Complainant is Berlitz Investment Corporation of Wilmington, Delaware, United States of America (“United States”), represented by Adams and Reese LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Juan Luna of Miami, Florida, United States.
The disputed domain name <berlitzopenyourworld.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2018. On June 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2018, 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 June 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 10, 2018.
The Center appointed Timothy D. Casey as the sole panelist in this matter on July 20, 2018. 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.
Complainant is an international provider of language instruction goods and services, provided directly and through licensees since 1878. Complainant’s licensees provide such goods and services through the “www.berlitz.com” website and related websites, as well as through print media, language centers, bookstores, and other retail outlets throughout the world.
Complainant first used the BERLITZ trademark in 1878 and owns registrations for the BERLITZ trademark in many countries, including the United States, Registration Nos. 1946638, 0893056, 2230254, 2320901, 0524786, 2033991, 3840941, and 2561225, the earliest of which was registered on May 2, 1950 (the “BERLITZ Trademark”). Complainant’s licensees and affiliates spend millions USD each year promoting the BERLITZ Trademark, as well as goods and services sold under the BERLITZ Trademark.
The disputed domain name was registered on March 21, 2017. Since May 9, 2018, the disputed domain name has been parked at a commercial parking page showing pay-per-click advertising links to “Berlitz,” “Berlitz English,” “Berlitz Language School,” and other websites. Complainant successfully sent via email and FedEx a cease and desist letter to the contact information provided in the WhoIs record, Domains By Proxy, LLC, on May 10, 2018, who revealed the identity of the underlying registrant of the disputed domain name. On May 15, 2018, Complainant successfully resent the cease and desist letter via email and FedEx to the underlying registrant’s contact information. Respondent has not replied to Complainant’s letters.
Complainant contends that the disputed domain name, which includes the BERLITZ Trademark in its entirety, followed by the phrase “openyourworld” (the “Phrase”) is confusingly similar to the BERLITZ Trademark. Complainant notes that the incorporation of a registered trademark in its entirety, regardless of the additional Phrase, is sufficient to establish that the disputed domain name is confusingly similar. Complainant notes that the Phrase is irrelevant in terms of differentiating or distinguishing the disputed domain name from the BERLITZ Trademark. In particular, Complainant contends that the Phrase, especially when combined with the BERLITZ Trademark, is likely to be perceived as an advertising slogan for Complainant’s language instruction services, implying that learning new languages will allow one to broaden their horizons. Complainant further notes that the Phrase has been used in numerous advertisements by various third parties and is similar to Complainant’s slogan “Helping the World Communicate.” Likewise, Complainant contends that the addition of the generic Top-Level Domain (“gTLD”) “.com” does not affect the analysis.
Complainant further contends that Respondent’s name is not “Berlitz” and that Respondent is not, and never has been, commonly known by the name. Complainant states that Respondent has never been a licensee or franchisee of Complainant or otherwise authorized to register, use or apply for any domain name incorporating the BERLITZ Trademark. Complainant further contends that Respondent has not demonstrated use of or preparation to use the disputed domain name in connection with a bona fide offering of goods or services, as evidenced by Respondent’s use of a parking page and pay-per-click advertising links. Finally, the similarity between the disputed domain name and the well-known, long pre-existing BERLITZ Trademark, according to Complainant, makes it impossible for Respondent to pretend that the disputed domain name was intended for use in the development of legitimate activities.
As for evidence of registration and use in bad faith, Complainant contends that the disputed domain name was registered despite Complainant’s 140 years of continuous use of the BERLITZ Trademark, which is highly distinctive and universally associated with Complainant. Complainant asserts that is not plausible that Respondent was unaware of Complainant at the time of registration. By using the disputed domain name for a commercial parking page showing pay-per-click advertising links to “Berlitz” identified websites, Respondent seeks to attract consumers interested in Complainant’s services, then encourages consumers plausibly assuming Complainant owns or endorses the parking page, to visit third-party websites thinking they are associated with Complainant. In this manner, Complainant contends that Respondent generates unjustified revenue and is illegitimately capitalizing on Complainant’s name and reputation, all of which evidences bad faith usage.
Complainant further contends that Respondent has demonstrated a pattern of conduct indicative of bad faith registration and use of domains incorporating others’ trademarks, including INNOVA, MYSPACE and UNIVERSIDAD DOMENICANA, among over 100 domain names registered to Respondent.
Respondent did not reply to Complainant’s contentions.
Complainant’s use of the BERLITZ Trademark as early as 1878, more than 140 years prior to registration of the disputed domain name, and Complainant’s registration of many trademarks among the BERLITZ Trademark since at least 1950, are more than sufficient to establish that Complainant has trademark rights in the BERLITZ Trademark.
Complainant contends that the disputed domain name incorporates the entirety of the BERLITZ Trademark and is confusingly similar to the BERLITZ Trademark. Complainant contends that the addition of the gTLD and the Phrase are not sufficient to change the overall impression of the disputed domain name as being confusingly similar to Complainant’s BERLITZ Trademark.
The Panel agrees and finds that the disputed domain name is confusingly similar to the BERLITZ Trademark.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Respondent does not appear to be commonly known by the disputed domain name. Complainant has not licensed or authorized Respondent to use or register the disputed domain name. The Panel also agrees that operation of a commercial parking page including pay-per-click advertising links, some of them associated with the BERLITZ Trademark, apparently in an effort to obtain click-through revenue, does not constitute a bona fide offering of goods or services, nor does it constitute a legitimate noncommercial or fair use.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Given (i) the timing of Complainant’s first use and first registration of the BERLITZ Trademark and Complainant’s use of the BERLITZ Trademark in association with the noted goods and services; (ii) Respondent’s association in the disputed domain name of the BERLITZ Trademark with an advertising slogan that could legitimately be used to promote Complainant’s goods and services; (iii) the subsequent timing of the registration of the disputed domain name; and (iv) Complainant’s prior trademark rights in the United States where Respondent is located, the Panel finds that Respondent clearly knew of the BERLITZ Trademark at the time of registration of the disputed domain name, and registered the disputed domain name in order to take advantage of the goodwill associated with Complainant’s BERLITZ Trademark. Respondent’s registration of the disputed domain name was therefore in bad faith.
In addition, the Panel finds the subsequent usage of the disputed domain name, as previously described, to constitute use in bad faith consistent with paragraph 4(b)(iv) of the Policy.
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 name <berlitzopenyourworld.com> be transferred to Complainant.
Timothy D. Casey
Date: August 3, 2018
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