Complainant is Berlitz Investment Corporation of Wilmington, Delaware, United States of America (“united States”), represented by Adams and Reese LLP, united States.
Respondent is Milen Radumilo of Bucharesti, Romania.
The disputed domain name <atberlitz.com> is registered with Domain Original, LLC (the “Registrar”).<
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2018. On June 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 15, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 18, 2018.
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” 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 11, 2018.
The Center appointed Peter Wild as the sole panelist in this matter on July 17, 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 Berlitz Investment Corporation, a United States corporation incorporated in the state of Delaware, with headquarters in Wilmington, Delaware, United States. Complainant is the owner of the registered BERLITZ trademark in many jurisdictions around the world, including
|
Country |
Trademark |
Registration No. |
Registration Date |
|
European Union |
BERLITZ |
000198408 |
December 8, 1999 |
|
European Union |
BERLITZ |
013552096 |
June 30, 2015 |
|
European Union |
BERLITZ |
013552138 |
April 21, 2015 |
|
Romania
|
BERLITZ
|
43709
|
July 23, 2001
|
|
Romania (IR extension) |
BERLITZ |
307718 |
July 23, 2001 |
|
United States |
BERLITZ |
1946638 |
January 9, 1996 |
The disputed domain name was registered on June 29, 2016, and resolves to a parking page displaying pay-per-click links. Complainant also asserts the disputed domain name has been used in attempts to spread malware via redirection to various third party websites.
According to Complainant, it and its predecessors have been using the BERLITZ mark directly and through licensees since 1878 in connection with language instruction and related goods and services throughout the world. Since its first use in 1878, the BERLITZ mark has been promoted continuously and extensively in numerous jurisdictions throughout the world. Complainant’s licensees and affiliates spend millions of United States Dollars each year promoting the BERLITZ mark and goods and services sold under the mark. Complainant alleges that the disputed domain name is confusingly similar to its own, well-known trademark, that Respondent has no legitimate rights or interests in the disputed domain name and that Respondent has registered and is using the disputed domain name in bad faith, using it for a parking page and for providing links to phishing and malware distributing. According to Complainant, Respondent’s bad faith is also demonstrated by Respondent’s offer to sell the Domain Name for USD 688. Finally, Complainant claims that Respondent has been the named respondent in at least 31 other UDRP proceedings.
Respondent did not reply to Complainant’s contentions.
The Panel finds the Complainant has established rights in the BERLITZ trademark through its registration and widespread use.
The disputed domain name contains Complainant’s trademark in its entirety. The additional suffix “.com”, as the generic Top-Level Domain (“gTLD”), has no influence on the overall impression, as stated repeatedly by previous panels, see, Berlitz Investment Corporation v. Marcus Santamaria, WIPO Case No. D2006-1082.
The same is true for the additional element “at”. This is a purely descriptive, non distinctive which does not create an overall impression of the disputed domain name that would be dissimilar from Complainant’s trademark. UDRP panels held in similar circumstances that such elements are irrelevant in the overall assessment. See, e.g., Giorgio Armani S.p.A. Milan Swiss Branch Mendrisio v. wichan poonsawat, WIPO Case No. D2012-0845. Complainant’s trademark is clearly recognizable in the disputed domain name.
This Panel therefore holds that the disputed domain name is confusingly similar with Complainant’s trademark BERLITZ and that the first element of the Policy is met.
Complainant must establish a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If respondent fails to do so, complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
Complainant claims that it did not grant a license or any other right to use and register the disputed domain name to Respondent. Respondent did not respond to the Complaint in any way.
Respondent’s name is not “Berlitz,” and Respondent is not known by that name. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner. Respondent appears to be using the disputed domain name to distribute malware or to facilitate a phishing scheme. Before that, the disputed domain name was directing to a commercial parking page showing pay-per-click advertising links to “Berlitz” and other websites services identical or related to those of Complainant. UDRP panels have repeatedly held that no rights or legitimate interests derive from this type of use of another’s trademark. Berlitz Investment Corporation v. Marcus Santamaria, supra.
For these reasons, this Panel holds that the second element of the Policy is met.
Complainant owns trademark registrations for the BERLITZ mark in jurisdictions throughout the world, and has been using it for 140 years, which generated significant goodwill as a well-known trademark. It is not plausible that Respondent could have been unaware of Complainant and its trademark at the time of registration of the disputed domain name. See, e.g., Berlitz Investment Corporation v. Transure Enterprises Ltd. Host Master, WIPO Case No. D2009-0836.
As the BERLITZ mark was well-known at the time of registration and in light of the use to which the disputed domain name has been put, the Panel holds that the disputed domain name was registered in bad faith.
The disputed domain name redirected to other websites displaying the message “You’re one click from your destination” and prompting installation of a browser extension, or triggering an antivirus alert for a fake tech support website. Use of a domain name to lead Internet users to malware constitutes per se bad faith use. See Wikimedia Foundation, Inc. v. Domain Administrator, Domain Enterprises, Attn: WILKIPEDIA.COM, WIPO Case No. D2015-1442.
Previously, Respondent was using the disputed domain name to divert Internet users to a commercial parking page showing pay-per-click advertising links to “Berlitz” and other websites offering services identical or related to those of Complainant. With this, Respondent was using the BERLITZ mark as a well-known brand to attract consumers interested in Complainant’s services, and then to encourage those consumers, who would believe that the parking page was related to or authorized by Complainant, to visit other websites they might similarly assume were associated with Complainant. Respondent probably generated revenues for each click-through of the sponsored links, which illegitimately capitalized on Complainant’s trademark, name and reputation. This constitutes bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy. See, e.g., Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.
Respondent’s bad faith is also demonstrated by Respondent’s offer to sell the disputed domain name for USD 688, as shown in an advertisement appearing at the top of the disputed domain name’s WhoIs information. This amount appears to exceed Respondent’s out-of-pocket costs directly related to the disputed domain name. Respondent’s sale listing for USD 688 constitutes evidence of bad faith use pursuant to paragraph 4(b)(i) of the Policy. See, e.g., L’Oréal v. Transure Enterprise Ltd /Above.com Domain Privacy/Peter Smith, WIPO Case No. D2013-1352.
Finally, Respondent has been the named respondent in around 31 other UDRP proceedings. As several other UDRP panels have determined, Respondent’s history demonstrates a pattern of bad faith conduct condemned by paragraph 4(b)(ii) of the Policy. E.g., Swatch AG v. Perfect Privacy, LLC / Milen Radumilo, WIPO Case No. D2016-1370; Accenture Global Services Limited v. Milen Radumilo, WIPO Case No. D2016-1219.
In view of the above, this Panel holds that Respondent registered and is using the Domain Name in bad faith under paragraphs 4(b)(i), 4(b)(ii), and 4(b)(iv) of the Policy and the third element of the Policy is 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, <atberlitz.com> be transferred to the Complainant.
Peter Wild
Sole Panelist
Date: July 19, 2018
