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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Berlitz Investment Corporation v. Katelin Adkins
Case No. D2007-0008
1. The Parties
The Complainant is Berlitz Investment Corporation, Wilmington, Delaware, United States of America, represented by Adams and Reese LLP, United States of America.
The Respondent is Katelin Adkins, Jabari Village, New York, United States of
2. The Domain Name and Registrar
The disputed domain name <berlitzlanguagecourse.info> is registered with
Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2007. On January 5, 2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On January 8, 2007, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2007.
The Center appointed Frank L. Politano as the sole
panelist in this matter on February 27, 2007. 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
Complainant has for over a century and a quarter used the trademark and service mark BERLITZ for language instruction services and related goods and services. The mark has been used and registered throughout the world. Complainant has promoted its mark continuously and extensively. The BERLITZ mark has acquired a high degree of distinctiveness and has come to signify a sole source of origin, namely language instruction and other related services and goods originating with Complainant. Complainant operates its principal website at berlitz.com.
The domain name at issue, <berlitzlanguagecourse.info> was registered by Respondent on September 18, 2006. Immediately thereafter Complainant wrote to Respondent requesting that the website be taken down and that the domain name be transferred to Complainant. The letter was sent via United States mail and was returned to Complainant unopened because the address that Respondent used to obtain the domain name registration was fictitious. Similarly, Complainant’s attempt to communicate with Respondent via electronic mail proved fruitless because the electronic mail address used by Respondent was bogus.
At one time, the domain name linked users to a variety of language instruction products and services which did not emanate from Complainant. Respondent’s home page prominently displayed the question: “Who Else Wants To Discover Free Language Course Resources – Guaranteed?” Respondent’s website is currently inactive.
Complainant filed the Complaint in this matter on
January 4, 2007 seeking transfer of <berlitzlanguagecourse.info> to Complainant.
5. Parties’ Contentions
Complainant contends that it owns worldwide rights in BERLITZ and that there is confusing similarity between BERLITZ and <berlitzlanguagecourse.info>. Complainant believes the dominant element of the domain name incorporates the entirety of Complainant’s trademark and that the mere addition of the generic designation “languagecourse” does not obviate confusing similarity. Complainant believes internet users will be misled into associating Respondent’s site with Complainant.
Complainant further alleges that Respondent has no rights or legitimate interests in the domain name at issue. Respondent is not and never has been a licensee or franchisee of Complainant and has never been given permission to use Complainant’s BERLITZ mark.
Complainant further submits that the <berlitzlanguagecourse.info> domain name was registered and is being used in bad faith for the sole purpose of redirecting internet users and, particularly customers and potential customers of Complainant, from Complainant’s websites to websites offering other language instruction services. As further evidence of bad faith, Complainant notes that Respondent has provided false contact information.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the elements a Complainant must prove to obtain a decision in its favor:
(1) That the domain name registered by Respondent is identical or confusingly similar to the marks owned by Complainant;
(2) That Respondent has no rights or legitimate interests in respect to the domain name; and
(3) That the domain name has been registered and used by Complainant in bad faith.
After reviewing the facts and other submissions, this Panel is convinced that each element is present in this case.
A. Identical or Confusingly Similar
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
Complainant has strong rights in the BERLITZ mark. For over 12 decades it has used the distinctive BERLITZ name and mark for language instruction and related goods and services throughout the world. It has more than 450 BERLITZ centers in over 60 countries and throughout the years has spent millions of dollars to advertise and promote its name, trademark and service mark. The BERLITZ mark is registered in over 102 countries and the mark is prominently used in a related family of marks such as BERLITZ KIDS, BERLITZ METHOD, BERLITZ STUDY ABROAD, and BERLITZ TOTAL EMERSION.
Complainant has registered and used several domain names to provide its services and offer its services and products over the internet, including <berlitz.com>, <berlitzglobalnet.com> and <berlitzschool.com>. The domain name <berlitz.com> was registered in May 1997 at a time when the consumer internet was in its nascent stages.
It would not be an exaggeration to state that Berlitz has become an iconic mark for language instruction services and that the first name that likely comes to a consumer’s or a potential consumer’s mind in the language instruction field is BERLITZ.
The dominant element of the <berlitzlanguagecourse.info> domain name
is the BERLITZ mark. As numerous panels have ruled, “the incorporation
of a trademark in its entirety is sufficient to establish that a domain name
is identical or confusingly similar to the complainant’s registered mark.”
Trip.com, Inc. v. Daniel Deamone, WIPO
Case No. D2001-1066 (November 4, 2001); Wal-Mart Stores, Inc. v. MacLeod,
WIPO Case No. D2000-0662 (September 19, 2000).
Complainant uses a number of marks and domain names comprising the BERLITZ mark
followed by descriptive or generic terms. Potential consumers are likely to
believe there is some connection between Complainant and Respondent. Respondent’s
addition of the generic designation “languagecourse” does not prevent
the domain name from being confusingly similar to the BERLITZ mark. Credit
Industrial et Commercial S.A. v. Spiral Matrix, WIPO
Case No. D2006-0271 (April 23, 2006). Indeed, the addition of the words
“languagecourse” to the end of Complainant’s famous mark actually
serves to increase any confusing similarity.
We thus hold that <berlitzlanguagecourse.info> is confusingly similar to Complainant’s BERLITZ name and marks.
B. Rights or Legitimate Interests
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
Complainant alleges that Respondent has no rights or legitimate interests in
the <berlitzlanguagecourse.info> Domain Name. It is not Respondent’s
name and Respondent has never been licensed or permitted to use BERLITZ in any
manner. Moreover, Respondent points out that the domain name, at least at the
time the Complaint was filed, linked users to a variety of language instruction
products and services, including a large section for which consumers could bid
on many language instruction products available on eBay. The Complainant alleges,
and this Panel on balance agrees, that the Respondent has registered the domain
name to bait internet users to Respondent’s website for financial gain.
Such use cannot be considered bona fide within the meaning of Paragraph
4(c)(i) of the Policy. The Sutton Corporation v. Spiral Matrix, WIPO
Case No. D2006-0167 (March 29, 2006).
Respondent has not responded to these allegations and they will thus be accepted
as true for purposes of this decision. Pavilion Agency, Inc., Cliff Greenhouse
and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO
Case No. D2000-1221 (December 4, 2000).
C. Registered and Used in Bad Faith
(Policy, para. 4(a)(iii), Rules, para. 3(b)(ix)(3))
The BERLITZ mark is so distinctive and well known in the language field that
it is not plausible that the Respondent could have been unaware of BERLITZ at
the time of registration. Berlitz Investment Corp. v. Marcus Santamaria,
WIPO Case No. D2006-1082 (October 13, 2006).
Given Berlitz’s many United States registrations, and the Respondent’s
apparent location in the United States, Respondent is charged with constructive
notice of Complainant’s broad rights in BERLITZ. 15 U.S.C. §1072.
Moreover, it seems clear that Respondent provided false and misleading contact
information. This is strong evidence of bad faith. Lincoln Property Co. v.
LPC, WIPO Case No. D2001-0238 (April 11, 2001).
Salomon Smith Barney, Inc. v. Salomon Internet Services, WIPO
Case No. D2000-0668 (September 4, 2000). Such provision of false contact
information also constitutes bad faith as defined by the Anticybersquatting
Consumer Protection Act, 15 U.S.C. §1125(d)(1)(B)(I)(VII).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <berlitzlanguagecourse.info> be transferred to the Complainant.
Frank L. Politano
Dated: March 13, 2007