WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DigiPen Institute of Technology Europe-Bilbao, S.L, and DigiPen (USA), LLC v. Lorraine Schmitt

Case No. DEU2021-0041

1. The Parties

The Complainants are DigiPen Institute of Technology Europe-Bilbao, S.L, Spain and DigiPen (USA), LLC, United States of America (“United States”) represented by JMR Law Group PLLC, United States.

The Respondent is Lorraine Schmitt, Germany.

2. The Disputed Domain Name, Registry and Registrar

The Registry of the disputed domain name <digipen.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is Key-Systems GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2021. On December 28, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On January 5, 2022, the Registry 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 January 13, 2022, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amendment to the Complaint on January 20, 2022. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amendment to the Complaint on January 24, 2022. The Complainant submitted a Supplemental Filing on March 29, 2022.

The Center verified that the Complaint together with the first and second amendments to the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2022. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was March 9, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2022.

The Center appointed Marilena Comanescu as the sole panelist in this matter on March 16, 2022. 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 ADR Rules, Paragraph B(5).

4. Factual Background

DigiPen Institute of Technology Europe-Bilbao, S.L, Spain and DigiPen (USA), LLC, United States are sister companies, being under a common ownership and control, collectively referred to as “the Complainant”.

The Complainant is an institute dedicated to growing innovation in the video game and animations industries. Globally, the Complainant was founded in 1988 as a computer simulation and animation company, being the first school in the world to offer a bachelor’s degree in game education. Currently the Complainant’s Europe campus offers two undergraduate degree programs, with approximately 200 full-time students and it has received numerous accolades and recognitions in its field.

The Complainant owns trademark rights for DIGIPEN in at least 14 jurisdictions worldwide, such as the following:

- the European Union Trade Mark registration number 5589114 for DIGIPEN (word), filed on December 28, 2006, and registered on November 14, 2007, covering services in Nice Classes 35, 42; and
- the European Union Trade Mark registration number 5648308 for the mark DIGIPEN (word), filed on January 29, 2007, and registered on January 22, 2008, covering goods and services in Nice Classes 9, 16 and 41.

The Complainant owns numerous domain names comprising the mark DIGIPEN such as <digipen.edu>, <digipen.info>, <digipen.online>, <digipen.blog>, <digipen.nl> or <digipen.es>.

The disputed domain name was registered on August 30, 2021, and, at the time of filing the Complaint, it was linked with a domain name parked with Sedo comprising pay‑per‑click advertising pages (“PPC”) directing visitiors to educational institutions competing with the Complainant’s services and where the disputed domain name was offered for sale.

According to the evidence submitted in the Complaint, on September 19, 2021, one of the Complainant’s representatives received an email communication from a third party address inviting it to make an offer to buy the disputed domain name.

Before commencing this proceeding, on October 5, 2021, the Complainant send a demand letter and an offer to the Respondent in relation to the disputed domain name. No response was received.

After filing the Complaint in this proceeding, the Complainant submitted Supplemental Filings dated March 29, 2022.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name to it and contends the following: the disputed domain name is identical to its trademark DIGIPEN; the Respondent has no rights or legitimate interests in the disputed domain name; and the Respondent is using the disputed domain name intentionally in a bad manner.

Further, the Complainant claims that, particularly because of its contact email address “[...]@gmail.com”, the Respondent is very likely a well-known cybersquatter with multiple domain name disputes involving third parties well-known marks decided against it, which is using various aliases such as Bruce Molsky, Ke Zhao or Ni Made.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to Article 22(1)(a) of the Commission Regulation (EC) No. 874/2004 (hereinafter, the “Regulation”), an ADR procedure may be initiated by any party where the registration is speculative or abusive within the meaning of Article 21 of the Regulation. Article 21(1) of the Regulation, provides that a registered domain name shall be subject to revocation where it is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or European Union law and where it:

(a) has been registered by its holder without rights or legitimate interests in the name; or

(b) has been registered or is being used in bad faith.

In the present ADR proceeding, the Complainant has pleaded the cumulative existence of the circumstances provided by the Regulation and ADR Rules (points (a) and (b) above). The Panel notes that the Regulation and ADR Rules list the issues under points (a) and (b) in the alternative, but nevertheless the Panel will examine both of these issues in order to reach its decision in the present ADR proceeding.

A. Preliminary Procedural Issue: Supplemental Filings

The Complainant submitted supplemental filings on March 29, 2022, containing an email correspondence received from a third party email address” and inviting the Complainant to provide an offer to buy the disputed domain name.

Neither the ADR Rules nor the Supplemental Rules make no provision for supplemental filings, except at the request of the panel (see ADR Rules, paragraph 8). Paragraph 7 of the ADR Rules advise the panel to conduct the proceeding “with due expedition” therefore, panels are typically reluctant to countenance delay through additions rounds of pleading and normally accept supplemental filing only to consider new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated.

