The Complainant is inlingua International AG, Switzerland, represented by Schluep I Degen Attorneys-at-Law, Switzerland.
The Respondent is Edwin G. Solis, Costa Rica, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2019. On November 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 12, 2019, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on November 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2019. The Center received an email communication from the Respondent on December 2, 2019. On December 4, 2019, pursuant to paragraph 17 of the Rules, the Complainant requested the suspension of the proceeding for 30 days to pursue settlement negotiations with the Respondent. On January 10, 2020, the proceedings were reinstituted upon the request of the Complainant and the Response due date was extended until January 15, 2020. The Respondent did not file a substantive response but on January 16, 2020, suggested a further extension to make another effort at settlement. Absent agreement from the Complainant, and pursuant to paragraph 6 of the Rules, on January 16, 2020, the Center informed the Parties that it would proceed with panel appointment. The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 21, 2020. 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 a language education company that was organized under Swiss law in Canton Bern as a joint stock corporation (Aktiengesellschaft) in October 1968. The Complainant operates a network of more than 250 licensed language training centers in more than 30 countries (none apparently in Central America) and offers extensive online training programs, e-book materials, and translation services. The Complainant registered the domain name The Complainant has numerous registered trademarks comprised of the coined term INLINGUA alone or with a figurative logo, in a variety of countries. These include the following: Mark Jurisdiction Registration Number Registration Date INLINGUA (stylized letters) International Trademark 361953 October 2, 1969 INLINGUA (stylized letters) United States 0923232 November 2, 1971 INLINGUA Costa Rica 122237 October 2, 2000 The Registrar reports that the Domain Name was created on February 18, 2009, without indicating when this Respondent acquired the Domain Name. The Respondent, apparently an individual residing in San Pedro, Costa Rica, is named as the registrant, giving no organization name. The registrant’s email address is evidently one furnished by a Costa Rican Internet service provider, RACSA, so this does not reveal additional information about the Respondent or his business. The Respondent is known to the Complainant, however. The Complaint recounts that the Respondent was formerly employed by inlingua Washington (the inlingua licensee in Washington, DC, United States). In 2001, the Respondent met the Complainant’s representative Jürg Heiniger (now its CEO) in Miami to discuss the possibility of the Respondent becoming an inlingua licensee, as indicated in Mr. Heiniger’s signed declaration attached to the Complaint. By that time, according to the declaration, the Respondent had started a business in Costa Rica named “inlingua de Costa Rica SA”. But the Complainant, in the end, did not reach an agreement to authorize the Respondent as an inlingua licensee. It appears from the Internet Archive’s Wayback Machine that there was no developed website associated with the Domain Name until 2013, when the Respondent began to use it to advertise conference, interpretation, and translation services. In 2018, the Respondent’s website was developed further, with translation services that clearly compete with the Complainant’s online translation services. Counsel for the Complainant sent cease-and-desist messages to the contact email address for the Domain Name in 2013 and 2018, reportedly with no response, demanding that the Respondent delete the website and cease using the name “inlingua” in connection with translation, interpretation, or language teaching services, because of the risk of confusion. At the time of this Decision, the Domain Name resolves to a website in Spanish headed “Inlingua de Costa Rica”, with a colorful graphic logo of two speech balloons, advertising services of simultaneous interpretation, consecutive interpretation, translation, and related audio, webcast, conference, and video production facilities. A telephone number and email address are provided as contact details, but the website appears still to be incomplete: there is nothing listed, for example, under the headings for “Idiomas” (languages) and “Equipo de Inlingua” (Inlingua Team), although the logos of four clients are displayed. The December 2, 2019 communication from the Respondent to the Center, mentioned in the Procedural History section above, was an emailed letter on the letterhead of “Inligua De Costa Rica”, in all capital letters, including the following statement from Mr. Solis: “This is to inform you that, as legal representative of Inlingua de Costa Rica S.A., and in order to prevent any legal procedures I have made the decision to withdraw the name and cancel the domain. In a previous notification I stated my desire to purchase the franchise to which I had no response. However, I would like to take this opportunity to reiterate my proposal. Should my proposal not be positively accepted, I would respectfully request a period of about three months to migrate to our new name which includes notifying customers and undertaking all steps leading to the establishment of the new company. …” After a period of suspension, the