Complainant is inlingua International AG., Switzerland, represented by Lorenz Seidler Gossel, Germany.
Respondent is Barrie Shaw, Tuvalu.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2021. On September 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 27, 2021 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 29, 2021.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on September 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 27, 2021.
The Center appointed John C. McElwaine as the sole panelist in this matter on November 4, 2021. 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 BackgroundComplainant is a public joint-stock Company formed under Swiss law in 1968 and is engaged in language educational services through a network of licensees. Complainant is the owner of the following trademark registrations relevant to this matter:
- International Registration 1026977 for the mark INLINGUA (stylized) registered on December 4, 2009 in International Classes 09, 16, 38, 41, and 42 and designating the European Union;
- International Registration 1059835 for the mark I INLINGUA (stylized) registered on November 18, 2010 in International Classes 09, 16, 41, and 42 and designating the European Union, Australia, Colombia, and St. Martin.
- International Registration 1083170 for the mark INLINGUA (word) registered on June 14, 2011 in International Classes 09, 16, 38, 41, and 42 and designating the European Union.
- International Registration 1237439 for the mark I INLINGUA (stylized) registered on November 28, 2014 in International Classes 09, 16, 39, and 41, and designating multiple countries.
- International Registration 1252876 for the mark INLINGUA (stylized) registered on November 28, 2014 in International Classes 09, 16, 39, and 41, and designating multiple countries.
- International Registration 361953 for the mark INLINGUA (stylized) registered on October 2, 1969 in International Classes 09 and 16 and designating multiple countries.
Respondent registered the Domain Name on May 21, 2021. The Panel entered the Domain Name into an Internet browser and determined that the Domain Name does not currently resolve to a functioning website. At some point in time, the Domain Name displayed the contact information of one of Complainant’s licensees (Annex 6)
5. Parties’ Contentions A. ComplainantComplainant contends that the Domain Name must be transferred because each of the three elements required in paragraph 4(a) of the Policy have been met.
Complainant begins by discussing that the goal of Complainant is to develop a worldwide network of language schools under the INLINGUA trademark by means of licensing and franchising. Complainant contends that it has licensed more than 300 language INLINGUA centers in 35 countries worldwide, which serve more than half a million customers per year. Of the more than 300 language schools that have joined the Complainant’s network all include the word “inlingua” in their company name. Complainant asserts that in Germany there are over 70 “inlingua” language schools.
Complainant asserts that it is the owner of numerous trademarks for INLINGUA and I INLINGUA all over the world. Theses registrations include Germany and the European Union, as well as international registrations designating various other countries. Collectively, the registered trademark rights in the I INLINGUA and INLINGUA trademark are referred to as the “INLINGUA Mark”.
Complainant asserts the high profile nature of Complainant’s INLINGUA Mark is based on considerable advertising expenditures and sales successes. For example, Complainant’s licensed schools in Germany spend several million Euros each ear on local advertising alone. In addition, the turnover of Complainant’s group of companies is over EUR 100 million in Germany and over EUR 250 million worldwide. Complainant also alleges that clients of Complainant, or its affiliated language schools, include many of the world’s largest companies, international banks and governments of numerous countries. For instance, companies that regularly work with the Munich inlingua language school, include Siemens, BMW, Ciba-Geigy, Krupp, Carl Zeiss, BASF, Sony, Cannon, ELF, Agip, IBM, Philips, Levi Strauss, American Express, RanEVK Xerox, Procter & Gamble, Philipp Morris, General Motors, and Löwenbräu.
With respect to the first element of the Policy, Complainant argues that the Domain Name is extremely similar to Complainant’s INLINGUA Mark. Complainant points out that the additional element of the word “Berlin” is a merely geographically descriptive element, resulting in a likelihood of confusion due to the direct connection to Complainant’s business.
With respect to the second element, Complainant contends that there is no evidence that Respondent has any rights or a legitimate interest in the Domain Name. Complainant asserts that its INLINGUA Mark has developed into an internationally well-recognized name, and that Complainant had not authorized Respondent to use the INLINGUA Mark in any manner. Complainant also states that Respondent has not made demonstrable preparations to use Domain Name in connection with a bona fide offering of goods or services, and only seeks to profit from Complainant’s INLINGUA Mark. Because of this, Complainant concludes that Respondent’s use of Domain Name satisfies the second element within paragraph 4(a) of the Policy.
With respect to the third element, Complainant alleges that Respondent registered the Domain Name in bad faith because Complainant’s INLINGUA Mark has been active for decades, and it is unlikely that Respondent was unaware of the established rights in the mark at the time the Domain Name was registered. Moreover, Complainant alleges that the website that was accessible at the Domain Name displayed the contact information of one of Complainant’s licensees. In addition, Complainant points out that the Domain Name mimics Complainant’s licensees’ naming conventions for domain names; namely, the INLINGUA Mark followed by a hyphen and a city name; for example:
Respondent did not reply to Complainant’s contentions.
