WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

inlingua International AG. v. Domain Admin, Whois Privacy Corp

Case No. D2020-1937

1. The Parties

The Complainant is inlingua International AG., Switzerland, represented by Schluep/Degen
Attorneys-at-Law, Switzerland.

The Respondent is Domain Admin, Whois Privacy Corp, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <inlinguaecuador.com> (“Disputed Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2020. On July 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 27, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2020.

The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on September 21, 2020. 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 language education company organized under the Swiss law in the Canton of Bern as a joint stock corporation and is operating since October 1968. The Complainant has a network of more than 250 licensed language training centers in more than 30 countries and offers extensive online training programs, e-books materials and translation services.

The Complainant registered their domain name <inlingua.com> in May 1997 and since that date the Complainant has been using that domain name for their official website. This official website is available in English, German, French, Italian, and Spanish. Also, the Complainant uses its other official website at <inlingua.ch> (the Swiss website) and school-specific sites at domain names such as <idc.edu> for Complainant’s affiliated learning center in the United States of America.

The Complainant is the owner of the trademark INLINGUA (the term and the logo), which has been registered in many countries, including Ecuador, as example:

The Disputed Domain Name <inlinguaecuador.com> was registered on July 10, 2018. The Disputed Domain Name used to resolve to a website offering services similar to the Complainant’s and currently redirects to another website, “www.alhambrainstituto-learnspanish.co.uk”, with the same content and layout but a different header.

5. Parties’ Contentions

A. Complainant

The Complainant has asserted that the three elements required under paragraph 4(a) of the Policy for the cancellation of the Disputed Domain Name are present in this case.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established and presented enough evidence that it has rights in the registered trademark INLINGUA.

The Disputed Domain Name incorporates the entirety of the Complainant’s trademarks INLINGUA with the addition of the country name “Ecuador”.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark INLINGUA because it incorporates the trademark in its entirety, with the ending word “Ecuador”, which does not prevent a finding of confusing similarity.

It has been recognized by many UDRP panels and in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ( “WIPO Overview 3.0”) in section 1.8 that literally says: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” For example, in Allianz SE v IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287, it was established: “The addition of the geographical term “Kenya” does not suffice to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (see Playboy Enterprises international, Inc V Zeynel Demirtas, WIPO Case No.D2007-0768)”.

Also, as in most cases, the generic Top-Level Domain (“gTLD”) “.com”’ is not a distinguishing feature. In conclusion, in this case, the trademark INLINGUA is incorporated in its entirety in the Disputed Domain Name and the Disputed Domain Name is therefore confusingly similar to it. See case Arthur Guinnes Son & Co (Dublin) Limited v Dejan Macesic, WIPO Case No. D2000-1698 and America Online, Inc V Johuathan Investments, Inc and AOLLNEWS.COM, WIPO Case No. D2001-0918.

Therefore, the Panel concludes that the first element of the Policy has been established.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The consensus view among UDRP panels is that where a complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. See section 2.1 of WIPO Overview 3.0.

The Complainant contends that it is not affiliated or associated with the Respondent in any way.

The Complainant also argues that it has not authorized or given any license to the Respondent to register, use or include its trademark INLINGUA in a domain name. Also, the Complainant argues that the Respondent is not commonly known by the Disputed Domain Name nor the name “Inlingua”.

The Panel finds that the Complainant has made out a prima facie. In this case, the Respondent did not file a response, therefore it did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.

Based on the record, the Panel finds that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, or any legitimate noncommercial or fair use.

According to the evidence presented in the Complaint, at the time of filing, the website displayed in the disputed domain name had mixed content. Within the mixed content, there is information regarding Spanish courses services and in the center of the page, and some advertising banners.

In conclusion, the Disputed Domain Name used to resolve to a website offering services similar to the Complainant’s and currently redirects to the website “www.alhambrainstituto-learnspanish.co.uk”, which has the same content and layout but a different header. The Respondent is in fact advertising language schools and this could not be a bona fide offer of goods or services and accordingly cannot assert any rights or legitimate interests, due to the Respondent’s use of a well-known trademark, in the Disputed Domain Name.

The Panel visited the website resolving from the Disputed Domain Name and actually, most of the links lead to a page without serious content and to phrases without any meaning.

All this together and especially the fact that you cannot contact the “business” owner prove that there is no legitimate interest in the website <inlinguaecuador.com> because there is no individual or company responsible for the content of the website.

There is no evidence that the Respondent is commonly known by the Disputed Domain Name as an individual, business or other organization. On the contrary, the probability of confusing Internet users by the Disputed Domain Name is quite high, because the website displayed at the Disputed Domain Name offers language services, which is the main service that the Complainant provides around the world, including in Ecuador.

In this case, there is no evidence that proves that the Respondent has acquired any trademark or service mark rights regarding the term “Inlingua”. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.

For all the above-mentioned reasons the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is also fulfilled.

C. Registered and Used in Bad Faith

In this case, the Panel finds that the Respondent has registered the Disputed Domain Name in bad faith, due to the fact that it reproduces the Complainant’s well-known registered trademark INLINGUA. For this reason, before registering the Disputed Domain Name the Respondent knew or should have known the relevance and famous nature of the trademark INLINGUA, especially in the language learning services, because the Disputed Domain Name used to resolve to a website offering services, competing with those of the Complainant and also includes other types of advertising banners and currently redirects to another website “www.alhambrainstituto-learnspanish.co.uk”, which has the same contents and layout but a different header.

The Complainant and its trademark INLINGUA are well known worldwide, and are also famous in Ecuador, where the Complainant operates several language schools under the sign INLINGUA as a licensor. On account of this fact, it is highly unlikely that the Respondent has never heard of the Complainant. In addition, the Respondent is using the Disputed Domain Name to supposedly offer language lessons and as result of this fact, there is a high risk of confusion of Internet users, especially those familiar with the Complainant’s services.

As stated in section 3.1.4 of the WIPO Overview 3.0., UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can create a presumption of bad faith. This case is not an exception, it is highly likely that the Respondent knew the relevance of the trademark, reproducing it in the Disputed Domain Name, which only aggregates the name of the country Ecuador and resolving to a website, which offers services competing with those of the Complainant. The Respondent did not present any evidence to rebut the presumption of bad faith, and the Panel finds that the registration of the Disputed Domain Name was done in bad faith.

The Panel finds that the Respondent is also using the Disputed Domain Name in bad faith, to promote Spanish language courses.

The use of the INLINGUA trademark in the Disputed Domain Name, the alleged advertising of Spanish language courses, and the subsequent use of the Disputed Domain Name to unjustly profit from the Complainant’s reputation as a language school by directing the Disputed Domain Name at two different websites where it supposedly provides Spanish learning services (as a language school), are all factors supporting a finding of bad faith. This further creates confusion, as Internet users could believe that the Respondent is associated with the Complainant, which it is not.

On the basis of the distinctiveness and significant reputation of the Complainant’s registered trademark INLINGUA, and the absence of any evidence of possible good faith by the Respondent, the Panel finds that the Complainant has successfully established the third element under paragraph 4(a) of the Policy.

7. Decision

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 <inlinguaecuador.com> be cancelled.

Ada L. Redondo Aguilera
Sole Panelist
Date: October 5, 2020