parties did not succeed in settling this dispute, however, and the proceeding was renewed. The Respondent has not filed a Response but, as noted above, made a further suggestion that he was interested in a delay to reach a settlement, this time to “purchase the license to operate in Costa Rica.” 5. Parties’ Contentions A. Complainant The Complainant asserts that the Domain Name is confusingly similar to its well-established, registered INLINGUA trademarks, with which the Respondent was familiar as a former employee of one of the Complainant’s United States licensees, who had explored the possibility of becoming a licensee himself. Lacking such a license, the Respondent has no rights or legitimate interests in the Domain Name, in the Complainant’s view. The Complainant contends that the Respondent acted in bad faith, holding the Domain Name for years without developing a full website and essentially blocking the Complainant from planting a licensee in Costa Rica, and then creating a website offering competing online services that engendered confusion and exploited the Complainant’s well-known mark. B. Respondent The Respondent did not submit a substantive Response to the Complainant’s arguments but alternatively suggested withdrawing the Domain Name or purchasing a license from the Complainant. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Domain Name incorporates the Complainant’s coined mark INLINGUA in its entirety and adds the dictionary term “web”, which could apply to any website and does nothing to avoid confusion. Accordingly, the Panel finds the Domain Name confusingly similar to the Complainant’s mark. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. Id., section 1.7. The Panel concludes, therefore, that the Complainant has established the first element of the Complaint. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following: (i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable 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; or (ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant has demonstrated trademark rights, a lack of permission to incorporate the Complainant’s mark in the Domain Name, and the Respondent’s use of the Domain Name for competing online services. The Respondent has not come forward to demonstrate any rights or legitimate interests and tacitly admits that it would need a license from the Complainant, having approached the Complainant for one as early as 2001. The Complainant had trademark registrations long before the Domain Name was registered (even in Costa Rica), and even though the Respondent established a business with a similar name in Costa Rica, the Respondent was well aware of the Complainant’s mark by that time, having worked for a licensee in the United States, and knew that it had failed to obtain a license from the Complainant. Thus, it is highly unlikely that the Respondent could establish rights or legitimate interests in the Domain Name. Accordingly, the Panel concludes that the Complainant has established the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name) which seem to be suggested by the Complainant’s arguments, although they are not explicitly cited: “(ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) 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 web site or location.” The Respondent was clearly aware of the Complainant and its mark, having worked for a licensee and having attempted to obtain a license in 2001. It appears that the Respondent set up a business in Costa Rica with the Complainant’s name, without authorization, and the Complainant views this course of conduct, including years of holding onto an undeveloped website with a similar name, as a sort of negotiating lever to discourage the Complainant from contracting with any other potential licensee in the country. Eventually, the Respondent developed a functional website associated with the Domain Name, advertising services that in some instances (translation, particularly) compete with those that are available online from the Complainant. This conduct does not entirely fit the pattern of paragraph 4(b)(ii), as the Complainant has serviceable domain names that it has used for many years and there is no evidence of a “pattern” of similar registrations by the Respondent. And the parties only incidentally compete, geographically or in services, so it is not at all clear that the Respondent registered the Domain Name and held on to it, largely unused for many years, “primarily” to disrupt the Complainant’s business, as described in paragraph 4(b)(iii). But the Complainant’s mark is certainly well established and the extent of the Respondent’s business is not clear (nor is any mark it may lay claim to), and any confusion attracting potential clients in Costa Rica, now that the Respondent has a more fully developed commercial website, is likely to inure unfairly to the Respondent’s benefit, as described in paragraph 4(b)(iv). That amounts to bad faith for Policy purposes; the Respondent is knowingly exploiting the Complainant’s reputation. The Respondent’s instincts are correct, as revealed in his most recent communications concerning this proceeding: he needs a license to use the Complainant’s mark. The Panel concludes that the third element of the Complaint, bad faith, has been established. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and the Complainant’s request, the Panel orders that the Domain Name, W. Scott Blackmer
(stylized letters)
Sole Panelist
Date: January 23, 2020
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