6. Discussion and FindingsAlthough Respondent did not formally reply to the Complaint, paragraph 4 of the Policy requires that in order for Complainant to succeed in this UDRP proceeding, Complainant must still prove the following assertions with evidence and demonstrate:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Because of the absence of a formal Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. Anonymous Speech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, and the applicable principles of law, the Panel’s finding on each of the above cited elements are as follows.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence to show that Complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. Complainant has provided evidence that it is the owner of numerous valid and subsisting trademark registrations for the INLINGUA Mark.
With respect to confusing similarity, the Domain Name contains the INLINGUA Mark plus the additional word, “-Berlin”. It is well-established that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a trademark in a domain name does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. In fact, multiple UDRP panels have found that the use of a mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the mark. See, e.g., Playboy Enterprises International Inc. v. Joao Melancia,WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com,WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation. v. South East Asia Tours,WIPO Case No. D2004-0388; America Online, Inc. v. Dolphin@Heart.,WIPO Case No. D2000-0713; Sysco Corporation v. Jose Castaneda,WIPO Case No. D2007-0197; Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437.
Here, the addition of “-Berlin” does not prevent Complainant’s INLINGUA Mark from being recognizable in the Domain Name. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s INLINGUA Mark in which Complainant possesses valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Because it is difficult to produce evidence to support a negative statement, the threshold for Complainant to prove a lack of legitimate interest is low. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
The Policy paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that Respondent disclosed by the Registrar is “Barrie Shaw” and the Panel therefore finds, based on the record, that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049 (“the Panel notes that the Respondent’s name is “Bestinfo” and that it can therefore not be “commonly known by the Domain Name.”)
Complainant further contends it has not, at any time, authorized, licensed, or permitted Respondent to use the INLINGUA Mark, and that Respondent is not and has never been an agent of Complainant. This is important because the Complaint indicates that information relating to the INLINGUA Mark or business was once displayed. However, the Panel recognizes that the Complaint contains only a snippet of a portion of a website purporting to show that Respondent listed contact information for one of Complainant’s licensees. Regardless, use of the INLINGUA Mark in the Domain Name by an authorized party is not on its face a bona fide offering of services. On this point, it was incumbent upon Respondent to come forward with rebuttal evidence. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269.
Lastly, the Panel finds that Respondent is currently not making any use, let alone bona fide use, of the Domain Name under paragraph 4(c), as the Domain Name resolves to an inactive webpage. It is well established that inaction or passive holding can, in certain circumstances, constitute bad faith use. See CBS Broadcasting Inc. v. Edward Enterprises,WIPO Case No. D2000-0242. Here, with no explanation from Respondent concerning its intent, their passive holding of the Domain Name incorporating the unique INLINGUA Mark does not amount to a bona fide use.
Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any right or legitimate interest and Respondent has failed to come forward with evidence to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUnder paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor S.A. v. Kristen Hoerl,WIPO Case No. D2007-1722. Complainant contends that Respondent’s registration and use of the Domain Name was in bad faith and is evidenced by (i) the fact that Complainant’s INLINGUA Mark is well-known and uniquely connected to Complaint; (ii) the website that was accessible at the Domain Name displayed the contact information of one of Complainant’s licensees; and (iii) the Domain Name mimics Complainant’s licensees’ naming conventions consisting of the INLINGUA Mark followed by a hyphen and a city name. Based on Complainant’s submissions, which were not rebutted by Respondent, the Panel agrees that Respondent must have known of Complainant’s unique INLINGUA Mark when Respondent registered the Domain Name. Furthermore, Respondent is not commonly known by the Domain Name and does not have any legitimate interest in the Domain Name. Accordingly, on the record there is no explanation or legitimate interest to justify Respondent’s choice to register the Domain Name. With no response from Respondent, this claim is undisputed and the Panel can infer bad faith particularly in light of the other elements of bad faith that are present.
Furthermore, the fact that the Domain Name does not currently resolve to a website and is being passively held does not obviate a finding of bad faith. When a domain name is being passively held, the question of bad faith use does not squarely fall under one of the aforementioned non-exhaustive factors set out in paragraph 4(b) of the Policy. The three-member UDRP panel, in Advance Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.com,WIPO Case No. D2005-0615, made the following observations in its determination that the respondent was acting in bad faith:
“(i) the complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States of America and in other countries;
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the respondent registered the domain name in 1999, and seems not to have been using the domain name;
(iv) the respondent did not reply to the complainant’s communications before the proceedings; and
(v) the respondent did not reply to the complainant’s contentions.”
Likewise, Section 3.3 of the WIPO Overview 3.0, instructs that panelists should examine the totality of the circumstances in each case and that the following factors have been considered relevant in applying the passive holding doctrine: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Id. Complainant submitted evidence that the INLINGUA Mark has been used for more than 10-years on an international basis. Respondent has not offered any evidence to rebut this conclusion.
Furthermore, by virtue of its failure to respond to the Complaint, Respondent provided no evidence of its intended use of the Domain Name. In addition, Respondent appears to have concealed its true identity by using false or grossly incomplete contact information. In light of these factors, the Panel finds that Respondent’s passive holding of the Domain Name satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Name was registered and is being used in bad faith by Respondent.
For the reasons set forth above, the Panel finds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
John C McElwaine
Sole Panelist
Date: November 17, 2021