WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Berlitz Investment Corporation v. Whois Privacy Services Pty Ltd, Domain Hostmaster / Lisa Katz, Domain Protection LLC
Case No. D2016-2112
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 Whois Privacy Services Pty Ltd, Domain Hostmaster of Fortitude Valley, Queensland, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, US.
2. The Domain Name and Registrar
The disputed domain name <bertlitz.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2016. On October 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2016, 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 19, 2016 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 amended Complaint on October 24, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 October 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2016.
The Center appointed Petter Rindforth as the sole panelist in this matter on December 1, 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.
The Panel shall issue its Decision based on the Complaint, the Amended Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant is the owner of a number of registered trademarks for the word BERLITZ around the world, including:
- No 1946638 BERLITZ (word), Registered at the United States Patent and Trademark Office (“USPTO”), on January 9, 1996, Class 42;
- No 2230254 BERLITZ (word), Registered at the USPTO, on March 9, 1999, Class 35;
- No 2320901 BERLITZ (word), Registered at the USPTO, on February 22, 2000, Class 16;
- No 2033991 BERLITZ (word), Registered at the USPTO, on January 28, 1997, Class 9;
- No 3840941 BERLITZ (word), Registered at the USPTO, on August 31, 2010, Class 9;
- No 2561225 BERLITZ (fig), Registered at the USPTO, on April 16, 2002, Classes 9, 16, 35, 41 and 42;
- No 184095 BERLITZ (word), Registered as Australian National Trademark on November 11, 1963; and
- No 326604 BERLITZ (word), Registered as Australian National Trademark on February, 1, 1979.
The disputed domain name <bertlitz.com> was registered on February 19, 2005. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.
5. Parties’ Contentions
The Complainant is the owner and proprietor of the registered trademark BERLITZ, that has been in use directly and through licensees since 1878. The Complainant’s licensees provide language instruction and related goods and services throughout the world, and advertise and sell goods and services through the <berlitz.com> website and related websites, as well as through print media, language centers, bookstores, and other retail outlets throughout the world. The Complainant’s licensees and affiliates spend millions of dollars each year promoting the BERLITZ trademark and goods and services sold under the trademark.
The Complainant owns valid and subsisting trademark registrations for BERLITZ in various countries and jurisdictions, including Algeria, Argentina, Australia, Austria, Bahrain, Benelux, Bolivia, Brazil, Bulgaria, Canada, Chile, China, Colombia, Costa Rica, Croatia, Cyprus, Czechia, Denmark, Dominican Republic, Ecuador, Egypt, El Salvador, Estonia, the European Union, Finland, France, Germany, Greece, Guatemala, Hong Kong, China, Hungary, India, Indonesia, Iraq, Ireland, Israel, Italy, Japan, Jordan, Kuwait, Latvia, Lebanon, Liechtenstein, the former Yugoslav Republic of Macedonia, Malaysia, Malta, Mexico, Monaco, Montenegro, Morocco, New Zealand, Norway, Oman, Pakistan, Panama, Paraguay, Peru, the Philippines, Poland, Portugal, Puerto Rico, Unincorporated Territory of the United States, United States, Qatar, Republic of Korea, Romania, Russian Federation, San Marino, Saudi Arabia, Serbia, Singapore, Slovakia, Slovenia, South Africa, Spain, Sweden, Switzerland, Syrian Arab Republic, Taiwan Province of China, Thailand, Tunisia, Turkey, Ukraine, United Arab Emirates, United Kingdom of Great Britain and Northern Ireland, US, Uruguay, and Venezuela.
The Complainant and its licensees also owns a number of domain names incorporating the BERLITZ trademarks, such as: <berlitz.com>, <berlitz.com.au>, <berlitz.asia>, <berlitzeu.com>, <berlitz-europe.com>, <berlitzschool.com>, <berlitzlanguageschool.com>, <berlitzlanguagecourse.info>, <berlitzkids.com>, <berlitzmethod.asia>, <berlitzsoftware.com>, <berlitzpublications.com>, <berlitzblog.com>, <berlitzculturalconsulting.com>, <berlitz.academy>, <berlitz.international>, and <berlitz.services>.
