WIPO Domain Name Decision: D2008-0267

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Berlitz Investment Corporation v. Telecom Tech Corp.

Case No. D2008-0267

1. The Parties

The Complainant is Berlitz Investment Corporation, Wilmington, Delaware, of United States of America, represented by Adams and Reese LLP, United States of America.

The Respondent is Telecom Tech Corp., Panama City, Panama.

2. The Domain Names and Registrars

The disputed domain names <berlitzengish.com> and <wwwberlitzenglish.com> are registered with Name.net LLC and Spot Domain LLC dba Domainsite.com respectively.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2008. On February 22, 2008, the Center transmitted by email to Name.net LLC and Spot Domain LLC dba Domainsite.com a request for registrar verification in connection with the domain names at issue. On February, 23, 2008, Name.net LLC and Spot Domain LLC dba Domainsite.com transmitted by email to the Center verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on February 27, 2008, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 29, 2008. 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”), 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 March 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent default on March 25, 2008.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on March 28, 2008. 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

The Complainant is a well-known provider of language instruction and related goods and services around the world. The Complainant began providing language courses in 1878, and since then it has extensively advertised and sold its goods and services through its website and related websites, and through print media, language centers, bookstores and other retail outlets throughout the world. In 2005, the Complainant spent USD 1.5 million in advertising and promotion of the BERLITZ-branded goods and services. The Complainant also owns and operates more than 450 centers in over 60 countries.

The Complainant owns several United States of America trademark registrations for the marks BERLITZ and BERLITZ.COM, including: Registration Nos. 524,786; 893,056; 936,847; 1,579,892; 1,946,638; 2,033,991; 2,230,254; 2,320,901; 2,561,225 and 2,418,953. The earliest registration dates back to May 2, 1950. Furthermore, the Complainant owns trademark registrations for the BERLITZ mark in 101 countries around the world. The Complainant also owns variations of the BERLITZ trademarks, including: BERLITZ JR.; BERLITZ TEENS; BERLITZ CROSS CULTURAL; BERLITZ CULTURAL CONSULTING; BERLITZ IT; BERLITZIT EFLOW; BERLITZ KIDS; BERLITZ METHOD; BERLITZ STUDY ABROAD and BERLITZ TOTAL IMMERSION.

The Complainant owns and operates several top level domain names containing the BERLITZ mark, namely: <berlitzenglish.com>; <berlitzschool.com>; <berlitz.com>; <berlitz.org>; <berlitzglobalnet.com>; <berlitzit.com>; and <berlitzkids.com>. The earliest domain name registration: <berlitz.com> was registered on May 14, 1997.

The Respondent registered the domain names <wwwberlitzenglish.com> and <berlitzengish.com> on June 20, 2007. At the time of the Complaint, the Respondent was operating websites in connection with the disputed domain names, which provided links to directories which cover services offered by the Complainant, and links to various third party websites, some of which compete with the Complainant.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar

The Complainant contends that the domain names <wwwberlitzenglish.com> and <berlitzengish.com> are confusingly similar to the Complainant’s registered BERLITZ trademark.

The Complainant submits that the domain name <wwwberlitzenglish.com> incorporates the Complainant’s BERLITZ trademark in its entirety. The Complainant contends that the Respondent has attempted to take advantage of common typographical errors made by Internet users by adding the letters “www” before the words “berlitz english”. The Respondent is thereby attempting to capitalize on an Internet user’s inadvertent omission of a period when seeking to visit the Complainant’s website at “www.berlitzenglish.com”.

The Complainant also contends that the omission of the letter “l” in the domain name <berlitzengish.com> is a further attempt by the Respondent to capitalize on a common typographical error of Internet users. The Complainant characterizes the conduct of the Respondent as typosquatting.

(b) Rights or Legitimate Interests

The Complainant contends that the Respondent is not affiliated or related to its trademark or business, and is not a licensee or otherwise authorized to use the BERLITZ trademark. The Complainant submits that the Respondent is not generally known by the subject domain names, and that the Respondent has not acquired any trademark rights or other service mark rights in the domain names. The Complainant’s rights in the BERLITZ trademark pre-date the registration of the domain names <wwwberlitzenglish.com> and <berlitzengish.com> by the Respondent by more than 57 years. The Complainant also submits that the Respondent is not using the domain names in a manner which offers bona fide goods and/or services. The Complainant contends that the Respondent is operating websites that provide links to third party websites for the purpose of monetary gain. The Complainant contends that the Respondent has not established any legitimate rights or interest in the disputed domain names.

