WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Berlitz Investment Corporation v. Domain Admin, Private Registrations Aktien Gesellschaft / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org
Case No. D2015-1707
1. The Parties
Complainant is Berlitz Investment Corporation of Wilmington, Delaware, United States of America, represented by Adams and Reese LLP, United States of America.
Respondent is Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <berlitzshanghai.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2015. On September 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2015, 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 Complainant on September 29, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 1, 2015.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on October 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 23, 2015.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on October 28, 2015. 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
Complainant Berlitz Investment Corporation ("Berlitz") is a well-known provider of language instruction and related services. It has conducted business under the BERLITZ trademark continuously since 1878. It owns valid trademark registrations for BERLITZ in numerous countries, in particular in China. As of December 31, 2012, Complainant had more than 550 centers in over 70 countries. In Shanghai, Complainant maintains two language centers.
According to the WhoIs excerpt filed by Complainant as Exhibit 1 to the amended Complaint, the disputed domain name <berlitzshanghai.com> was registered on December 20, 2012. As results from Exhibit 3 to the Complaint, the website to which the disputed domain name resolves contains sponsored links, in particular to websites of various language centers other than Complainant's.
5. Parties' Contentions
Complainant contends that the disputed domain name is confusingly similar to its BERLITZ trademarks. It stresses the fact that the disputed domain name entirely comprises the aforementioned trademark BERLITZ.
Furthermore, Complainant states that Respondent is not affiliated or related to it in any way, and that it did not authorize Respondent to use the trademark in question. Complainant also states that Respondent does not have any prior rights or legitimate interests in the disputed domain name and that it does not make any legitimate use of the disputed domain name.
Lastly, Complainant contends that Respondent registered and uses the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant holds several trademarks for BERLITZ. These trademarks are registered for various goods and services, in various classes, in particular for language instruction (international class 41), in many countries of the world. The trademarks put forward by Complainant are sufficient to establish Complainant's rights in a trademark.
The existence of a confusing similarity within the meaning of paragraph 4(a) of the Policy is not in doubt in the present case, given that the main element in the disputed domain name, i.e., "berlitz", is identical to Complainant's trademark BERLITZ. The integral incorporation of one or more trademarks into a domain name is typically sufficient to establish that a domain name is identical or confusingly similar to a trademark (RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059). The other element of the disputed domain name, i.e., the element "shanghai" is not sufficient to avoid confusing similarity. Indeed, the addition of merely generic wording to a trademark in a domain name is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 and Swarovski Aktiengesellschaft v. new-swarovskicrystal-shop.net, WIPO Case No. D2013-1043).
The Complainant rightly points out that the contrary is true in the case at hand, in the sense that the geographic term "Shanghai" actually adds to the confusion because it relates directly to a place, namely Shanghai, where the Complainant has developed its business (cf. Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658; see also ACCOR v. Steve Kerry / North West Enterprise, Inc., WIPO Case No. D2006-0649). Indeed, Complainant operates two language centers in Shanghai. Indeed, it is obvious that there is a high risk that Internet users, when confronted with the disputed domain name, would believe the disputed domain name and/or the attached website belong to or are associated with Complainant.
As far as the generic Top-Level Domain ("gTLD") ".com" is concerned, this element has a technical function and therefore does not typically need to be taken into account when assessing the issue of identity or confusing similarity.
The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant has shown that it owns the BERLITZ trademark, and it has explicitly contested having granted Respondent any right to use its trademark.
In particular, Complainant contends (i) that Respondent has not been commonly known as "Berlitz" and (ii) that it has not used, or demonstrably prepared to use, the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, Complainant has shown that the disputed domain name resolves to a website entitled "www.berlitzshanghai.com" that contains sponsored links to third party websites that offer many services, including language instruction services, which – in the absence of any authorisation by Complainant – cannot be possibly viewed as a bona fide use. Actually, it seems very likely that Respondent receives commercial revenue from the display of links to third party offerings. For this reason, there is no bona fide offering of goods or services according to paragraph 4(c)(i) of the Policy (Baccarat SA v. Speedeenames.com / Troy Rushton, WIPO Case No. D2010-0953).
Therefore, Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. In line with previous UDRP panel decisions, this means that the burden of production shifts to Respondent (e.g., Belupo d.d. v. WACHEM d.o.o, WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Respondent having failed to respond to the Complaint, this Panel concludes that Respondent does not have any rights or legitimate interests with respect to the disputed domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
lt results from the Panel's factual findings that Respondent primarily registered and is using the disputed domain name to display links in particular to certain of Complainant's competitors as well as totally unrelated products, and that it thereby intends to generate commercial revenue. The Panel therefore finds that by using the Complainant's trademark as the distinctive element of the disputed domain name, Respondent creates a risk of confusion, at least in the sense that the visitors to the website will, at least initially, expect a website operated by Complainant, or by someone associated with Complainant. ln any case, the visitors will have the impression that the website to which the disputed domain name resolves is associated with, or endorsed by, the owner of the BERLITZ trademark, i.e., Complainant. The fact that the links displayed on the website to which the disputed domain name resolves, redirect the user to the websites of language centers which are in competition with Complainant, shows bad faith conduct on the Respondent's part (e.g., Deceuninck NV v. William Vaughan, smtm investments ltd, WIPO Case No. D2007-1911).
The Panel thus finds that Respondent registered and is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website (paragraph 4(b)(iv) of the Policy).
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 <berlitzshanghai.com> be transferred to Complainant.
Date: October 30, 2015