In mid-2016, The Complainant learned that the Respondent was using <bertlitz.com> in connection with a commercial parking page showing pay-per-click advertising links to websites purportedly offering services identical or related to those of the Complainant. On August 12, 2016, the Complainant sent a cease-and-desist letter requesting that the website be taken down and the disputed domain be transferred to the Complainant. On August 14, 2016, the Respondent replied with an offer to sell <bertlitz.com> for USD 3,100.00. The Complainant then attempted to engage in good faith negotiations with Respondent. Negotiations were not successful.
On August 29, 2016, the Complainant learned that the Respondent was using <bertlitz.com> to redirect Internet users to a website that appeared to feature harmful spyware. Upon attempting to visit the website on that date, the Complainant was greeted by a popup message warning visitors of an infection by “a spyware and a virus” that compromised certain personal information, and urging visitors to call a specified phone number for assistance.
The Complainant states that the disputed domain name is identical or confusingly similar to the Complainant’s BERLITZ trademark. The dominant element of <bertlitz.com> is “bertlitz,” which represents a common misspelling of the trademark. The additional “t” is insufficient to distinguish the disputed domain name form the BERLITZ trademark.
The Complainant further states that the Respondent has no rights or legitimate interests in respect of <bertlitz.com>. The Respondent is not and has never been commonly known by Berlitz or Bertlitz. The Respondent is not, and has never been, a licensee or franchisee of the Complainant. Furthermore, the Respondent has never been authorized by the Complainant to register or use the Complainant’s trademarks or to apply for or use any domain name incorporating the trademarks.
The Respondent is not using <bertlitz.com> in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner. The disputed domain name is at the moment directing to a commercial parking page showing pay-per-click advertising links to websites purportedly offering services identical or related to those of the Complainant. The Respondent also appears to have used <bertlitz.com> to direct Internet users to harmful spyware.
Additionally, without authorization from the Complainant, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed by the Respondent, as the BERLITZ trademark was well-known, both at the time of and ever since the time of registration, due to the Complainant’s extensive use of the trademark.
Finally, the Complainant concludes that <bertlitz.com> was registered and is being used in bad faith.
Given the global trademark registrations for the BERLITZ trademark, the Complainant’s and its licensees’ ownership of domain names incorporating the BERLITZ trademark, including <berlitz.com>, the Complainant’s international reputation, and the fact that BERLITZ is a highly distinctive trademark universally associated with the Complainant, it is not plausible that the Respondent could have been unaware of the Complainant, either at the time of registration or of the Respondent’s acquisition of the disputed domain name.
The Respondent is using <bertlitz.com> in bad faith to divert Internet users, and particularly customers and potential customers of the Complainant, to commercial parking pages with links related and identical to the services offered under the Complainant’s trademark. The Respondent generates unjustified revenues for each click-through of the sponsored links, thereby illegitimately capitalizing on the Complainant’s name and reputation. Further, the Respondent’s use of the disputed domain name in connection with a website showing elements consistent with malware or virus distribution constitutes additional evidence of the Respondent’s bad faith.
The Respondent’s bad faith is furthermore demonstrated by the Respondent’s offer to sell <bertlitz.com> to the Complainant for USD 3,100.00, an amount representing “out-of-pocket expenses” consisting of “the handling costs for this domain, including registration costs and legal fees.”
The Respondent is a well-known cybersquatter, part of a network of related entities and individuals with a long, convoluted history of UDRP proceedings and other disputes around the world.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has obtained multiple trademark registrations for BERLITZ (e.g., Registration No. 1946638, of January 9, 1996) with the USPTO, as well as in other countries.
The Panel finds that the Complainant has established rights in the BERLITZ trademark for purposes of the Policy through its trademark registrations with the USPTO. SeeJanus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive).
The relevant part of the disputed domain name is “bertlitz”. The addition of the generic Top-Level Domain “.com” is insufficient to distinguish the disputed domain name from the Complainants’ trademark.
