The Complainant is New European College GmbH of Munich, Germany, represented by BPM Legal, Germany.
The Respondent is Moniker Privacy Services of Fort Lauderdale, Florida, United States of America / Mr. Li Chang, NECM of Shanghai, China. 2. The Domain Names and Registrar
The disputed domain names , , are registered with Moniker Online Services, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2017. On March 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 13, 2017, the Registrar 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 original Complaint in this proceeding concerned nine domain names, but following receipt of the registrar verification, it came to the Center's attention that six of the nine domain names had been deleted prior to the case having been filed. The proceeding was suspended on April 21, 2017 and reinstituted on May 19, 2017. The Complainant chose to withdraw the deleted domain names from the current proceeding.
The Center sent an email communication to the Complainant on May 19, 2017 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 May 30, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 22, 2017.
The Center appointed Luca Barbero as the sole panelist in this matter on July 4, 2017. 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 an international business school in Munich, Germany, which was established in October 2014 and registered with the local Court of Munich on November 10, 2014. The Complainant provides information on its services online at the domain names and , which were registered on October 15, 2014 together with the domain names and .
The Complainant's website at was first available online on October 31, 2014.
The Complainant is also the registrant of the domain names , , , , , , , , , and .
The Complainant is the owner of the German trademark registration No. 302015207630 for MUNICH NEW EUROPEAN COLLEGE The Genuine Business School (figurative mark), filed on May 12, 2015, and registered on June 12, 2015, in connection with goods and services in classes 16, 18, 35, and 41, and the European Union trademark registration No. 014391742 for MUNICH NEW EUROPEAN COLLEGE The Genuine Business School (figurative mark), filed on July 21, 2015 and registered on July 6, 2016, in connection with goods and services in classes 16, 18, and 35.
The disputed domain names , and were registered on November 30, 2014 and are not pointed to active websites.
On November 30, 2014, the Respondent registered also the domain names , , , , and , which were included in the original Complaint but were subsequently removed from these proceedings since they were cancelled by the Respondent before the Complaint was filed. In addition, the Respondent also registered the domain names , , and , which were deleted subsequent to the submission of a report of false WhoIs information by the Complainant to the competent Registry (DENIC). 5. Parties' Contentions A. Complainant
The Complainant relies on its registered trademarks cited above and also claims to have acquired common law rights in "New European College" under the Policy, as it has used this sign to identify its business and its services for many years.
The Complainant contends that the disputed domain names are confusingly similar to its trademarks, as they all contain the most formative element in the trademarks, "New European College", and the disputed domain names and also include the additional words "Munich" or "Munchen", which are part of the Complainant's trademarks and correspond to the German name of the Complainant's place of business.
The Complainant states that the fact that the Complainant's registered trademarks include additional graphical elements and the phrase "The Genuine Business School" does not hinder a finding of confusing similarity under the Policy with regard to such trademarks, since graphical elements cannot be reflected in a domain name and the addition of such a phrase is not sufficient to distinguish the trademarks from the disputed domain names.
The Complainant submits that the Respondent does not have any right or legitimate interest in the disputed domain names because:
- The term "New European College", to the best of the Complainant's knowledge and belief, only refers to the Complainant, which is also highlighted by the Google search results for the query "New European College";
- The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating its trademarks;
- There is no evidence of the Respondent's use of, or demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. In fact, the disputed domain names are not used at all;
- There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, or is commonly known by the disputed domain names or any name corresponding to the second levels of the disputed domain names.
The Complainant asserts that the Respondent registered and used the disputed domain names in bad faith for the following reasons:
- The Respondent's registration of the disputed domain names was made in bad faith to deliberately target the Complainant since i) the disputed domain names have all been registered on November 30, 2014, only three days after the Complainant was mentioned publicly for the first time, ii) two of the disputed domain names also contain a reference to the Complainant's place of business; iii) the Respondent registered the additional domain names , , , , , , , and ; and iv) the fact that the Respondent registered the disputed domain names at a time where the Complainant's trademarks had not been yet registered, does not prevent a finding of bad faith registration as such as it is clear that the Respondent was aware of the Complainant, and its registration was aimed at taking advantage of the confusion between the disputed domain names and Complainant's nascent rights;
- The Respondent's passive holding of the disputed domain names does not obstruct a finding of bad faith use under the Policy since i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use; ii) the Respondent uses false WhoIs information; iii) the term "New European College" clearly refers to the Complainant; iv) from all of the circumstances, there does not appear to be any possible or conceivable good faith use of the disputed domain names that would not be illegitimate; v) the Respondent's registration of the disputed domain names prevents the Complainant from reflecting its trademarks in corresponding domain names; vi) the Respondent has engaged in a pattern of such conduct; vii) the fact that the Respondent registered domain names that include a trademark that is obviously connected with the Complainant also supports the finding of bad faith as the very use of such domain names by someone with no connection with the products suggests opportunistic bad faith; viii) the Respondent's registration of the disputed domain names is qualified to disrupt the Complainant's business and is capable of reducing the number of visitors to the Complainant's website and adversely affect the Complainant's business; and ix) the registration of the disputed domain names by the Respondent also constitutes an abusive threat hanging over the head of the Complainant, which also supports a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: "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 directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of trademark registrations consisting of the words "New European College" in association with figurative elements and the generic words "Munich" and "The Genuine Business School".
