WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Signum International AG v. WhoisGuard Protected, WhoisGuard, Inc. / Yousef Zatari
Case No. D2019-1485
1. The Parties
The Complainant is Signum International AG, Switzerland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Yousef Zatari, Palestine.
2. The Domain Name and Registrar
The disputed domain name <learnef.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2019. On June 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 July 5, 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 July 10, 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 July 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2019. The Center received three informal email communications from the Respondent on July 10, 17 and 19, 2019. On July 21, 2019, the Center received an email communication from a third party. On August 7, 2019, the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on August 20, 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. On August 29, 2019, the Panel issued Procedural Order no. 1 to the Parties as described in section 6A below.
4. Factual Background
The Complainant is the entity responsible for trademarks and domain names within the EF Education First group of companies. The Complainant’s group is one of the world’s largest private educational organizations focusing on language, academic, cultural exchange, and educational travel programs. It was founded in Sweden by Bertil Hult in 1965 as “Europeiska Ferieskolan” or “European Holiday School”, later abbreviated to “EF”, and is now headquartered in Lucerne, Switzerland. The Complainant began using the term “EF” in commerce no later than 1983. The Complainant’s group features approximately 52,000 employees working in 114 countries in over 50 campuses across 5 continents. It has won various awards, including the NEA Foundation’s First National Bank of Omaha Award for Outstanding Service to Public Education in 2019. The Complainant’s group offers a broad range of educational programs, including academic degree and language learning courses.
The Complainant’s EF brand maintains a strong Internet and retail presence through its primary website “www.ef.com”, as well as via social medial platforms including “Facebook” (exceeding 72,000 followers), “Instagram” (exceeding 63,400 followers), and “Twitter” (exceeding 40,700 followers). The Complainant’s website at “www.ef.com” is ranked by “www.alexa.com” at 4,320th globally, while “www.similarweb.com” notes that said site received 10.33 million total visits in the six month period from August 2018 to January 2019. The Complainant is the owner of a variety of registered trademarks for the word mark EF including, for example, European Union registered trademark no. 2247799, registered on February 26, 2003, in international classes 16, 39, 41, and 42.
The disputed domain name was created on March 10, 2018. The website associated with the disputed domain name appears to feature an online language learning school focusing on the teaching of English. The logo on such website is “LEARN EF” with the “EF” element highlighted by being superimposed upon a solid circular yellow background.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant states that the Respondent has added the descriptive term “learn”, which is closely associated with the Complainant, to the Complainant’s distinctive EF registered trademark in the disputed domain name, asserting that this is confusingly similar to such mark. The Complainant states that past panels under the Policy have determined that the inclusion of a complainant’s trademark in a domain name together with a term that closely relates to and describes that complainant’s business may lead to a finding of confusing similarity between such trademark and domain name. The Complainant adds that if the website associated with the disputed domain name is also brought into the assessment, this contributes to the confusion as the Respondent is offering online language courses at such website, which are similar to the Complainant’s own offering.
The Complainant asserts that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Complainant submits that the Respondent is not commonly known by the disputed domain name and adds that the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademarks.
The Complainant submits that the Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial or fair use of the disputed domain name, adding that the Respondent offers and attempts to sell products or services directly competing with the Complainant’s own offerings on the associated website. The Complainant contends that past panels under the Policy have consistently held that selling competing goods, coupled with the unauthorized use of a complainant’s trademarks in a confusingly similar domain name, do not qualify as a bona fide offering of goods or services under the Policy. The Complainant adds that the creation of the disputed domain name on March 10, 2018, considerably post-dates the Complainant’s adoption of its EF trademark in 1983.
The Complainant notes that it maintains an international presence and portfolio of registered trademarks, adding that it has been in the education business for more than 50 years and partners with many distinguished organizations such as the British Broadcasting Corporation in connection with the dissemination of its language learning activities. The Complainant produces a variety of Internet searches across various search engines for the term “learn ef” which it notes return multiple links referencing the Complainant and its business. The Complainant concludes that the Respondent must have had knowledge of the Complainant and its activities and intended to target the Complainant’s business when it created the disputed domain name.
The Complainant contends that the Respondent has created a likelihood of confusion with the Complainant and its trademarks by offering competing goods or services and attempting to cause consumer confusion in a nefarious attempt to profit therefrom. The Complainant states that the impression given by the disputed domain name and its website would cause consumers to believe that the Respondent is somehow associated with the Complainant when, in fact, it is not.
