WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Signum International AG v. Mohammad Saleem
Case No. D2021-0708
1. The Parties
The Complainant is Signum International AG, Switzerland, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Mohammad Saleem, Israel.
2. The Domain Name and Registrar
The disputed domain name <learnef.academy> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2021. On March 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) indicating the Respondent registered the disputed domain name on July 10, 2019;
(d) indicating the language of the registration agreement is English;
(e) confirming that the registration agreement included an acknowledgement that the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”).
The Center sent an email communication to the Complainant on March 29, 2021, 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 April 1, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 April 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 17, 2021. 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 the member of the EF Education First group, which holds the intellectual property rights of the group.
The EF Education First group began when one Bertil Hult set up Europeiska Ferieskolan (“EF”) in Sweden in 1965. (Europeiska Feroieskolan apparently translates from Swedish into English as European Holiday School.) The parent company EF remains privately owned.
According to the Complaint, the EF group has 52,000 employees working in 114 countries on more than 50 campuses. In 2019, it was awarded The First National Bank of Omaha Award for Outstanding Service to Public Education by the NEA Foundation.
The EF group’s main website is accessed through the domain name <ef.com>, which according to Similarweb.com received 8.17 million visits in the six month period of August 2020 to January 2021. The EF group’s Facebook page has more than 79,000 followers; its Instagram page, more than 131,000 followers and its Twitter page some 49,000 followers.
The Complaint includes evidence that the Complainant has registered a stylized trademark consisting of the letters EF with a series of seven concentric circles superimposed over them:
(a) in Saudi Arabia, Registered Trademark numbers 332/73 and 332/74, which were both registered on February 21,1995, in respect of services in International Class 39;
(b) United Kingdom Registered Trademark No. UK00001568841, which was registered on March 15, 1996, in respect of services in International Classes 39 and 41;
(c) United States of America (“United States”) Registered Trademark No. 2,051,783, which was registered on April 15, 1997, in respect of services in International Classes 39 and 41;
(d) United Arab Emirates Registered Trademarks Numbers 24055 and 24054, which were registered on, respectively, January 31, 1999, and March 13, 1999, in respect of services in International Classes 39 and 41.
In addition, the Complainant has registered a number of trademarks for EF simpliciter including:
(e) United States Registered Trademark No. 2,590,961, which was registered on July 9, 2002, in respect of services in International Classes 35 and 42;
(f) European Union Trade Mark (“EUTM”) No. 2247799, which was registered on February 26, 2003, in respect of goods and services in International Classes 16, 39, 41, and 42;
(g) United States Registered Trademark No. 2, 927,108, which was registered on February 22, 2005, in respect of goods and services in International Classes 16, 39, 41, and 43.
There are also European Union and United Kingdom registered trademarks for, respectively, services and goods in International Classes 35 and 9.
According to the Registrar, the Respondent registered the disputed domain name on July 10, 2019. This was less than a month after the Complainant filed the complaint in Signum International AG v. WhoisGuard Protected, WhoisGuard, Inc. / Yousef Zatari, WIPO Case No. D2019-1485; a case in which the current Respondent submitted correspondence to the Center claiming that he had registered the domain name in issue there on behalf of one of his clients.
The disputed domain name resolves to a website headed “Learn EF – We teach English skills”. The letters “EF” in the phrase “Learn EF” are emphasized by being presented on a bright yellow circle or halo. The About Us page states amongst other things “About Us: We love teach English [sic]. And we love what we do”. There then follow promotions for various levels of English language courses. In a print out of the website in March 2021, it was claimed that the business had some 20,352 graduates, had won 96 awards and 64 employees. Partnerships with, amongst others, VISA, MasterCard and UAExchange were claimed. Two months later, the number of graduates had increased to 20,930; the number of awards to 243, the number of employees to 184 and seven certificates had been awarded.
5. Discussion and Findings
No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. The courier attempting delivery of the Written Notice was unable to complete delivery. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the registered trademarks referred to in section 4 above. For present purposes, it is sufficient to note that they are for the sign EF, either in plain letters or stylized form.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. See for example, WIPO Overview 3.0, section 1.10.
Disregarding the “.academy” generic Top-Level Domain (“gTLD”), the disputed domain name consists of the Complainant’s registered trademark preceded by the word “learn”. As this requirement under the Policy is essentially a standing requirement, the addition of that ordinary English word does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name.
If it were necessary to resolve any doubt, it is permissible to have regard to the gTLD and the contents of the website to which the disputed domain name resolves to ascertain if prima facie the Respondent appears to be targeting the Complainant and its trademark. See e.g. WIPO Overview 3.0 sections 1.11 and 1.15. While “.academy” is an open gTLD, it is usually promoted as suitable for schools and educational institutions.1 Thus, the conjunction of “learn” and the association with school and other educational institutions promotes the risk of confusion. That risk of confusion is further compounded by the apparent offering of online courses for the teaching of the English language, which appears to compete with the Complainant’s business.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated in any way with the EF group.
The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived.
From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
Moreover, it has been recognised since the earliest days of the Policy that the resolution of the disputed domain name to a website which appears to be offering educational services in competition with the services offered under the trademark by the Complainant does not qualify under the Policy as an offering of services in good faith. See for example, America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In this connection, the Panel notes that the earlier dispute, Signum International AG v. WhoisGuard Protected, WhoisGuard, Inc. / Yousef Zatari, WIPO Case No. D2019-1485, involved the domain name <learnef.com>. Email communications in that dispute were sent to, and received from, the Respondent using the same email address as the Registrar has confirmed is the Respondent’s email address in this dispute. That email address appends to what is apparently the Respondent’s name the letters “ef”. As noted above, in that dispute, the Respondent claimed he had registered the disputed domain name for a client. The Respondent registered the disputed domain name a mere two weeks after the complaint in that earlier dispute was filed.
Having regard to these matters and the facts that the Complainant’s group has been using its trademark on a very wide scale for more than 20 years before either the disputed domain name, or the domain name in the earlier case, was registered, the Panel finds the disputed domain name was registered with knowledge of the Complainant’s trademark. The Respondent is also using the Complainant’s trademark in connection with what appears to be a rival business enterprise.
As the Panel has found on the record in this case that the Respondent does not have rights or legitimate interests in the disputed domain name, therefore, it follows that the disputed domain name has been registered and is being used in bad faith.
Accordingly, the Complainant has established all three requirements under 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 <learnef.academy> be transferred to the Complainant.
Warwick A. Rothnie
Date: May 31, 2021
1 For example: “www.namecheap.com/domains/registration/gtld/academy/”.