The Complainant is Signum International S.à.r.l. Luxembourg of Luzern, Switzerland, represented by Doubinsky & Osharova Patent and Law Agency, Ukraine.
The Respondent is Sergey Glaz’ev (the “First Respondent”), EF Ukraine of Kiev (the “Second Respondent”) of Kiev, Ukraine (collectively the “Respondent”).
The disputed domain name <efukraine.com> (the “Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2016. On May 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 25, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and disclosing registrant name for the Domain Name. The spelling differed from the spelling of the Respondent’s name in the Complaint. The Center sent an email communication to the Complainant on May 30, 2016 informing the Complainant about the different spelling of the registrant’s name disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. Further to the Center’s notice that the language of the Registration Agreement for the domain name was Russian, the Complainant filed a request that English be the language of the proceeding on June 1, 2016. The Respondent did not make any submissions in this regard. The Complainant filed an amended Complaint on June 8, 2016.
The Center verified that 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 in English and in Russian, and the proceedings commenced on June 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2016.
The Center appointed Olga Zalomiy as the sole panelist in this matter on July 12, 2016. 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.
The Complainant operates a business to “help people learning languages of other nations and acquiring an education without borders”.
The Complainant owns trademark registrations for the stylized EF trademark, international registration No. 622451 registered July 8, 1994 and for the EF trademark, international registration No. 1211088, registered December 05, 2013, which are also protected in Ukraine pursuant to Madrid Protocol1 .
According to the publicly available WhoIs information, the First Respondent, Sergey Glaz’ev, is the “Registrant” and the “Admin Name” for the Domain Name. The Second Respondent, EF Ukraine, is the “Registrant Organization” and the “Admin Organization” of the Domain Name. On March 1, 2006, the Respondent entered into an agent agreement (the Agreement) with the Complainant’s predecessor in interest, “EF Language Colleges Ltd.” to promote and sell in Ukraine various educations courses. Pursuant to the terms of the Agreement, the Respondent was granted “a non-exclusive license to use its name, trademarks and logos, images, ef.com web content during the term of th[e] Agreement”. At the time of the Agreement, the Second Respondent name was “Terra Lingua Centre”. The First Respondent2 as Project Manager of the Second Respondent signed the Agreement on its behalf.
The Domain Name was registered on January 15, 2016. Currently, it redirects to a website associated with the <ukuniversities.net.usa> domain name, which according to WhoIs information, belongs to “Internet Invest Ltd”2 . The website content is in Russian and it features information about “Universities of Great Britain”. The bottom part of the landing page contains the following text: “Ukrainian Association of International Education (UAIE) © 2014”
The Complainant contends that the Domain Name is confusingly similar to the EF trademarks in which the Complainant has rights. The Complainant claims that it owns trademark registrations for the standard characters EF trademark and the stylized EF trademark in many countries around the world, including Ukraine. The Complainant argues that the Domain Name is confusingly similar to its EF trademarks because the prefix of the Domain Name consists of the EF trademark. The Complainant claims that the addition of the geographical term “Ukraine” to the EF trademark is insufficient to avoid confusion.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that it has not assigned or licensed any rights in the EF trademark to the Respondent. The Complainant alleges that the Respondent does not own trademark rights in the EF mark and that there is no relation, association or affiliation between the parties.
The Complainant contends that the Respondent used to be a registrant of two domain names <ef-ukraine.com> and <ef-ukraine.com.usa>, which directed to websites with content that was identical to the content of the website associated with the Domain Name. The Complainant alleges that it sent a cease-and-desist letter to the Respondent, after which the Respondent ceased using those domain names. The Complainant claims that the Respondent also uses the Complainant’s EF trademarks and offers services similar to the Complainant’s services on the website associated with the Domain Name.
The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant claims that it is the entity responsible for trademarks and domain names within the EF Education First group of companies, which is one of the global leaders rendering educational and linguistic services. The Complainant argues that the Complainant’s trademark EF, which stands for “Education First”, is globally known. The Complainant claims that it offers its services in more than 52 countries, including countries surrounding Ukraine. The Complainant argues that the Respondent knew it infringed on the Complainant’s intellectual property rights because in 2006 the Respondent, under its former name “Terra Lingua Centre LLC” entered into an agreement with EF Colleges Ltd, which is a member of the Complainant’s group of companies. Pursuant to the terms of the Agreement, EF Colleges Ltd. granted the Respondent an exclusive license to use the Complainant’s EF trademark as well as other intellectual property rights. The Complainant claims that the Agreement was terminated on May 20, 2010, but the Respondent continued using domain names containing the Complainant’s EF trademark in connection with the geographic term “Ukraine”, which made the domain names confusingly similar to the Complainant’s marks. The Complainant argues that thereafter, the Respondent changed its name to “EF Ukraine” and offered services, for which the Complainant’s trademark was registered. The Complainant contends that the Respondent ceased using the domain names <ef-urkaine.com> and <ef-urkaine.com>3 in the beginning of 2016 and registered the Domain Name, which resolves to a website identical to the websites, which were displayed under the <ef-urkaine.com> and <ef-urkaine.com> domain names. The Complainant contends that by using the Complainant’s trademarks in connection with the Respondent’s services after expiration of the license agreement, the Respondent may mislead customers into believing that they are obtaining services from a company affiliated with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainant requested that the language of the proceeding be English.
It is established practice to make a decision regarding the language of the proceeding that ensures fairness to the parties and maintains an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. See, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593.
The Complainant contends that the Respondent is familiar with English because the Respondent’s business is in the field of studying foreign languages, like English. The Complainant further contends that according to information on the Respondent’s website, it corresponds with hundreds of clients from all over the world and because English is one of the most popular business languages, the Respondent must also correspond in English.
