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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Berlitz Investment Corporation v. Marcus Santamaria

Case No. D2006-1082

 

1. The Parties

The Complainant is Berlitz Investment Corporation, of Princeton, New Jersey, United States of America, represented by Adams and Reese LLP, of the United States of America.

The Respondent is Marcus Santamaria, of San Ysidro, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <www-berlitz.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2006. On August 25, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 28, 2006, Go Daddy Software 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 August 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2006.

The Center appointed David W. Quinto as the sole panelist in this matter on September 29, 2006. 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 Berlitz Investment Corporation (Berlitz) is a world-famous provider of language instruction and related goods. It has conducted business under the BERLITZ trademark continuously since 1878. It owns valid and subsisting registration for the BERLITZ mark in 101 countries. In the United States, alone, it holds nine registrations for BERLITZ and a tenth registration for BERLITZ.COM. The earliest such registration dates from 1950 and all pre-date Respondent’s 2006 domain name registration. Complainant holds an additional ten United States registrations of which BERLITZ is the dominant element. Further, Complainant holds International and European Union registrations for BERLITZ.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent uses the disputed domain name, <www-berlitz.com>, to provide links to various competing language instructional services. Complainant theorizes that “Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

To establish that the Respondent’s domain name is “identical or confusingly similar” to one or more of its marks, Complainant must first demonstrate that it has a protectable mark. Here, the evidence is uncontroverted that Complainant has made at least common law use of its BERLITZ mark for the past 128 years and that the mark is registered and in use in most countries of the world. Accordingly, Complainant has satisfied the first prong of this element.

Complainant must next demonstrate that the Respondent’s domain name is “identical or confusingly similar” to Complainant’s mark. The vast majority of UDRP panelists recognize that “a domain name is ‘identical or confusingly similar’ to a trademark for purposes of the [UDRP] when the domain name includes the trademark, or confusingly similar approximation, regardless of the terms in the domain name.” Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (September 19, 2000). See also Trip.com, Inc. v. Deamone, WIPO Case No. D2001-1066 (November 4, 2001) (“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.”) Further, it is well established that the addition of the prefix “www” is not sufficient to prevent confusing similarity because it is a non-distinctive element usually associated with the World Wide Web. See Trip.com, supra; ACCOR v. WWWEnterprises Inc., WIPO Case No. D2005-0025 (March 22, 2005).

Accordingly, Complainant has satisfied the first element.

B. Rights or Legitimate Interests

Complainant correctly notes that none of the circumstances provided in paragraph 4(c) of the Policy for demonstrating a Respondent’s rights to and legitimate interest in a domain name are present. Respondent is not named Berlitz and there is no evidence that Respondent has ever been commonly known as Berlitz. Further, it is uncontested that Respondent has not been authorized by Complainant to use the BERLITZ mark in his domain name. Further, Respondent is not using the contested domain name in connection with the bona fide offering of goods or services. The domain name resolves to a Website that offers links to competitors’ services. It is well established that no rights or legitimate interest derive from this type of use of another’s mark. See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (July 29, 2005) (“Respondent is not using the incriminating websites to offer its own products or services, but rather to divert Internet users, who are potential clients of Complainant and therefore part of the latter’s goodwill, through sponsored links displayed on its sites to other websites unrelated to Complainant’s official websites and selling similar products and services to those of Complainant under different brands. Respondent’s use of the Domain Names in dispute is intentionally misleading on-line consumers by re-directing them to other websites with the exclusive intention to get profits from such diversion.”).

Accordingly, Complainant has satisfied the second element of the test.

C. Registered and Used in Bad Faith

To establish that the Respondent has registered and is using the disputed domain name in bad faith, Complainant must show that Respondent was probably aware of Complainant’s BERLITZ mark prior to commencing use of his domain name. As one panel explained:

The [UDRP] is directed to dealing with cyber squatters. For an allegation of bad-faith registration and use of a domain name to succeed, the Complainant has to show at the very least that when the Respondent registered the Domain Name, the Respondent was (or was likely to have been) aware of the existence of the Complainant or, more particularly, the Complainant’s rights in respect of the trademark in question.

Rusconi Editore S.p.A. v. Bestinfo, WIPO Case No. D2001-0656 (July 5, 2001).

In TRW, Inc. v. Autoscan, Inc., WIPO Case No. D2000-0156 (April 24, 2000), the panel concluded that there was “a substantial likelihood that Respondent would have been aware of Complainant’s trademark when it registered its domain name” because the Complainant’s mark was famous. See also Bloomberg L.P. v. Boo Design Services No. FA01040000097043 (NAF May 17, 2001) (“unless [he has been] living a monastic life, Respondent has been actually aware of Complainant’s registered trademark and service mark”).

Given the length, breadth and notoriety of Complainant’s use of its BERLITZ mark, the Panel could easily infer that Respondent had actual or constructive knowledge of Complainant’s mark before registering his domain name.

In addition, Respondent correctly argues that Respondent is using his domain name in a manner that presupposes familiarity with Complainant’s mark. Specifically, he is using the domain name to provide links to sites offering the services of Complainant’s competitors. As explained in Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (July 29, 2005):

Respondent is merely using the disputed Domain Names which include entirely the famous VOLVO trademark as an appeal brand . . . to attract the interested on-line consumers in Complainant’s products who would plausibly assume that Respondent’s websites using the Domain Names at issue belong to or are endorsed by Complainant and then encourage consumers to divert to third parties’ websites through the displayed sponsored links forming the only content of its conflicted websites. Respondent, by using the disputed Domain Names, is intentionally misleading the consumers and confusing them so as to lure them to other websites making them believe that the websites behind those links are associated or recommended by Complainant. As a result, Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links. Respondent is therefore illegitimately capitalizing on the VOLVO trademark fame. Such finding indicates Respondent’s bad faith in the registration and use of the disputed Domain Names.

Regardless of whether Respondent is illegitimately generating click-through revenues, it is well established that the use of a domain name to redirect Internet users to web sites of competing organizations constitutes bad faith registration and use in and of itself. See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (July 29, 2005); Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319 (February 2, 2002); Nikon, Inc. and Nikon Corp. v. Technilab, Inc., WIPO Case No. D2000-1774 (March 7, 2001).

Accordingly, Complainant has also demonstrated that Respondent has registered and used the disputed domain name in bad faith.

 

7. Decision

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 <www-berlitz.com> be transferred to the Complainant.

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David W. Quinto
Sole Panelist

Date: October 13, 2006