Complainant is Berlitz Investment Corporation of Wilmington, Delaware, United States of America ("United States"), represented by Adams and Reese LLP, United States.
Respondent is China Capital Investment Limited of Hong Kong, China, represented by Morton & Associates, United States. 2. The Domain Name and Registrar
The disputed domain name (the "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 October 28, 2016. On October 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 2016, 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 November 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2016. The Response was filed with the Center on December 1, 2016.
A supplemental filing by Complainant was submitted to the Center on December 9, 2016.
The Center appointed Clive L. Elliott as the sole panelist in this matter on December 9, 2016. 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.
On December 9, 2016, the Center received a supplemental filing by Respondent in response to Complainant's supplemental submissions.
On December 17, 2016, the Center received a second supplemental filing by Complainant. 4. Factual Background
Complainant in this administrative proceeding is Berlitz Investment Corporation, incorporated in the state of Delaware, with headquarters in Wilmington, Delaware, United States. Complainant is the registered owner of the trade mark BERLITZ and has been using it in trade since 1878 ("Complainant's Mark").
Respondent is a venture capital firm involved in investing in the domain name industry. It is a limited liability company duly organized and existing under the laws of Hong Kong.
According to WhoIs the Domain Name was registered on January 8, 2016. 5. Parties' Contentions A. Complainant
Complainant states that in mid-2016, it became aware that Respondent was using the Domain Name in connection with a commercial parking page showing pay-per-click ("PPC") advertising links to websites purportedly offering services identical or related to those of Complainant. On August 12, 2016, Complainant sent the registrant, via email and Federal Express to the then-current contact information in the WhoIs entry, a cease-and-desist letter requesting that the website be taken down and the Domain Name be transferred to Complainant. No response was received from Respondent. Complainant asserts that following receipt of Complainant's cease-and-desist letter Respondent then changed its email address and telephone number in the WhoIs records. Complainant notes that as at October 5, 2016, the Domain Name directs to a website displaying a "Coming Soon" message.
Complainant states that it, and its predecessors in title, have been using Complainant's Mark directly and through licensees since 1878, in the provision of language instruction and related goods and services throughout the world. Complainant's licensees advertise and sell goods and services through their principal website at and related websites, as well as through print media, language centers, bookstores, and other retail outlets throughout the world.
Complainant assets that since its first use in 1878, Complainant's Mark has been promoted continuously and extensively and each year Complainant's licensees and affiliates spend millions of dollars promoting Complainant's Mark and goods and services sold under the mark.
Complainant states that it owns valid and subsisting registrations for Complainant's Mark in numerous countries worldwide, including Algeria. Complainant also states that it and its licensees own many domain names incorporating Complainant's Mark.
Complainant asserts that the Domain Name is identical or confusingly similar to Complainant's Mark, as the dominant element of the Domain Name is Complainant's Mark in its entirety, and the addition of "-algerie" does not distinguish the Domain Name, as the term "algerie" represents the French name for the country of Algeria.
Complainant believes that the addition of "-algerie" serves to increase the contention of confusing similarity rather than to differentiate the Domain Name. Complainant advises that its licensees maintain 3 Berlitz Language Centers in Algeria, and promote Complainant's mark extensively in that country, including through a website directed to customers and potential customers in Algeria located at the domain . Complainant states that it also owns several other domain names incorporating countries or cities where it maintains establishments. Because Complainant's Mark is associated with Complainant within Algeria itself, the public could easily conclude that the addition of "-algerie" to "BERLITZ" indicates that the Domain Name will direct to the website for Complainant's operations in Algeria.
Complainant states that it is the exclusive owner and has rights to Complainant's Mark, as evidenced by its registrations and widespread use, and asserts that it is a distinctive and well-known mark. Complainant notes that to its knowledge Respondent's name is not "BERLITZ", and Respondent is not and has never been commonly known by these names. Respondent is not, and has never been a licensee or franchisee of Complainant and furthermore, Respondent has never been authorized by Complainant to register or use Complainant's Marks or to apply for or use any domain name incorporating Complainant's Mark.