The Complainant claims that the Respondent’s website displays information about the Second Respondent in English. However, the Complainant provided no evidence to support this contention. Currently, the Domain Name redirects to a website associated with the <ukuniversities.net.usa> domain name with content in Russian.
Nevertheless, the Panel finds that the Respondent would not be unfairly burdened by use of English as the language of this proceeding because the evidence shows that the Respondent appears to have a good command of English. In the past the parties corresponded in English. In addition, the Center advised the Respondent in both English and Russian about an opportunity to object to the Complainant’s request for English to be the language of the proceeding, but the Respondent failed to do so. In the circumstances, it would not appear to be unfair to the Respondent for the Panel to conduct the proceeding in English. The Panel, therefore, determines English to be the language of this proceeding.
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
The Complainant has demonstrated that it owns registered trademark rights in the EF trademark. It is well-established that to satisfy the test for confusing similarity, “the relevant trademark would generally need to be recognizable as such within the domain name4 and that the addition of “geographical wording to a trademark in domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP.”5 The generic Top-Level Domain (the “gTLD”) suffix “.com” is to be generally disregarded under the confusing similarity test (as TLDs are a technical requirement of registration).
The Domain Name incorporates the Complainant’s EF trademark in its entirety and adds a geographic term “Ukraine”.
Therefore, the Panel holds that the first element of the UDRP has been met.
There are no indications before the Panel that the Respondent has any rights or legitimate interests in the Domain Name. It is undisputed that after termination of the Agreement in 2010, the Complainant did not authorize the Respondent to use the Complainant’s EF trademark and that currently the Respondent is not a licensee or an affiliate of the Complainant.
While the Second Respondent’s name is “EF Ukraine”, based on the cumulative evidence before this Panel, it appears that the Respondent chose its new name to create appearance of such rights in the Domain Name. First, the evidence shows that the Respondent, under its former name “Terra Lingua Centre”,6 entered into an agency agreement with EF Language Colleges Ltd., a predecessor in interest of the Complainant, to promote and sell in Ukraine various EF educations courses, such as “EF International Language School” and “EF Academic Year Abroad”. Pursuant to the terms of the Agreement, EF Language Colleges Ltd. granted the Respondent “a non-exclusive license to use its name, trademarks and logos, images, “ef.com” web content during the term of th[e] Agreement”.7 In 2010, the Agreement was terminated and the Respondent’s right to use EF trademarks and logos terminated too. Subsequently, the Respondent changed its name to “EF Ukraine” and continued using the the <ef-ukraine.com> and <ef-urkaine.com.ua> domain names. Four years after termination of the license agreement, attorneys of the EF Education First Group, of which the Complainant claims to be a member, sent a cease-and-desist letter to the Respondent informing it about violation of their client’s intellectual property rights. It appears, that in response, the Respondent ceased using the <ef-ukraine.com> and the <ef-ukraine.com.ua> domain names and in 2016 registered the Domain Name with the full knowledge that it had no rights in the EF trademark.
Second, the Domain Name currently redirects to a website associated with the <ukuniversities.net.us> domain name. The website content is in Russian and it features information about “Universities of Great Britain”, i.e. information about admission process, cost of education in the universities and various degree programs offered. The bottom part of the landing page contains the following text: “Ukrainian Association of International Education (UAIE) © 2014”. The website displays no information about the Respondent or its representatives, which creates no rights or legitimate interests in the Respondent. Therefore, the Panel believes that the Complainant has made out a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.
Once a complainant makes a prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name.8 Where, like here, the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.9
Therefore, the Panel holds that the second element of the UDRP has been met.
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
It is more likely than not that by using the Domain Name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, and endorsement of the Respondent’s website. The Respondent was clearly aware of the Complainant’s EF trademark when he registered the Domain Name because it registered the Domain Name almost six years after its license to use the Complainant’s trademarks had expired. After the relationship between the Parties terminated, Respondent continued using the domain names incorporating the Complainant’s trademarks and the Second Respondent changed its name to “EF Ukraine”, which appears to have been done to cause Internet users confusion and to trade on the Complainant trademark’s goodwill in Ukraine. It appears that after receiving the Complainant attorneys’ cease-and-desist letter, the Respondent abandoned the <ef-ukraine.com> and <ef-ukraine.com.ua> domain names and registered the Domain Name, Subsequently, the Respondent registered the Domain Name with the full knowledge that it did not own any rights to use the EF trademarks and had no longer had any connection with the Complainant.
In light of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.
Thus, the third element of the UDRP has been met.
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, <efukraine.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: July 21, 2016
1 The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
2 While the Agreement was signed by “Sergey Glazyev” and the first Respondent’s name is spelled “Sergey Glaz’ev”, it appears that these are different spellings of the same name. The WhoIs records show that the first Respondent provided the following email for the correspondence: […]@gmail.com, which corresponds to the spelling of the name in the Agreement.
3 It appears that the Complainant meant that the Respondent also ceased to use the domain name <ef-urkaine.com.ua>.
4 Paragraph 1.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
5 Paragraph 1.9, WIPO Overview 2.0.
6 The Respondent’s Facebook page confirms it was formerly known as “Terra Lingua Centre Ltd.”
7 While the Agreement did not specify which of the Complainant’s trademarks the Respondent was entitled to use, the evidence shows that at the time of the Agreement the Complainant owned the EF trademark. It can be assumed that the Respondent was entitled to use the EF trademark.
8 Paragraph 2.1, WIPO Overview 2.0.
9 Id.