For the above, this Panel finds irrelevant the supplemental filing submission because such correspondence does not bring anything new in this matter, to the contrary, something rather similar was already submitted as Annex to the Complaint.

B. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law

Article 10(1) of the Regulation contains a list of rights which may fulfill the definition of “name in respect of which a right is recognized or established” provided in Article 21(1) of the Regulation. Said list includes, inter alia: “registered national and European Union Trade Marks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member State where they are held: unregistered trademarks, trade names, business identifiers, company names, family names, and distinctive titles of protected literary and artistic works.”

Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be “identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or European Union law”.

In accordance with section 1.4.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)¹ , “A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint”. The Panel finds that the Complainant (through its group of companies) has rights in the European Union registration for the word trademark DIGIPEN. See also Yoox Net-a-porter Group v. Josef Huber, WIPO Case No. DEU2020-0004.

The Panel notes that the disputed domain name <digipen.eu> reproduces the DIGIPEN trademark exactly together with the “.eu” country code Top-Level Domain (“ccTLD”) which, as stated by previous .eu panels, can be disregarded, being a mere technical requirement for registration.

The Panel therefore finds that the disputed domain name is identical to the DIGIPEN trademark as per the purpose of the Paragraph B(11)(d)(1)(i) of the ADR Rules.

C. Rights or Legitimate Interests

Under the ADR Rules, the burden of proof for the lack of rights or legitimate interests of the Respondent lies with the Complainant. However, the existence of negative facts is difficult to prove, and the relevant information for the Respondent is mostly in its sole possession. Therefore, the Panel holds that it is sufficient that the Complainant makes a prima facie demonstration that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production then shifts to the Respondent to submit appropriate evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element.

The Complainant demonstrated that the DIGIPEN trademark was registered and acquired worldwide recognition before the registration of the disputed domain name.

Although properly notified with regard to the present procedure, the Respondent failed to provide a Response to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name.

Example of justification for registering or using the disputed domain name, are listed in Paragraph B(11)(e) of the ADR Rules as follows:

(i) prior to commencing this proceeding the Respondent has used the disputed domain name in connection with the offering of goods or services or that it has made demonstrable preparations to do so;

(ii) the Respondent as an undertaking, organization or natural person has been commonly known by the disputed domain name; or that

(iii) the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law.

According to the records before it, the Panel finds that the disputed domain name has been used for redirecting to a website providing references to services competing to those offered by the Complainant. The Panel notes that there is no reasonable explanation for the selection of the disputed domain name for such use. Previous UDRP panels have constantly found that the use of a domain name to host a parked page with PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s marks or otherwise mislead Internet users. See section 2.9 of theWIPO Overview 3.0. Noting the global recognition of the Complainant’s trademark that is identical to the disputed domain name, the Panel finds it is the case in the present proceeding.

Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, and having in view the other circumstance of this case, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has satisfied the condition set out at Paragraph B(11)(d)(1)(ii) of the ADR Rules.

D. Registered or Used in Bad Faith

Under Article 21(1) of the Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, lack of rights or legitimate interests and registration or use in bad faith are considered alternative requirements for a successful complaint. As the Panel has found that the Respondent lacks rights or legitimate interests in the disputed domain name no further discussion on bad faith registration or use is necessary.

Nevertheless, noting the well-known recognition of the Complainant’s trademark and the identically composition of the disputed domain name, the Panel finds it likely that the Respondent was aware of the Complainant’s DIGIPEN trademark at the registration of the disputed domain name. The Complainant has submitted evidence showing that the Respondent registered the disputed domain name well after the registration of the DIGIPEN trademark and corresponding websites.

In addition, the Panel notes that the act of identically reproducing a third party’s trademark in a domain name and using such domain name to redirect Internet visitors to a website where competing services to those of the trademark holder are promoted; offering the disputed domain name for sale both on the website under the disputed domain name and in email communications sent directly to the Complainant; failure to provide any response in this proceeding or to the Complainant’s demand letter sent prior to commencing this proceeding; and a very likely pattern of abusive conduct of the Respondent using various aliases, are further facts demonstrating use in bad faith.

The Panel therefore finds that the Respondent has both registered and used the disputed domain name in bad faith and that the condition set out at Paragraph B(11)(d)(1)(iii) of the ADR Rules has also been satisfied.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <digipen.eu> be transferred to the Complainant DigiPen Institute of Technology Europe-Bilbao, S.L, Spain ² .

Marilena Comanescu
Sole Panelist
Date: April 4, 2022

¹ Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel also refers to UDRP case law and analysis, where appropriate.

² As the Complainant DigiPen Institute of Technology Europe-Bilbao, S.L is established in Spain, a Member State of the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517.