WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Institute for Foreign Study (U.K.) Ltd v. Arwut Rugsakhate, PhuketCreative.com
Case No. D2016-1076
1. The Parties
Complainant is Institute for Foreign Study (U.K.) Ltd. of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Crowell & Moring, LLP, Belgium.
Respondent is Arwut Rugsakhate, PhuketCreative.com of Thalang, Phuket, Thailand.
2. The Domain Name and Registrar
The disputed domain name <campamerica.club> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2016. On May 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 29, 2016.
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 12, 2016. 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.
After Notification of Panel appointment an email was received from Respondent stating the following:
“Dear K. Phil,
Please let me know what is it. I think it's about "campamerica.club" domain name.
Arwut (Wut) Rugsakhate
4. Factual Background
Complainant AMERICAN INSTITUTE FOR FOREIGN STUDY (U.K.) LTD., founded in 1968, is part of the American Institute for Foreign Study (AIFS) group of programs. AIFS is a cultural exchange organization with offices in 15 countries. AIFS organizes cultural exchange programs for thousands of participants each year, including college study abroad, au pair placement, camp counselors and staff, gifted education, high school study/travel and insurance services.
Complaint owns, inter alia, the following trademark registrations:
Swiss Federal Office of Intellectual Property: CAMP AMERICA, Registration. No. P-364497, Registered October 11, 1988, filed on January 12, 1988, valid until January 12, 2018, covering printed materials in International Class 16.
EUIPO: CAMP AMERICA, Filing No. 000161059, filed on April 1, 1996, Registered January 24, 2000, renewed on December 2, 2015, covering services in International Classes 31, 35, 41 and 42.
Since 1988, Complainant uses the CAMP AMERICA trademark in its external communication and branding, including on its website at “www.campamerica.co.uk”, on billboards and advertisements.
The disputed domain name was registered on October 8, 2015. The disputed domain name is used to redirect to the domain name <campthailand.co.th>. This domain name refers to a website offering services similar to Complainant’s services.
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain name is identical to the trademarks in which Complainant has rights. The disputed domain name incorporates Complainant’s CAMP AMERICA trademark in its entirety. The generic Top-Level Domain (gTLD) suffix “.club” does not prevent a finding of identity or confusing similarity.
Respondent has no rights or legitimate interests in respect of the domain name. Respondent is not commonly known by the disputed domain name. In the instant case, the WhoIs records indicate that Respondent is named “Arwut Rugsakhate, PhuketCreative.com”. In addition, Respondent has not acquired trademark or service mark rights and Respondent’s use and registration of the disputed domain name was not authorized by Complainant. In the absence of any license or permission from Complainant to use its widely known trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed. Moreover, the disputed domain name is used to redirect to a domain name and website of a direct competitor of the Complainant, who is also advertising summer camps. Such use does not constitute a legitimate or fair use according to the policy.
The domain name was registered and is being used in bad faith. At the time Respondent registered the disputed domain name, Respondent must have known Complainant and its trademarks. This is shown by the following elements of fact:
- Complainant and its trademarks are well-known all over the world.
- The website associated to the disputed domain name advertises summer camp programs in direct competition with Complainant’s programs.
- A simple trademark search at the time of the registration of the disputed domain name would have revealed Complainant’s trademark registrations. Also, a simple search on the Internet would have revealed Complainant’s presence and trademarks.
As a result, Respondent could not reasonably have been unaware of the fame of Complainant’s CAMP AMERICA trademark at the time of registration.
As there is bad faith when Respondent knew or should have known Complainant’s trademark rights, and nevertheless registered a domain name incorporating a mark, in circumstances where Respondent itself had no rights or legitimate interest in said trademark (supra), it is clear that Respondent registered the disputed domain name in bad faith.
The use of domain name is confusingly similar to a complainant’s trademark suggests at the very least an endorsement of, or affiliation with, Respondent’s service by Complainant. In the present case, the impression of an endorsement or affiliation is increased by the fact that the disputed domain name resolves to a website offering services that are directly competing with Complainant’s services. Moreover, this website is clearly targeting people residing in the country where Complainant has its registered offices, namely the UK. On its website, Respondent offers the Internet user to come by their office in Manchester, a city in the UK. It also advertises several brands including AmeriCamp, which is confusingly similar to Complainant’s CAMP AMERICA trademark. It is clear that Respondent aims at being contacted by Internet users looking to trade with Complainant. Complainant also has no control over the active use that Respondent is making with the email addresses that are linked to the disputed domain name. With its website, Respondent is creating a high likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website and emails originating from Respondent.
There is no conceivable non-infringing use for which Respondent could use the disputed domain name. In sum, Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website. This conduct confirms that Respondent uses the disputed domain name in bad faith. Moreover, by registering the disputed domain name, Respondent prevents Complainant from reflecting its mark in a corresponding domain name. The effect of the registration is to affect the business of Complainant by attracting visitors looking for information about Complainant or its marks and creating difficulties for persons searching the Internet.
Apart from the email received after the appointment of the Panel, Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the mark CAMP AMERICA. See section 4 above.