Complainant submits that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, nor in a legitimate noncommercial or fair manner and the Domain Name was registered and is being used in bad faith. Complainant suggests that given the global trade mark registrations for Complainant's Mark, its continuous use for 138 years, Complainant's and its licensees' ownership of domain names incorporating Complainant's Mark, including and , Complainant's international reputation, and the fact that BERLITZ is a highly distinctive mark universally associated with Complainant, it is highly unlikely that Respondent could have been unaware of Complainant at the time of registration of the Domain Name.
Complainant asserts that Respondent has been using the Domain Name in bad faith to divert Internet users, and particularly customers and potential customers of Complainant, to websites purportedly maintained by Complainant or offering services identical or closely related to those of Complainant.
Complainant says it has reason to believe that Respondent is the owner of hundreds of thousands of other domains and has a pattern of using its domain names to distribute malware, which Complainant submits is further evidence of bad faith registration. B. Respondent
Respondent denies Complainant's allegation that there is a likelihood of confusion between Complainant's Mark and the Domain Name and says further that the Domain Name incorporates three separate terms, namely, "berlitz", "-" and "algerie", while Complainant's Mark only encompasses the term "berlitz", and the Domain Name has a different sight, sound and commercial impression from Complainant's Mark. The additional terms, "-" and "algerie", in the Domain Name make it so that the aforesaid are not confusinglysimilar, and the likelihood of confusion is minimized by the fact that the additional term, "algerie", does not relate to the business of Complainant, which is purported to be "language instruction and related goods and services."
Respondent contends that it has rights and/or legitimate interests in the Domain Name because both "Berlitz" and "Algerie" are common surnames and "Algerie", in the context of the Domain Name, is not a "French word for the country of Algeria."
Respondent confirms that as part of its business model, it does at times purchase domain names in bulk and upon determining that devoting substantial resources in developing the domain name is not in its best interest, Respondent posts parking and landing pages with PPC links.
Respondent advises that it purchased the Domain Name because it comprised two surnames, which no third-party could claim exclusive rights.
Respondent states that it did not have either actual, or constructive knowledge of Complainant and its trade mark portfolio and thus, it was not possible for Respondent to register the Domain Name with Complainant, or its trade mark, in mind. The fact that Respondent was unaware of Complainant's Mark is evidenced by the fact that none of the links that appeared on the parking page referred to Complainant's business activities. The links displayed were labeled as "Related Links", i.e., related to Domain Name, with a number of them being generic terms such as "Construction Services" and "Company Services". Six out of the ten links appearing on the parking page mentioned "Algerie", because the term makes up the Domain Name and is thus "related".
Respondent suggests that Complainant has not met its burden of proof as it has failed to provide anyobjective evidence that Respondent registered the Domain Name with Complainant in mind, and notes further that Complainant has failed to provide factual evidence to support its allegations of being a well-known mark, such as precise sales figures, advertising expenditures, etc.
Respondent states that it is a venture capital firm involved in investing in the domain name industry and at no point throughout its existence has Respondent ever delved into the realm of language instruction or any related goods and services. Respondent also notes that Complainant has failed to submit proof of its current and ongoing business activities in China or, more specifically, Hong Kong, where Respondent is based.
Respondent denies that it has used the Domain Name to target or disrupt the business of Complainant, or any other trade mark owner, and confirms that it is not a competitor of Complainant.
Respondent further denies that there is any indication that any of the links offered language instructional services or anything related to the business that Complainant is engaged in, nor has it any intention of diverting Internet traffic from Complainant to the firms promoted by the advertisements and links.
