WIPO Domain Name Decision D2018-1326 for berlitzopenyourworld.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Berlitz Investment Corporation v. Registration Private, Domains By Proxy, LLC / Juan Luna Case No. D2018-1326 1. The Parties
Complainant is Berlitz Investment Corporation of Wilmington, Delaware, United States of America (“United States”), represented by Adams and Reese LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Juan Luna of Miami, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2018. On June 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 10, 2018.
The Center appointed Timothy D. Casey as the sole panelist in this matter on July 20, 2018. 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
Complainant is an international provider of language instruction goods and services, provided directly and through licensees since 1878. Complainant’s licensees provide such goods and services through the “” website and related websites, as well as through print media, language centers, bookstores, and other retail outlets throughout the world.
Complainant first used the BERLITZ trademark in 1878 and owns registrations for the BERLITZ trademark in many countries, including the United States, Registration Nos. 1946638, 0893056, 2230254, 2320901, 0524786, 2033991, 3840941, and 2561225, the earliest of which was registered on May 2, 1950 (the “BERLITZ Trademark”). Complainant’s licensees and affiliates spend millions USD each year promoting the BERLITZ Trademark, as well as goods and services sold under the BERLITZ Trademark.
The disputed domain name was registered on March 21, 2017. Since May 9, 2018, the disputed domain name has been parked at a commercial parking page showing pay-per-click advertising links to “Berlitz,” “Berlitz English,” “Berlitz Language School,” and other websites. Complainant successfully sent via email and FedEx a cease and desist letter to the contact information provided in the WhoIs record, Domains By Proxy, LLC, on May 10, 2018, who revealed the identity of the underlying registrant of the disputed domain name. On May 15, 2018, Complainant successfully resent the cease and desist letter via email and FedEx to the underlying registrant’s contact information. Respondent has not replied to Complainant’s letters. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name, which includes the BERLITZ Trademark in its entirety, followed by the phrase “openyourworld” (the “Phrase”) is confusingly similar to the BERLITZ Trademark. Complainant notes that the incorporation of a registered trademark in its entirety, regardless of the additional Phrase, is sufficient to establish that the