The Complainant is ECDL Foundation, Ireland, represented internally.
The Respondent is 1&1 Internet Limited, United Kingdom / Lewis Dale, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2021. On December 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 10, 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 the Complainant on December 10, 2021, 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 December 13, 2021.
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 December 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2022.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 17, 2022. 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 BackgroundThe Complainant is an Irish not-for-profit social enterprise that offers individuals training and certification in their competence in the use of computers and digital tools (ECDL being an acronym of “European Computer Driving License”). The Complainant’s testing and certification program, established in 1997, is delivered through an accredited test center network in over 100 countries and once candidates complete the testing process they are awarded an ECDL certificate.
The Complainant is the owner of trademark registrations for marks consisting of the acronym ECDL (the “ECDL Mark”) in the United Kingdom and European Union. In particular, the ECDL Mark was registered in the European Union on October 7, 2005 (registration number 3430964).
The Domain Name
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the ECDL Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ECDL Mark, having registered the ECDL Mark in the United Kingdom and European Union. The Domain Name is confusingly similar to the ECDL Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that offers ECDL training and licensing services in direct competition with the Complainant without the certification from the Complainant.
The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that offers competing services, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarTo prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the ECDL Mark, having registrations for ECDL as a trademark in the European Union.
The Domain Name incorporates the ECDL Mark in its entirety with the addition of the term “uk”. The addition of a term (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and Wal-Mart Stores, Inc. v. Henry Chan,
WIPO Case No. D2004-0056.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s ECDL Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsTo succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ECDL Mark or a mark similar to the ECDL Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use.
The Respondent has used the Domain Name to operate a website that clearly impersonates the Complainant and purports to offer ECDL training and certification services in competition with the Complainant (and its authorized certification service providers) under the Complainant’s registered ECDL Mark. Such conduct does not, on its face, amount to the use of the Domain Name for a bona fide offering of goods or services or a legitimate fair use.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the 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 FaithFor the purposes of paragraph 4(a)(iii), 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 respondent 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the ECDL Mark at the time the Domain Name was registered. The Respondent’s Website purports to offer services in direct competition with the Complainant and provides detailed information on the ECDL certificates. The registration of the Domain Name in awareness of the ECDL Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent has used the Domain Name to offer ECDL training services in competition with the Complainant and also services that would allow Inter users to receive unauthorised (fake) ECDL certificates (as it is not authorised by the Complainant to issue ECDL certificates). Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the ECDL Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(vi)); and furthermore, the use of the disputed domain name to issue unauthorised (fake) ECDL certificates is itself indicative of bad faith (see section 3.4 of the WIPO Overview 3.0).
Accordingly, the Panel finds that the Respondent has registered and used 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
Nicholas Smith
Sole Panelist
Date: January 24, 2021