As stated in paragraph 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), ownership of a trademark generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration, and the goods and/or services for which it is registered, are irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In addition, as indicated in paragraphs 1.10 of the WIPO Overview 3.0, figurative, stylized or design elements in a trademark are typically disregarded for the purpose of assessing identity or confusing similarity, being generally incapable of representation in a domain name.
The Panel notes that the disputed domain names incorporate the core of the Complainant's trademarks, "New European College", in its entirety, with the mere addition of the geographic terms "Munich" and "Munchen" (clearly referring to München – German version of Munich – with the omission of the umlaut) and the generic Top-Level Domain ("gTLD") ".com", which can be disregarded, being a mere technical requirement of registration without any particular relevance to the trademarks in this matter.
Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to trademarks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285.
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to demonstrate that it has rights or legitimate interests in the disputed domain names.
According to the case records, the Complainant has no relation with the Respondent and has not authorized it to use its trademarks or the disputed domain names.
In addition, there is no indication before the Panel that the Respondent might be commonly known by the disputed domain names or that the disputed domain names might have been used by the Respondent in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
In view of the above, the Panel finds that the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met. C. Registered and Used in Bad Faith
The Panel preliminarily notes that the Complainant's registered trademarks were filed a few months after the registration of the disputed domain names.
Therefore, a question arises as to whether bad faith can be found in this case since the disputed domain names were registered before the Complainant acquired registered trademark rights.
As recognized in paragraph 3.8 of the WIPO Overview 3.0, where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent. However, "in certain limited circumstances where the facts of the case establish that the respondent's intent in registering the domain name was to unfairly capitalize on the complainant's nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent's insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant's filing of a trademark application".
In the present case, as mentioned in the factual background section, the Complainant registered its domain names and on October 15, 2014 and its website at was first made available online on October 31, 2014.
The Respondent registered the disputed domain names, along with nine additional domain names including the expression "New European College", on November 30, 2014, three days after the Complainant was mentioned publicly for the first time according to the Complainant's allegations and after the Complainant was registered with the Munich court, and the Respondent has not challenged this.
In view of the timing of the registrations made by the Respondent and considering that two of the disputed domain names, as well as some of the other domain names registered by the Respondent, include also a reference to the Complainant's place of business (Munich, or München in German), the Panel finds that the Respondent's registration of the disputed domain names cannot amount to a mere coincidence.
Indeed, the circumstances of the case suggest that the Respondent, by registering the disputed domain names, intended to target the Complainant and its nascent trademark rights, and that in all likelihood, as held in 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation,WIPO Case No. D2009-0567, the Respondent would never have registered those disputed domain names were it not for the fact that the Respondent knew that they were in use or about to be used as trade marks by the Complainant.
Moreover, the Panel finds that the Respondent acted in opportunistic bad faith when registering the disputed domain names, as they are so obviously connected with the Complainant and its services that its selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain names have been registered with a deliberate intent to create an impression of an association with the
Complainant. See, along these lines, General Motors LLC v. desgate,WIPO Case No. D2012-0451 and RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran,WIPO Case No. D2010-0610.
With reference to the bad faith use, as stated in the Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and in several subsequent decisions rendered under the Policy, the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding (see paragraph 3.3 of the WIPO Overview 3.0).
In the present case, the Panel finds that the Respondent's bad faith can be inferred from several elements, namely i) the Respondent's registrations of multiple domain names that include the core of the Complainant's trademarks and are obviously connected with the Complainant, ii) the Respondent's failure to submit a Response and to provide evidence of actual or contemplated good faith use of the disputed domain names, iii) the Respondent's concealment of its identity and its use of false contact details in the WhoIs records of the disputed domain names, iv) the Respondent's pattern of conduct shown by the registration of 9 additional domain names clearly targeting the Complainant and its business.
Therefore, the Panel concludes that the disputed domain names were registered and are being used in bad faith. 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 disputed domain names , and be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: July 19, 2017
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