The Complainant submits that the Respondent is using the fame of the Complainant’s trademarks to increase traffic improperly to the website listed at the disputed domain name for the Respondent’s own commercial gain, adding that such conduct constitutes bad faith. The Complainant further asserts that the Respondent’s registration and use of the disputed domain name disrupts the Complainant’s business due to the fact that the Respondent is unfairly competing with the Complainant, further constituting bad faith. The Complainant notes that the Respondent used a privacy service to hide its identity and did not respond to the Complainant’s attempts to resolve the dispute outside an administrative proceeding under the Policy, both of which it states may contribute to a finding of registration and use in bad faith under the Policy.
The Respondent did not substantively reply to the Complainant’s contentions. The informal communications received from the Respondent and the third party are addressed in section 6A.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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. Preliminary Issue: Identity of the Respondent
In the present case, background correspondence indicated that there was some uncertainty as to the identity of the Respondent. The information provided by the Registrar as to the holder of the disputed domain name was “Yousef Zatari”. On July 10, 2019, Mr. Zatari sent an email to the Center stating that the disputed domain name was not his but had been registered by him on behalf of a client named Mohammad Saleem. Mr. Zatari provided contact details for Mr. Saleem, although the Panel notes in passing that the supplied postal address appears to be incomplete. Mr. Zatari added that he would transfer the disputed domain name to Mr. Saleem immediately.
On July 17, 2019, Mr. Zatari sent an email to the Center stating that he was unable to transfer the disputed domain name as it had been locked by the Registrar. Mr. Zatari requested that a name change be made as he was “[…] not the one who is responsible for the domain […]”. On July 17, 2019, the Center acknowledged receipt of such email and informed Mr. Zatari that it was necessary for the listed registrant of record of the disputed domain name to be named as a Respondent in the Complaint in order for the Center to fulfil its administrative compliance functions.
On July 18, 2019, the Registrar sent an email to Mr. Zatari stating that it could unlock the disputed domain name at the request of the Panel and would assist in a transfer of the disputed domain name upon receipt of such request. On July 19, 2019, Mr. Zatari responded to the Registrar providing registrant data relating to the disputed domain name which he wished to be substituted in order to reflect Mr. Saleem’s interest. Such details again appear to include an incomplete postal address.
On July 21, 2019, the Center received an email from the substitute email address which Mr. Zatari had provided to the Registrar. This email was unsigned but began “My name is Mohammad and I am the owner of [the disputed domain name]”. It went on to respond to certain allegations in the Complaint.
Paragraph 1 of the Rules defines the Respondent as “[…] the holder of a domain-name registration against which a complaint is initiated.” In the present case, at the point when the Complaint was filed, the holder of the disputed domain name, from the face of the WhoIs record, was a privacy service. Upon registrar verification, the underlying holder of the disputed domain name was revealed as Mr. Zatari. In these circumstances, Mr. Zatari would typically be regarded as the Respondent in this administrative proceeding. However, section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes that the appointed panel retains discretion to determine the respondent against which the case should proceed.
The panel in Majid Al Futtaim Properties LLC v. Scitecs and Arabian Centres Company Limited, WIPO Case No. D2018-1776, was faced with a similar situation regarding a claim of third party beneficial ownership in respect of the domain name concerned. It noted:
“In cases involving an assertion by a registrant that a third party is in fact the beneficial owner of the domain name, panels have been prepared to accept that the third party should be regarded as the respondent to the complaint provided there is appropriate evidence that this is the case. They have been wary, on the other hand, of allowing such an assertion to permit a registrant to abdicate responsibility for the circumstances surrounding the registration and use of the domain name.”
The Panel adopts these comments. In the present case, there was insufficient evidence before the Panel to allow it to accept that the named third party should be substituted as the Respondent to the Complaint. Mr. Zatari had merely alleged that a third party beneficial owner existed, while providing the Center and the Registrar with a name, email address, telephone number, and an apparently incomplete postal address. An email containing an informal Response, which may or may not have been written by the alleged third party, had also been received by the Center. However, that email did not provide the Panel with any further assurance as to the true Respondent in this matter. The Panel’s confidence is not increased by the failure of the author of that email to identify itself fully.
In all of these circumstances, the Panel issued Procedural Order no. 1 to the Parties dated August 29, 2019. This requested the present Respondent, Mr. Zatari, to provide suitable evidence demonstrating that the third party disclosed by him to the Center was the beneficial owner of the disputed domain name and providing the complete postal address for such third party. The Respondent was informed that its failure to answer this request to the Panel’s satisfaction would result in the case proceeding against the present Respondent. The sender of the email dated July 21, 2019, was also requested to identify itself fully, to confirm whether it had requested the registration of the disputed domain name be effected on its behalf and whether it considered that it was the beneficial owner of the disputed domain name. Such sender was informed that its failure to answer these requests to the Panel’s satisfaction would result in said email dated July 21, 2019 being disregarded in the Panel’s assessment of the merits in this case. Said Procedural Order concluded with an invitation to the Complainant to comment on any submissions received in response thereto and extended the decision due date to September 15, 2019.