Further, the addition of the letter “t” to the disputed domain name is insufficient to distinguish the same from the Complainant’s trademark, having in mind that the general Internet customer does not look into such details when searching quickly for a specific company or trademark. SeeMilliman, Inc. v. Wanzhongmedia, WIPO Case No. D2012-1649(where the panel noted that “few casual observers of the disputed domain name would notice the third letter “l” and indeed the Panel did not until it was pointed out in the Complaint”).
The Panel therefore concludes that <bertlitz.com> is confusingly similar to the Complainants’ trademark BERLITZ.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to 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.
By not submitting a Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainants’ prima facie case that it lacks rights or legitimate interests.
The Respondent has no rights to use the Complainants’ trademark and is not an authorized agent or licensee of the Complainants’ products, services or trademarks. There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish rights or legitimate interests in <bertlitz.com>, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
On the contrary, the Panel finds that the Respondent’s use of the disputed domain name has been take advantage of the obvious similarity with the Complainant’s trademark to mislead customers seeking for the Complainant’s goods and services to – via pay-per-click advertising links to other companies – use competitors of the Complainant. In addition, the Respondent has, at least for some time, also used <bertlitz.com> to redirect Internet users to a website that appeared to feature harmful spyware. Such use does not establish rights or legitimate interests. See Fluor Corporation v. Above.com Domain Privacy/ Huanglitech, Domain Admin, WIPO Case No. D2010-0583 (noting that it is “well established” that the use of a domain name to “trade[…] off Complainant’s trademark […] is not bona fide” and “cannot confer any rights or legitimate interests” upon a respondent); see also CIMB Group Sdn. Bhd., CIMB-Principal Asset Management Berhad v. PrivacyProtect.org / Cyber Domain Services Pvt.Ltd. WIPO Case No. D2010-1680(registration of a domain name “for the purpose of misleading or diverting consumers” cannotgive to rise rights or legitimate interests”), see also Wikimedia Foundation, Inc. v. Domain Admin, Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Domain Admin, Private Registrations Aktien Gesellschaft, WIPO Case No. D2016-1344 (noting that “upon attempting to visit the site . . . visitors are greeted by a pop-up message warning them that their computer has crashed or been infected by a virus and advising them to seek help by calling a specified toll-free number”).
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As concluded above, the Complainant’s trademark BERLITZ is well protected and well-known in a number of countries, including US – the home country of the Respondent.
The disputed domain name <bertlitz.com> is an obvious misspelling of the Complainant’s trademark, obviously used to confuse the Complainant’s customers. Thus, it is clear to this Panel that the Respondent had the Complainant’s trademark in mind when the Respondent registered the disputed domain name. See Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274 (“Respondent most likely knew that Complainant was the holder of the Marks. It would have been difficult to believe that Respondent would have registered the Domain Name without to know the foregoing. First of all, it adopted the slightest variations possible for circumventing the domain name as registered, up to the extent of a ‘typo squatting’. For that end, Respondent would necessarily have had to investigate the registries and perhaps Complainant itself”).
The disputed domain name is used for a website with sponsored links to competitors of the Complainant. In the absence of any response from the Respondent, this Panel cannot draw any other conclusion than the one that the Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, thus enabling the Respondent to earn revenues by attracting users to its website. See Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (using confusingly similar domain names to redirect web users away from a complainant’s website is evidence of bad faith).
The Panel also notes that the Respondent initially used a privacy / proxy service to avoid disclosing the Respondent’s real identity. Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. In this case, the Respondent has been involved in a number of similar domain name disputes. Therefore, the Panel concludes that the Respondent has used the WhoIs privacy registration service to increase the difficulties for the Complainant in identifying the Respondent.
As stated above, the Respondent’s use of <bertlitz.com> in connection with a website showing elements consistent with malware or virus distribution constitutes additional evidence of the Respondent’s bad faith.
Finally, the Respondent has – based on the initial transfer request from the Complainant – offered to sell <bertlitz.com> for an amount representing “out-of-pocket expenses”, an offer that is just another clear sign of bad faith.
Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith within the meaning of 4(b)(iv) of the Policy, and that the Complainant has succeeded in proving the three elements of paragraph 4(a) of the Policy.
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 <bertlitz.com> be transferred to the Complainant.
Date: December 15, 2016