(c) Registered and Used in Bad Faith

The Complainant contends that the domain names <wwwberlitzenglish.com> and <berlitzengish.com> have been registered and are being used in bad faith based on the following factors: (i) Respondents’ knowledge of the well-known BERLITZ trademark at the time of registration of the dispute domain names; (ii) Respondent’s knowledge of the Complainant’s use of “Berlitz” as a trade name; (iii) Respondent’s registration of confusingly similar domain names; and (iii) Respondents’ use of confusingly similar domain names to operate websites that provide links to third party websites for purposes of monetary gain.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The 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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the BERLITZ trademark, by virtue of its United States of America Registrations, which were attached to the Complaint.

The Panel finds that the domain names <wwwberlitzenglish.com> and <berlitzengish.com> are confusingly similar to the Complainant’s registered BERLITZ trademark.

The domain names <wwwberlitzenglish.com> and <berlitzengish.com> both contain the Complainant’s BERLITZ trademark in its entirety and it is considered to be the dominant element of the domain names. The addition of the word “english” and its misspelling “engish” do not serve to distinguish the domain names from the BERLITZ trademark, and in fact promote confusion because the term “english” is descriptive of the language for which the services are related. Additionally, the Panel accepts that the addition of the prefix “www” without a period is a common typographical error made by Internet users when searching for the website “www.berlitzenglish.com” which is owned by the Complainant. UDRP Panels have consistently found that the practice of “typosquatting” does not serve to distinguish a domain name from a complainant’s trademark. See The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM, and NASAQ.COM, WIPO Case No. D2001-1492 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273.

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds no evidence that the Respondent ever had any legitimate right or interest in the domain names in dispute. The Respondent registered the domain names over 57 years after the Complainant had registered the BERLITZ trademark in the United States of America, and over 129 years after the Complainant commenced its business under the BERLITZ trade name. The Panel finds no evidence that the Respondent was ever known by the disputed domain names. The Panel also accepts the Complainant’s uncontroverted assertion that it never licensed or authorized the Respondents to use the BERLITZ trademark, and that the Respondent is not affiliated or related to the Complainant in any manner.

The Panel finds that the Respondent is not using the domain names in connection with a bona fide offering of goods and/or services. The Complainant has filed evidence in this proceeding showing that the Respondent is operating websites in connection with the disputed domain names which provide links to third party websites for the purpose of monetary gain. The operation of “click-through” sites, by itself, i.e. without a showing by the Respondent of any circumstances under paragraph 4(c) of the Policy is not evidence of a bona fide offering of goods and services.

The Panel is therefore satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain names. Once a complainant has made this prima facie showing, the Respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).

As the Respondent is not filed any evidence in response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The uncontested evidence shows that the Complainant’s trademark BERLITZ is distinctive and widely known in the United States of America and internationally, including Panama, the country where the Respondent resides. In view of the Complainant’s many international trademark registrations and related domain names, the Panel finds it difficult to believe that the Respondent did not have actual knowledge of the Complainant’s BERLITZ trademark, and accordingly is prepared to infer that the Respondent knew of the Complainant’s trademark rights when it registered the subject domain names.

The Panel is also prepared to find that the Respondent registered the disputed domain names and is using the domain names for the operation of “click-through” websites which provide links to third party websites for the purposes of monetary gain. The evidence shows that the Respondent was not authorized or licensed to use the Complainant’s trademark and the Respondent did not file any response contesting this claim. The Respondent appears to have deliberately traded on the goodwill of the Complainant, by replicating the Complainant’s trademark and by engaging in the practice of typosquatting. Prior Panels have recognized this type of conduct as evidence of bad faith (see The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM, and NASAQ.COM, supra and MasterCard International Incorporated v. ZJ, WIPO Case No. D2007-0687).

For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.

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 names, <wwwberlitzenglish.com> and <berlitzengish.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist

Dated: April 11, 2008