No submissions were received from Mr. Zatari or the sender of the email dated July 21, 2019 before the deadline imposed by the Panel, namely September 3, 2019. No comments were received from the Complainant. In these circumstances, the Panel is unpersuaded that it should depart from the normal rule outlined in paragraph 1 of the Rules regarding the Respondent’s identity. It is for the party alleging the existence of a third party beneficial owner to provide sufficient information and evidence to satisfy the Panel that any addition or substitution should be made in this respect. In the Panel’s view, a mere request for substitution by the holder of the disputed domain name as identified by the concerned registrar will generally not be sufficient without something more. Accordingly, the Panel determines that the Complaint should proceed against the present holder of the disputed domain name, and that the informal submissions made by the sender of the email dated July 21, 2019, will not be factored into the Panel’s deliberations.
B. Identical or Confusingly Similar
The first element of the Policy requires the Complainant to demonstrate rights in a trademark and that the disputed domain name is identical or confusingly similar to such trademark. For this purpose, the Complainant produces its EF registered trademark and the Panel accepts that it has UDRP-relevant rights in this. For the purposes of comparison with the disputed domain name, the generic Top-Level Domain (“gTLD”) suffix, in this case “.com”, is typically disregarded as wholly generic and required for technical reasons only.
Section 1.7 of the WIPO Overview 3.0 describes the test for identity or confusing similarity under this element of the Policy, noting that this typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. On such comparison, it may be seen that the Complainant’s EF trademark is reproduced in the disputed domain name in its entirety suffixed by the word “learn”. The Complainant’s EF trademark is plainly recognizable within the disputed domain name. The presence of the additional word “learn” does not prevent a finding of confusing similarity (see, for example, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. The Complainant in the present case submits that the Respondent is not sponsored by or affiliated with the Complainant in any way, that the Complainant has not given the Respondent permission to use its trademarks in any manner, that the Respondent is not commonly known by the disputed domain name, and that the Respondent appears to be offering goods or services directly competing with those of the Complainant. The Panel considers that such submissions establish the requisite prima facie case. The Panel therefore turns to the Respondent to determine whether its case contains a sufficient rebuttal of the Complainant’s case.
It is clear that the Complainant’s business under the EF trademark is substantial and of a longstanding nature. The Respondent’s adoption of the term “learnef” in the disputed domain name, which was created on March 10, 2018, significantly post-dates the Complainant’s adoption and extensive global use of its EF trademark commencing in 1983. The range of the Complainant’s global activities under said mark and the extent to which this is well-known and exclusively associated with the Complainant in the field of educational programs indicate to the Panel that it is very unlikely that the Respondent’s very recently established offering of goods and services in respect of the same line of business could be considered to be bona fide.
Other than as outlined in section 6A above, the Respondent has not engaged with the administrative proceeding and has not provided any evidence or submissions which might have rebutted the Complainant’s prima facie case. The Panel has been unable to identify any material on the present record which might suggest that the Respondent has any rights or legitimate interests in the disputed domain name. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The essence of the Complainant’s case on registration and use in bad faith is that the Respondent is using the fame of the Complainant’s trademarks to benefit its own business which is in competition with that of the Complainant. Given the well-known nature of the Complainant’s mark in the field of educational programs, including the extent and reach of its online activities, it is hard to conceive of any way in which the Respondent might have selected the disputed domain name without knowledge of the Complainant and its rights and without intent to target these, particularly as the Respondent appears to be in the same or a similar line of business. The Panel notes that the emphasis given to the letters “EF” on the website associated with the disputed domain name indicate that the Respondent is effectively adopting the Complainant’s trademark together with the descriptive word “learn” and is seeking to use this for commercial gain in competition with the Complainant and in a manner likely to cause consumer confusion. The Panel is therefore satisfied that the Complainant has made out a case that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such website conform to paragraph 4(b)(iv) of the Policy.
The Respondent has failed to provide any submissions or evidence demonstrating registration and use in good faith or indeed any response to the Complainant’s contentions. Equally, neither the Respondent nor the author of the email of July 21, 2019, came forward to answer the reasonable requests of the Panel regarding identification of the Respondent in this case. It is reasonable to infer that the true registrant of the disputed domain name or any genuine beneficial owner thereof, if acting in good faith, would be at pains to come forward to explain both their identity and their reasons for selection, registration and use of the disputed domain name. The fact that no such party has come forward, particularly in response to Procedural Order no. 1, fortifies the Panel in its conclusion that there is no good faith motivation behind the registration and use of the disputed domain name.
In all of these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been 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 <learnef.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: September 15, 2019