Respondent notes that Complainant has failed to produce evidence to support its claim that Respondent is distributing malware through the Domain Name, aside from a "blog article" which Respondent contends is not from a reputable news organization, is libelous in nature and should not be accepted as objective evidence. C. Complainant's supplemental submissions
Complainant has requested that supplemental submissions be considered in the interests of fairness and due to assertions by Respondent in the Response, being:
(a) questioning the fame and well-known status of Complainant's Mark;
(b) asserting the Domain Name was selected based on the significant of "Berlitz" and "Algerie" as surnames;
(c) Additional information discovered since laying the initial Complaint regarding bad faith registration;
(d) arguments concerning confusingly similarity; and
(e) assertions that the PPC links were not related to services offered under Complainant's Mark.
Complainant advises that, following Respondent's query about the reach of Complainant's business presence and name recognition, in its 138 years of operation, it has rendered services to millions of customers around the world, including royalty, heads of state, business magnates, artists, performers, and sports heroes. Complainant's worldwide locations train hundreds of thousands of new students per year. Throughout history, no institution has taught languages to more people than Complainant. In 2015 alone, Complainant generated over USD 560 million in net sales and had approximately five thousand contracts with corporate clients, including contracts with some of the largest corporations in the world. Complainant spends millions of dollars each year advertising and promoting products and services under Complainant's Mark, including over USD 15 million in 2015 alone. Within the past six months alone, two websites, "www." and "", have received approximately 300,000 unique visitors seeking information about products and services offered under the BERLITZ mark. The first result for "Berlitz" in a Google search directs to "www.", and the first several pages of search results all relate to authentic BERLITZ products and services. Additionally, two of the relevant social media pages representing the BERLITZ mark, Berlitz U.S. and Berlitz Algeria, each have over thirty-three thousand "likes" on Facebook.
Complainant asserts that the well-known status of Complainant's Mark is not limited to the United States as Complainant's licensees operate over five hundred BERLITZ-branded locations in more than seventy countries. Use and promotion of the BERLITZ mark is extensive in Asia, where there are more than ninety BERLITZ-branded locations. Complainant's licensees have offered products and services under the BERLITZ mark in Asia since at least as early as 1968. Over twenty percent of Complainant's sales derive from Asia, including more than USD 55 million in net sales over the first six months of 2016.
Complainant stats that its licensees operate eleven BERLITZ-branded locations throughout China. The main websites for these locations are at the domains and . The first BERLITZ location in China opened in 2000, and Complainant's Chinese operations have since expanded to ten locations. Complainant owns numerous trade mark registrations in China, the first of which, 貝立茲 (BERLITZ in Chinese), registration number 508582, registered in 1989. In Hong Kong, Complainant's licensees have offered products and services under the BERLITZ mark since at least as early as 1993. Complainant's first Hong Kong trade mark registration, for the word mark BERLITZ, was issued in 1965. Complainant's China locations serve many internationally recognized brands such as General Motors, IBM, Procter & Gamble, Daimler, Caterpillar, Pfizer, ConocoPhillips, SAP, GE, Bayer, and Siemens.
Complainant questions Respondent's claimed unfamiliarity with Complainant's Mark as Complainant's BERLITZ-branded products and services are widely known throughout Asia. The BERLITZ Hong Kong language center is currently located less than five kilometers from Respondent's principal place of business, and was less than three kilometers away from its previous location.
Complainant notes that in its Response, Respondent alleges that it has rights and/or legitimate interests in the Domain Name, because both "Berlitz" and "Algerie" are common surnames and that it selected the Domain Name for the significance of those surnames and not for the significance of BERLITZ as a trade mark and "Algerie" as the French term for the country of Algeria.
Complainant contends that the a Google search for "Berlitz" yields over four million results, the first several pages of which all relate to BERLITZ-branded products and services, and a Google search for "Algerie" demonstrates that the primary significance of the term is as the French word for the country of Algeria, where French is the common language.
Complainant suggests that Respondent's activities in relation to the Domain Name and its other domain names belie its argument that it considers "Algerie" a surname and confirms its awareness of the significance of "Algerie" as a placename. Several of the PPC links from Respondent's previous commercial parking page used the term "Algerie" in reference to the country of Algeria (e.g., "Air Algerie," the national airline of Algeria; "Voyage En Algerie," which translates to "Travel in Algeria"; "Agence de Voyage Algerie," which translates to "Travel Agency Algeria"; and "Algiers, Algeria," which refers to the capital of Algeria). Respondent also owns various other domain names incorporating the terms "Algerie" or "Algeria" (e.g., , , ).
