WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Signum International AG v. Domains By Proxy, LLC / Hana Bakeer
Case No. D2019-0459
1. The Parties
The Complainant is Signum International AG of Lucerne, Switzerland represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domains By Proxy, LLC of Arizona, United States of America (“United States”) / Hana Bakeer of Ramallah, Palestine.
2. The Domain Name and Registrar
The disputed domain name <efonline.academy> 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 February 28, 2019. On February 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2019, 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 March 1, 2019 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 March 6, 2019.
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 the Respondent of the Complaint, and the proceedings commenced on March 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2019.
The Center appointed Steven A. Maier as the sole panelist in this matter on April 5, 2019. 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 named Complainant manages the trademarks and other intellectual property assets of the EF Education First group of companies, headquartered in Lucerne, Switzerland.
The Complainant is the registrant of various trademarks comprising or including the mark EF, including for example the following:
- United States trademark number 2927108 for the word mark EF, registered on February 22, 2005 in Classes 16, 39, 41 and 43 for goods and services including educational services;
- European Union trademark number 2247799 for the word mark EF, registered on February 26, 2003 in Classes 16, 39, 41 and 42 for goods and services including provision of language education and training.
The disputed domain name was registered on August 9, 2018.
The Complainant has produced evidence by way of screen-shots that the disputed domain name has resolved to a website at “www.efonline.academy”. The website was headed “EF Online” with a “mortarboard” logo and appeared to be offering English language tuition online.
5. Parties’ Contentions
The Complainant submits that EF Education First is the world’s largest educational organization, focusing in particular on language, cultural exchange and educational travel programs. It states that that organization was founded in 1965, that it has used the trademark EF in connection with its business since at least February 1994 and that it has owned the domain name <ef.com> since December 1994, which it has used for the purposes of its principal website at “www.ef.com”. The services offered at that website include English language tuition online.
The Complainant states that EF Education First currently employs approximately 52,000 individuals in 114 countries and that the Complainant has spent substantial time, effort and money promoting the EF brand in the United States, Europe, the United Arab Emirates and elsewhere. The Complainant contends that the EF brand has gained strong public recognition and refers in particular to its presence on Facebook, where it claims 72,000 followers, Instagram with 63,400 followers and Twitter with 40,700 followers.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It contends that the disputed domain name contains its mark EF and that the addition of the descriptive term “online” serves only to add to the risk of confusion as it describes one of EF Education First’s own areas of activity. The Complainant adds that the content of the Respondent’s website adds further to the risk of confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never licensed, authorized or permitted the Respondent to use its EF trademark, that the Respondent has not been commonly known by that name and that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Complainant contends that the Respondent is using the disputed domain name misleadingly to offer online educational services that compete with EF Education First’s own offerings.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It contends that the Respondent knew or should have known of the Complainant’s trademark EF at the time it registered the disputed domain name and that an Internet search for “ef online academy” returns multiple links relating to EF Education First. The Complainant further submits that the Respondent has used the disputed domain name in bad faith by using a name which is confusingly similar to its trademark to offer competing services. The Complainant adds that, in response to a “cease and desist” letter sent in December 2018, the Respondent replied “… are you offering to buy the domain from us?” which suggests an intent to sell the disputed domain name to the Complainant for a sum in excess of its out-of-pocket expenses.
The Complainant seeks the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 established that it is the owner of registered trademark rights in the mark EF. The disputed domain name <efonline.academy> comprises the Complainant’s mark EF together with the term “online”, which the Panel finds to be a dictionary word which does not prevent confusing similarity between the disputed domain name the Complainant’s trademark. The generic Top-Level Domain (“gTLD”) “.academy” is irrelevant to the exercise of comparison under the first element of paragraph 4(a), although it may be of significance in connection with the second and third elements. In the circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain name. While the letters EF could be argued to be generic in nature, they are combined in this case with the term “online” and the gTLD “.academy” and have been used for the purposes of a website offering similar services to those of EF Education Firstt, namely English language tuition online. In the view of the Panel, this raises an inference that the Respondent is targeting the Complainant’s mark EF. However, the Respondent has failed to participate in these proceedings and has neither provided an explanation for its choice of the disputed domain name nor advanced any submissions concerning any rights or legitimate interests that it may claim to have in the disputed domain name. The Panel having no other evidence of any such rights or legitimate interests on the part of the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
As stated above, the Respondent has used the disputed domain name for the purposes of a website offering services similar to those of ED Education First, including English language tuition online. The disputed domain name comprises the letters EF, which are identical to the Complainant’s trademark, the dictionary term “online” and the gTLD “academy” which is also consistent with teaching services. In the view of the Panel, these matters raise inferences that the Respondent was aware of the Complainant’s business and trademark at the time it registered the disputed domain name and that it registered and has used the disputed domain name in order to take unfair advantage of the Complainant’s goodwill attaching to that trademark. The Respondent having offered no answer to the Complainant’s contentions, the Panel concludes on balance that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel therefore finds that the disputed domain name has been 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 <efonline.academy> be transferred to the Complainant.
Steven A. Maier
Date: April 19, 2019