WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Berlitz Investment Corporation v. Ho Nim Case No. D2010-0129 1. The Parties
The Complainant is Berlitz Investment Corporation of Wilmington, Delaware, United States of America, represented by Adams and Reese LLP, United States of America.
The Respondent is Ho Nim of Shanghai, Pudong, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2010. On January 29, 2010, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain name. On February 1, 2010, A, Inc transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 3, 2010 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 February 8, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 2, 2010.
The Center appointed Fabrizio Bedarida as the sole Panelist in this matter on March 9, 2010. 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 one of the largest and best known providers of language instruction, related goods and services in the world. The Complainant owns valid registrations for the BERLITZ trademark in numerous countries. The Complainant's trademark registrations predate the registration of the disputed domain name. The Complainant is also the registrant for quite a number of domain names corresponding to and/or containing the BERLITZ trademark. 5. Parties' Contentions A. Complainant
The Complainant claims that:
1) The domain name is confusingly similar to Complainant's BERLITZ registered trademark because it is comprised entirely of the Complainant's trademark BERLITZ and the word “Serbia”, a country where the Complainant uses and promotes the BERLITZ trademark extensively. In order to substantiate this claim, the Complainant quotes a number of previous UDRP decisions, basically affirming that, the addition of a generic term to a trademark does not prevent a domain name from being confusingly similar to the trademark;
2) The Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorised the Respondent to register or use any of the BERLITZ trademarks in any manner;
3) The Respondent has never been commonly known as “Berlitz” or by a similar name;
4) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the domain name resolves to a website entitled “welcome to ” that contains sponsored links to third party websites that offer many services, including services offered by the Complainant such as “Learn a foreign Language”, etc;
5) Due to the fame of the Complainant's trademark it is not plausible that the Respondent could have been unaware of BERLITZ when he registered the disputed domain name;
6) The Respondent is using the domain name for the sole purpose of redirecting Internet users, and particularly customers and potential customers of the Complainant, from the Complainant's websites to the websites of other language instruction and related companies which may compete with the Complainant.
7) The Respondent is using the Complainant's mark to benefit commercially from the goodwill attached to BERLITZ;
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name registered by the Respondent be transferred to the Complainant:
1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it has prior rights in the trademark BERLITZ and has stated that the addition of the geographic term “Serbia” to the BERLITZ trademark is not sufficient to avoid confusion.
This Panel agrees with the Complainant's contention and previous decisions, which have affirmed that the addition of a generic term (be it a geographical expression and/or a descriptive term of goods or services) is not sufficient to avoid confusion but, on the contrary, in some circumstances this addition can even increase the chances of confusion.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to the respondent of the dispute, he or she used or made 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;
b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
c) that the respondent intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or apply for any domain name incorporating the Complainant's trademark. The Respondent does not appear to be commonly known as “Berlitz” or by a similar name and he has not alleged any facts or elements to justify prior rights and/or legitimate interest in the disputed domain name. The Respondent does not appear to make any legitimate use of the domain name for noncommercial activities. On the contrary, it appears that the Respondent uses the disputed domain name to direct consumers to websites that offer goods and/or services in competition with the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, 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 the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or
ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's 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 the holder's web site or location or of a product or service on the holder's web site or location.
Accordingly, for a complainant to succeed, the panel must be satisfied that the domain name has been registered and is being used in bad faith.
As regards the Respondent's use of the domain name, it appears that the Respondent's website is used to direct consumers to websites that offer also services in competition with those of the Complainant. By deflecting users, the Respondent has shown bad faith registration and use of the domain name that clearly falls within the example given in paragraph 4(a)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location”.
In addition, considered the notoriety of the Complainant's trademarks and in the absence of contrary evidence, the Panel finds that the Respondent had actual knowledge of the Complainant's trademark when he registered the disputed domain name. The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of the Complainant's trademark and activities at the time of the registration of the disputed domain may be considered an inference of bad faith (See Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226 and Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil, WIPO Case No. D2000-1409. “It is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. The Respondent was not authorized by the Complainant to use neither its mark nor the disputed domain name”.
Finally, the Respondent has not denied the Complainant's assertions of bad faith, has not given any justification for the registration of the domain name or substantiated or at least alleged any concurrent right or legitimate interest to the disputed domain name.
Accordingly, the Panel finds on the basis of the evidence presented that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Dated: March 22, 2010
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