The Panel notes that the second level portion of the disputed domain name exclusively consists of the CAMP AMERICA mark (without the space between “Camp” and “America”). The addition of the gTLD “.club”, a generic term in itself, is inapt to distinguish the disputed domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9 (“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.”).
The Panel concludes that the disputed domain name is confusingly similar to Complainant`s mark.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not commonly known by the disputed domain name. In fact, the WhoIs records indicate that Respondent is named “Arwut Rugsakhate, PhuketCreative.com”. Respondent has not acquired trademark or service mark rights and Complainant did not authorize Respondent’s use and registration of the disputed domain name. In the absence of any license or permission from Complainant to use its widely known trademark CAMP AMERICA, no actual or contemplated bona fide or legitimate use of the disputed domain name has been suggested. Moreover, Respondent is using the disputed domain name to redirect to a domain name and website of a direct competitor of Complainant, who is also advertising summer camps. Such use does not constitute a legitimate or fair use according to the Policy.
Taken together with the available evidence on the casefile, these contentions of Complainant are apt to constitute a prima facie case that Respondent lacks any rights or legitimate interests in the disputed domain name. As shown by Complainant with a printout taken from the website at the disputed domain name made on April 20, 2016, the disputed domain name was automatically redirected to the “www.campthailand.co.th” website, offering a program called “Camp Thailand” related to a summer camp, and other activities and services in Thailand apparently in competition with Complainant under the title “COME AND LIVE THE THAI LIFE”. Complaint`s Annex 10. Similar results obtained during Panel’s visit to the website at the disputed domain name conducted under its general powers pursuant to Rules, paragraph 10(a).1
In the opinion of the Panel, this use of the disputed domain name by Respondent is neither a use in connection with a bona fide offering of services pursuant to Policy paragraph 4(c)(i), nor a fair or a legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue under Policy paragraph 4(c)(iii). See NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (finding that using the contested domain name as an instrumentality for re-directing Internet users away from the complainant’s website to a commercial website of its direct competitor clearly does not constitute legitimate use).
The Panel also notes that Policy paragraph 4(c)(ii) cannot apply because the registrant of the disputed domain name is “Arwut Rugsakhate, PhuketCreative.com”, a name clearly not related to the disputed domain name.
Lastly, the Panel notes that Respondent failed to provide the slightest explanation as to its reasons to register the disputed domain name or to use it as described. The Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.2
C. Registered and Used in Bad Faith
Complainant has shown that it has registered the CAMP AMERICA trademark in 1988, over two decades before the registration of the disputed domain name, and that its CAMP AMERICA mark covers precisely the services offered by Respondent at the website to which the disputed domain name redirects. In the opinion of the Panel, this shows that Respondent was aware of Complainant, and of its CAMP AMERICA mark and services, and that Respondent targeted precisely them at the time of registering the disputed domain name, which in the circumstances of this case is a strong indication of registration in bad faith.
Complainant has also shown that at the time of submitting the Complaint the disputed domain name was automatically redirected to the “www.campthailand.co.th” website, where services in Thailand presumably in competition with Complainant are offered. The fact that the disputed domain name was used as shown by Complainant was confirmed by this Panel in the course of a later visit. See Section 6 B above. It is thus clear that Respondent used and still is using the disputed domain name to re-direct Internet traffic presumably intended for Complainant’s website, where Complainant offers its recreational services under the CAMP AMERICA mark, in an attempt to syphon off such traffic for profit. The Panel believes that such kind of use is in bad faith, as described in Policy paragraph 4(b)(iv) (“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”). See Staples, Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial, Inc. v. Staple.com, WIPO Case No. D2003-1028, related to <staple.com> (finding that the respondent`s use of the disputed domain name to redirect traffic to the complainants’ website in order to siphon profits to Smart Biz was clearly done with knowledge of Complainants’ rights in the mark STAPLES, and falls squarely within the circumstances contemplated in the Policy, paragraph 4(b)(iv)).
The Panel also notes that on June 13, 2016 the courier entrusted with the delivery of the notice of the Complaint to Respondent reported that the address on the airway bill – stated in the WhoIs database as Registrant’ss address - was incomplete/wrong. In the opinion of the Panel, this is a further indication of bad faith. See INTS It Is Not the Same GmbH v. Philippe Leveau [<fr-desigual.com>], Céline Molina [<fr-desigual-soldes.com> and <desigual-fr.com], Natalina Gelle [<desigual-soldes.com>], Marine Simon [<france-desigual.com>], James Thomas [<desigual-soldes-fr.com>], Annabelle Tching [<desigual-boutique.com> and <desigual-soldes.net>], Joana Bertheas [<soldes-desigual.com>] and Prisca Ilame [<soldes-desigual.info>], WIPO Case No. D2014-0622 (finding that the respondent had acted in bad faith under paragraph 4(b)(ii) of the Policy, inter alia because he or she had deliberately given false contact details.)
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <campamerica.club> be transferred to the Complainant.
Date: July 26, 2016
1 “a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at “www.archive.org”) in order to obtain an indication of how a domain name may have been used in the relevant past (…). See WIPO Overview 2.0, paragraph 4.5.
2 See WIPO Overview 2.0, paragraph 2.1. ([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.”)