Complainant has also learned (after filing its Complaint) that the domain name was registered by China Capital Investment Limited, of Antwerp, Belgium, on September 28, 2016, using the same email address as that previously listed for Respondent.
Complainant contends that Respondent's claim that it selected the Domain Name based on the significance of "Berlitz" and "Algerie" as surnames lacks credibility as Respondent is based in Hong Kong and, according to Respondent's own evidence, there are no individuals by the surnames "Berlitz" or "Algerie" in China. There is, however, extensive use of the BERLITZ mark throughout China.
Respondent argues that the addition of "-" and "algerie" are sufficient to distinguish the Domain Name from Complainant's Mark, in part because the term "algerie" "in no way relates to the business of Complainant". The addition of the hyphen does not distinguish the Domain Name from Complainant's Mark.
In arguing that likely confusion is minimized by the addition of the term "algerie", Respondent states that "'algerie' in no way relates to the business of Complainant". This statement is factually inaccurate. "Algerie" is the name of Algeria in the French language, and Algerie relates to Complainant's business in the sense that Algeria has been a significant market for BERLITZ-branded services for more than 100 years. Complainant's presence in Algeria includes current locations in Algiers and Oran, with a third location scheduled to open in Hassi Messaoud.
Complainant states that it owns several trade mark registrations in Algeria, the first of which, BERLITZ, was registered in 1953. Complainant claims that Respondent's statement that the term is not a French word for the country of Algeria is easily contradicted by any publicly accessible French-English dictionary, and given that French is a common language in Algeria, it is a term widely used both within and in reference to the country.
Respondent argues that none of the links that appeared on the parking page referred to Complainant's business activities, namely, language instruction and related goods and services. Complainant refutes this argument claiming that six of the ten links referenced the country of Algeria and, more specifically, services for those travelling to Algeria (including links translating to "Travel in Algeria" and "Travel Agency Algeria").
Respondent's claims, many of the services offered under the BERLITZ mark are travel-related. Such services include, for example, coordination of foreign-study programs and other international travel. Complainant's licensees also offer various products and materials specifically developed for international travelers, including, for example, BERLITZ-branded, country-specific "Pocket Guides," which are the world's best-selling travel guides.
Complainant states that since filing its Complaint, it has discovered via LinkedIn additional information related to Respondent's representatives' involvement in a network of entities known for bad faith activity in relation to trade marks and domain names.
Complainant contends that this newly discovered information demonstrates that Respondent is involved in a network with a pattern of behavior intended to deprive rightful trade mark and other domain name owners of their domain name registrations.
Also relevant to the bad faith element is the newly-discovered registration of the domain name . Notably, this domain was created on September 28, 2016, less than two months after Respondent's receipt of Complainant's letter of August 12, 2016. Complainant asserts that Respondent's registration of a second domain name incorporating Complainant's Mark after Complainant had informed Respondent of its trade mark rights, illustrates Respondent's disregard for Complainant's trade mark rights, and further demonstrates a pattern of behavior intended to deprive rightful trade mark owners of their domain name registrations.
Complainant claims that Respondent's websites show elements consistent with malware or adware distribution. Upon visiting the website at on December 8, 2016, Complainant was greeted by an auditory alarm and pop-up message urging visitors to call a specified phone number for assistance. This newly discovered information thus serves as additional evidence of Respondent's pattern of bad faith activity. D. Respondent's reply
Respondent submits that no weight should be given to Complainant's Supplemental Submission as it does not contain any new facts or legal principles that could not have been anticipated at the time the Complaint was submitted, and is in effect a reply to the arguments raised by Respondent in its Response.
