WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ELS Educational Services, Inc. v. Lisa Katz, Domain Protection LLC
Case No. D2016-1863
1. The Parties
The Complainant is ELS Educational Services, Inc. of Princeton, New Jersey, United States of America ("United States"), represented by Adams and Reese LLP, United States.
The Respondent is Lisa Katz, Domain Protection LLC of Dallas, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name, <elslanguagecenter.com> (the "Disputed Domain Name"), is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 14, 2016. On September 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 17, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 the Respondent of the Complaint, and the proceedings commenced on September 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 11, 2016.
The Center appointed Lynda M. Braun as the sole panelist in this matter on October 14, 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.
4. Factual Background
The Complainant is a leading provider of English-language instruction services, having taught over one million students from 175 countries during the past 50 years. The Complainant offers intensive language instruction programs, language instruction for executives, study abroad courses for teenagers, and university preparation and application assistance to students seeking to study at an English-speaking university or college. The Complainant has more than 70 locations in the United States and additional locations worldwide.
The Complainant owns valid and subsisting trademarks for the ELS and ELS LANGUAGE CENTERS trademarks on the Principal Register of the United States Patent and Trademark Office, including United States Reg. No. 2,039,766, registered on February 25, 1997; United States Reg. No. 1,280,170, registered on May 29, 1984; and United States Reg. No. 4,028,309, registered on September 20, 2011. In addition, the Complainant owns valid and subsisting registrations for the ELS and ELS LANGUAGE CENTERS trademarks and related marks in over ninety jurisdictions (collectively, the "ELS LANGUAGE CENTERS Mark").
Moreover, the Complainant is the owner of dozens of domain names incorporating its trademarks, including <els.edu> and <els.com>, through which the Complainant advertises and sells its language-instruction services.
The Disputed Domain Name was registered on April 29, 2006. Although the Disputed Domain Name does not currently resolve to a website, in 2012, the Disputed Domain Name resolved to a commercial parking page with pay-per-click advertising links to websites offering services identical or similar to those of the Complainant.
After learning of the Respondent's registration of the Disputed Domain Name in 2012, the Complainant's counsel sent several cease-and-desist letters to the Respondent. On July 6, 2012, the Complainant sent a cease-and-desist letter to the Respondent requesting that the Respondent take down the website and transfer the Disputed Domain Name to the Complainant. Following this letter, the WhoIs record for the Disputed Domain Name was updated to identify the registrant as Damon Nelson of Quantec, LLC/Novo Point, LLC. On July 10, 2012, the Complainant sent a cease-and-desist letter to Mr. Nelson. Soon thereafter, the Complainant received a "Notice of Receivership and Stay", along with copies of various other documents and orders, from an individual named Joshua Cox, who identified himself as counsel for Quantec, LLC. Mr. Cox indicated that Quantec, LLC was one of several related entities subject to a receivership in the United States District Court for the Northern District of Texas, and that the Disputed Domain Name was considered a "receivership asset" subject to a stay under the court's Receiver Order of November 24, 2010. During a subsequent telephone conversation with the Complainant, Mr. Cox agreed to notify the Complainant once the stay was lifted, although the Complainant received no further communication from Mr. Cox.1 In 2011, the Respondent in this proceeding was hired to serve as manager of Quantec, LLC and Novo Point, LLC, and later acquired the assets of both entities, including the Disputed Domain Name, as part of the winding up of the receivership. On June 7, 2016, the Complainant sent a cease-and-desist letter to the Respondent in this proceeding and on the following day, the Respondent replied to the Complainant's letter with an offer to sell the Disputed Domain Name for USD 2,080. The Complainant thereafter attempted to engage in good faith negotiations with the Respondent, although such negotiations were unsuccessful.
5. Parties' Contentions
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademarks.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complaint's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the ELS LANGUAGE CENTERS Mark based on both longstanding use and its incontestable federally registered trademark. The Disputed Domain Name <elslanguagecenter.com> consists of the ELS LANGUAGE CENTERS Mark (in the singular form) followed by the generic Top-Level Domain ("gTLD") ".com".
The use of the singular form of a trademark will not avoid a determination that the domain name at issue is confusingly similar. Thus, the removal of the letter "s" is insufficient to distinguish the Disputed Domain Name from the Complainant's ELS LANGUAGE CENTERS Mark. See IG Group Limited v. Bargin Register, Inc. - Client Services / Telecom Tech Corp / URLBrokeringcom / Domain Sponsor, WIPO Case No. D2013-0179 (ordering transfer of <igmarket.net>, which incorporated the singular form of the complainant's IG MARKETS mark). Far from distinguishing the Disputed Domain Name from the ELS LANGUAGE CENTERS Mark, the omission of the final "s" seeks to take advantage of the fact that Internet users may, in attempting to locate a website owned by the Complainant, misspell the ELS LANGUAGE CENTERS Mark or forget that it is pluralized.
Moreover, the addition of a gTLD such as ".com" in a domain name may be technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's ESL LANGUAGE CENTERS Mark.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its ELS LANGUAGE CENTERS Mark. The Complainant does not have any type of business relationship with the Respondent nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for commercial gain and thus has no rights or legitimate interests in the Disputed Domain Name.
Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot reasonably be found to have made a bona fide offering of goods or services.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant's prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the ELS LANGUAGE CENTERS Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant first registered and used the ELS LANGUAGE CENTERS Mark.
The longstanding and public use of the ELS LANGUAGE CENTERS Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant's rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks). Thus, the timing of the Respondent's registration and use of the Disputed Domain Name indicates that it was made in bad faith.
Second, the Respondent's offer to sell the Disputed Domain Name for valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain Name is also evidence of the Respondent's bad faith registration and use under paragraph 4(b) of the Policy.
Third, the fact that the Respondent is known for a history and pattern of bad faith registration of domain names incorporating the trademarks of third parties is further indication that the Respondent registered and used the Disputed Domain Name in bad faith. There have been many UDRP decisions against this Respondent finding bad faith registration and use of third-party trademarks and ordering transfer or cancellation of the domain names in question. See, e.g., Blue Grass Automotive, Inc. dba Blue Grass Motorsport v. Domain Hostmaster, Customer ID: 03313550483336 / Lisa Katz, Domain Protection LLC, WIPO Case No. D2015-1511 (finding that the respondent is a serial cybersquatter); Comisión Federal de Electricidad v. Whois Privacy Services Pty Ltd. / Lisa Katz, Domain Protection LLC, WIPO Case No. D2015-2303 (noting that in 18 cases the respondent was ordered to transfer the domain name to the complainant).
Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant's ELS LANGUAGE CENTERS Mark.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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, <elslanguagecenter.com>, be transferred to the Complainant.
Lynda M. Braun
Date: October 17, 2016
1 There are several domain name disputes decided by UDRP panels in which Mr. Cox has made submissions similar to those made in the present proceeding, including the provision of documents similar to those described above and the argument that the domain name constitutes a receivership asset that cannot be transferred until the receivership stay is lifted. See, e.g., Amica Mutual Insurance Company v. Texas International Property Associates, URDMC LLC, WIPO Case No. D2010-2144; Judah Smith v. Whois Privacy Services Pty. Ltd. / URDMC LLC, WIPO Case No. D2011-0397; Barclays Bank PLC v. Quantec, LLC / Novo Point, LLC, WIPO Case No. D2012-2083; and J Barbour & Sons LTD v. Whois Privacy Services Pty Ltd./ Quantec, LLC. Novo Point, LLC, WIPO Case No. D2013-0283. In each of these cases, the respondent submitted no formal response and the panel ordered the domain name to be transferred to the complainant.