WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Berlitz Investment Corporation v. Transure Enterprise Ltd / Above.com Domain Privacy
Case No. D2014-1768
1. The Parties
The Complainant is Berlitz Investment Corporation of Wilmington, Delaware, United States of America ("US") represented by Adams and Reese LLP, US.
The Respondent is Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("UK") / Above.com Domain Privacy of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <berlitzinglish.com> is registered with Above.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2014. On October 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 10, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on October 16, 2014.
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").
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 October 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 7, 2014.
The Center appointed Adam Taylor as the sole panelist in this matter on November 12, 2014. 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 Complainant, incorporated in the US, is a wholly owned subsidiary and intellectual property holding company for Berlitz Languages, Inc., also incorporated in the US. Both entities are part of a group of companies which, including their predecessors, have offered language instruction and related goods and services worldwide under the mark BERLITZ since 1878. By way of example, in 2009, the group's turnover was approximately USD 500 million and it spent approximately USD 1.8 million on advertising and promotion.
The group's main website is at "www.berlitz.com". It also operates a website at "www.berlitzenglish.com".
The Complainant owns many registered trade marks worldwide for BERLITZ including US trade mark no 1,946,638 registered January 9, 1996, in class 42.
The disputed domain name was registered on July 25, 2012.
According to a screenshot provided by the Complainant (Annex 3 of the Complaint), at around the time the Complaint was filed on October 8, 2014 there was a website at the disputed domain name consisting of a parking page with assorted sponsored links, many for websites offering aids for learning English.
On September 2, 2014, the Complainant sent a cease and desist letter to the Respondent but there was no reply.
5. Parties' Contentions
Identical or Confusingly Similar
The disputed domain name is identical or confusingly similar to the Complainant's trade mark as it wholly incorporates the Complainant's trade mark.
The addition of a generic term does not prevent the disputed domain name from being confusingly similar to the trade mark. Because the Complainant's business involves the provision of English language instruction and related goods and services, the addition of the misspelling "inglish" actually serves to increase the confusing similarity rather than differentiate the disputed domain name.
Rights or Legitimate Interests
To the Complainant's knowledge, the Respondent is not commonly known by the disputed domain name.
The Respondent is not a licensee or franchisee of the Complainant and has never been permitted to register or use the Complainant's mark.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair manner. The disputed domain name resolves to a site containing sponsored links to websites offering many services in direct competition with the Complainant.
The Respondent's taking advantage of typing errors to divert Internet users is a further evidence of a lack of rights or legitimate interests.
Registered and Used in Bad Faith
It is not plausible that the Respondent was unaware of the Complainant's distinctive trade mark at the time of registration.
The Respondent has used the disputed domain name solely to redirect customers and potential customers of the Complainant to websites of its competitors.
The Respondent is using the Complainant's mark in combination with the misspelling of a word describing the Complainant's business intentionally to attract, for commercial gain, Internet users to its website, thereby creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation, or endorsement of its website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark BERLITZ by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Paragraph 1.9 of WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name. The principal exception that some panels have found in certain cases is where a trade mark (especially one of a descriptive nature) is incorporated or subsumed within other words or textual elements so that the trade mark is not clearly the dominant component of the domain name.
Here, the Complainant's distinctive trade mark is undoubtedly the dominant component of the disputed domain name and, as indicated in paragraphs 1.2 and 1.9 of WIPO Overview 2.0, the addition of the misspelt descriptive term "inglish" is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used for a parking page with links which are dominated by offerings of goods/services which compete with those supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:
"Panels have generally recognized that use of a domain name to post parking and parking pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' … especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion."
Here, the advertising links are clearly related to the trade mark value of the Complainant's mark BERLITZ.
In any case, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant's products and services. Such use of the disputed domain name could not be said to be bona fide.
In the oft-quoted decision of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, the panel stated that:
"… use which intentionally trades on the fame of another can not constitute a 'bona fide' offering of goods or services. To conclude otherwise would mean that a respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."
See also America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, (finding that "[I]t would be unconscionable to find a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business").
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In the Panel's view, it is obvious that the Respondent registered the disputed domain name with the Complainant's distinctive and well-known trade mark in mind.
The Respondent has used the disputed domain name for a website dominated by sponsored links to the Complainant's competitors.
The disputed domain name also involves an element of "typo squatting" as it incorporates a misspelling of "English", an obvious descriptive term associated with the Complainant's business and indeed the Complainant uses this exact combination, for example relation to its website at "www.berlitzenglish.com".
The Respondent has not come forward to deny the Complainant's assertions of bad faith. It is difficult to conceive of any genuine reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.
The Panel concludes from the foregoing that the Respondent has registered and is using the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trade mark.
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 <berlitzinglish.com> be transferred to the Complainant.
Date: November 25, 2014