Respondent notes that Complainant asserts that it could not have reasonably anticipated any challenge to the fame and notoriety purportedly enjoyed by Complainant's Mark. Respondent claims that Complainant has introduced figures including sales profits and advertising expenditures together with public exposure details as supplementary evidence when they would have been available at the time of the Complaint and as they were not included in the initial submission Respondent submits that the Panel should accord it no weight.
Further, Complainant asserts that that its Supplemental Submission must be accepted because Respondent's argument about the PPC links previously shown on the website is factually inaccurate. This, Respondent asserts, is evidence of how Complainant has not introduced any new evidence or principles of law, but is simply replying to Respondent's contentions.
Respondent considers that information regarding its counsel and his LinkedIn page is irrelevant to a proceeding involving a domain with which that counsel has not been involved with prior to this action. Respondent claims that on November 1, 2016, its counsel contacted counsel for Complainant and indicated that he represented Respondent. Thereafter, Complainant had a month in which it could have sought to amend its pleading in light of the newly discovered information, had Complainant deemed it to be relevant. Given the fact that Complainant did not, in fact, amend its pleading, it is evident that involving Respondent's counsel in this proceeding, at this juncture, is nothing more than an attempt to bolster Complainant's claims of bad faith. 6. Discussion and Findings Procedural Issues
As noted above, Respondent challenges Complainant's supplemental submissions and submits that it does not contain any new facts or legal principles that could not have been anticipated at the time and is no more than a reply to the arguments raised by Respondent in its Response.
The UDRP Rules provide the panel sole discretion to determine the admissibility of evidence. This may include an unsolicited filing of this type. The key issue is whether the supplemental submissions are relevant, whether they assist the Panel in reaching a decision and do not act unfairly or put a party at a disadvantage. Procedural efficiency is also a consideration, particularly given that these types of proceedings are meant to be expeditious, efficient and relatively inexpensive. Most panels have permitted unsolicited filings provided "exceptional circumstances" exist.
In this case both parties have filed relatively extensive submissions and Respondent has had the opportunity to respond to Complainant's supplemental submissions. Accordingly, both parties have had sufficient opportunity to put their argument's forward.
On balance, the Panel is satisfied that in relation to Complainant's supplemental filing exceptional circumstances exist in this case. While there is certainly some merit in Respondent's argument that Complainant's supplemental filing is in effect a reply, it is also fair to say that Respondent raised a number of affirmative matters or allegations in its Response and arguably this entitled Complainant to respond to these matters or allegations. It is not unreasonable for Complainant to be given the opportunity to respond to specific challenges made in relation to the fame and well-known status of Complainant's Mark; the assertion that the Domain Name was selected based on the significant of "Berlitz" and "Algerie" as surnames and finally assertions that the PPC links were not in fact related to services offered under Complainant's Mark. In addition, Complainant was entitled to raise additional information which had come to light since making the Complaint.
Additional arguments concerning confusingly similarity amount to an attempt to reargue the same points and this is not proper subject matter of a supplemental filing and is not taken into account.
As to Complainant's second supplemental submission, while the Panel also has a discretion to admit this submission, as it was filed even later than the above supplemental submissions and after both Parties had had adequate opportunity to make their case, it was not taken into account by the Panel. A. Identical or Confusingly Similar
Complainant has established long-standing use in the course of trade (since in or about 1878); and registration of Complainant's Mark. Complainant presented a prima facie case in support of its rights in Complainant's Mark. Respondent challenged that position. Complainant in turn responded in its supplemental submission. It expanded on its earlier submission and relevantly provided support for its contention that its prior reputation and rights resided in Algeria, but also in the country in which Respondent resides, namely China. As a result, the Panel is satisfied that Complainant has relevant rights in Complainant's Mark.
Respondent submits that the Domain Name has a different sight, sound and commercial impression from Complainant's Mark. The Panel disagrees. Complainant contends that the Domain Name incorporates Complainant's Mark in its entirety, with the first word element "berlitz" being identical to Complainant's Mark and that the additional word "algerie" is likely to be regarded as the designation of country of Algeria, albeit according to its French spelling. The hyphen or dash is of no real consequence in this analysis.
