trademark BERLITZ in many classes in the United States including class 9, 41, 16, etc.
Further, the Complainant is also the registered proprietor of the trademark BERLITZ in 108 countries around the world. The Complainant is also the owner of trademarks and service marks containing the word BERLITZ such as BERLITZ J R, BERLITZ TEENS, BERLITZ CROSS CULTURAL, BERLITZ CULTURAL etc.
Additonally, the mere addition of a generic term such as “publications” and “language” to a trademark does not prevent a domain name from being confusingly similar to a trademark. (See F. Hoffmann –La Roche AG v. Hostmaster, Domain Park Limited WIPO Case No. D2007-1096 and Expedia, Inc. v. Domain park Limited , NAF Claim No FA 0708001056504.)
Further the combination of the Complainant's strong and well-know mark BERLITZ with the addition of the terms “publication” and “language” describes the aspect of the Complainant's business.
Therefore, the Panel finds that the disputed domain names are identical in part and confusingly similar as a whole to the Complainant's well-known and famous trademark BERLITZ.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interest as:
- The Complainant has not authorized or licensed or otherwise given any permission to any individual or identity including the Respondent to register or use the disputed domain names <berlitzpublications.com> and <berlitzlanguage.com>.
- Further the Respondent has not been a licensee or franchisee of the Complainant. Additionally the Respondent is not making a legitimate noncommercial use of the disputed domain names and is directing visitors to a website which are also offering language instructions and other services which may be competing with the Complainant's services.
Therefore the Panel finds that the Respondent does not have any rights or legitimate interests in the domain name.
The Complainant has advanced grounds for the Panel to ascertain that the disputed domain names are registered and being used in bad faith:
Given the many trademark registrations for the mark BERLITZ, its international reputation, the fact that BERLITZ is a highly distinctive mark universally associated with the Complainant, it is not plausible that the Respondent was not aware of BERLITZ at the time of registration.
It would not be exaggeration to state that BERLITZ has become an iconic mark for language instruction services and that the first name that is likely to come to a consumers or a potential consumers mind in the language instruction field is BERLITZ (See Berlitz Investment Corporation v. Katelin Adkins, WIPO Case No. D2007-0008 also Berlitz Investment Corporation v. Marcus Santamaria, WIPO Case No. D2006-1082).
Thus, the act of the Respondent to register and use the domain names for redirecting Internet users, and particularly customers and potential customers of the Complainant, to the websites consisting of other language instructions and related industries, which may compete with the Complainant is evidence that the Respondent is using the Complainant's mark to benefit commercially from the goodwill attached to BERLITZ. (Berlitz Investment Corporation v. Marcus Santamaria, WIPO Case No. D2006-1082).
Additionally the Respondent's registration of multiple domain names containing the Complainant's famous trademark BERLITZ is further evidence of bad faith and it suggests conduct prohibited by paragraph 4(b)(ii) of the UDRP Policy. (See Gruner Jahr Printing & Publishing Co. v. Savior Baby, WIPO Case No. D2000-1741)
The above-mentioned circumstances suffice to establish that the domain name was registered and is used in bad faith.
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 name,<berlitzlanguage.com> and <berlitzpublications.com> be transferred to the Complainant.
Dated: August 29, 2009