The Panel accepts that this is the primary significance the word "Algerie" is likely to have in a domain name context and that when assessed in conjunction with the dominant BERLITZ mark this is sufficient to make a finding of confusing similarity.
Further, Respondent argues that both "Berlitz" and "Algerie" are surnames. Complainant responds by contending that they are not well-known surnames in China.
Complainant has established that it has relevant rights in the word "Berlitz" in so far as it comprises in its entirety Complainant's Mark. The Panel infers that the primary significance of "Algerie" in the context of the Domain Name is likely to be the designation of the North African country known by that name, whether spelt in English or French. As a result, the Panel is satisfied that the Domain Name is confusingly similar to Complainant's Mark.
It is therefore found that Complainant has rights in Complainant's Mark, that Complainant's Mark comprises a dominant part of the Domain Name resulting in a confusing similarity between the Mark and the Domain Name, and that the requirements of paragraph 4(a)(i) of the Policy are met. B. Rights or Legitimate Interests
Respondent is not apparently affiliated with Complainant and has not been authorized by Complainant to use and register its trade marks or to seek the registration of any domain name incorporating Complainant's Mark. The registration and use of Complainant's Mark preceded by a significant margin the registration of the Domain Name. The Domain Name makes an obvious and direct reference to Complainant's Mark, albeit in conjunction with the geographical name Algeria/Algerie.
Respondent disputes this position. It says that as part of its business model, it does from time to time purchase domain names in bulk and if appropriate posts parking and landing pages with PPC links. Respondent is entitled to do so. In this particular case, it justifies that action on the basis that
the Domain Name comprised two surnames, which no third-party could claim exclusive rights to. Further, Respondent asserts that it was unaware of Complainant's alleged rights and interests in Complainant's Mark and therefore lacked actual or constructive knowledge.
In its supplemental submissions, Complainant raises a number of issues which it says points towards questionable and suspicious behaviour on Respondent's part, including a pattern of behaviour intended to deprive rightful trade mark and domain name owners of the domain name registrations. These allegations are speculative and do little to advance Complainant's case, particularly as Respondent openly accepts that it is involved in bulk purchasing of domain names and parking certain of these domain names.
The Panel is however influenced by Complainant's submission, which includes quite specific details about Complainant and/or its licensees operations of eleven BERLITZ-branded locations throughout China; Complainant's trade mark registrations in China and Complainant's China locations serving many internationally recognized brands/companies.
Complainant therefore questions Respondent's claimed unfamiliarity with Complainant's Mark on the basis that Complainant's BERLITZ-branded products and services are widely known throughout Asia. This has a direct bearing on this ground and the subsequent ground of bad faith.
Having carefully considered the party's arguments, the Panel is unable to accept Respondent's submission as to why it was entitled to incorporate Complainant's Mark in the Domain Name and why Respondent has a legitimate interest in the Domain Name, which as found above, is confusingly similar to Complainant's Mark. The Panel accordingly finds that in this case Respondent's conduct is not consistent with any rights or legitimate interests on Respondent's part.
It is therefore established that Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Respondent has registered and used the Domain Name in bad faith.
Under the circumstances the Panel infers that Respondent knew or must have known of Complainant's Mark at the time it registered the Domain Name. BERLITZ is a long-standing and widely known trade mark with a well-established and widespread international reputation, including in both Algeria and China.
The Panel observes that Respondent's business model is perfectly legitimate and that it would be entitled to register, park or sell a generic or overtly geographical domain name, including the country name Algeria/Algerie. However, in this Panel's view, the situation is quite different where the geographical designation is used with a well-known, arguably famous trade mark, as is the case here.
Accordingly, the Panel concludes that the Domain Names were registered and used in bad faith in accordance with paragraph 4(a)(iii) 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 Domain Name, , be transferred to Complainant.
Clive L. Elliott Q.C.
Sole Panelist
Date: December 16, 2016
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