WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Berlitz Investment Corporation v. Privacy Administrator, Anonymize, Inc.

Case No. D2019-2988

1. The Parties

The Complainant is Berlitz Investment Corporation, United States of America (“United States” or “US”). represented by Adams and Reese LLP, United States of America.

The Respondent is Privacy Administrator, Anonymize, Inc., United States of America.

2. The Domain Name and Registrar

The disputed domain name <berlitzguangzhou.com> (the “Disputed Domain Name”) is registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2019. On December 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 2, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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, and the proceedings commenced on January 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2020.

The Center appointed Peter Dernbach as the sole panelist in this matter on February 6, 2020. 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 one of the largest and best known providers of language instructions and related goods and services in the world. The Complainant owns valid registrations for the BERLITZ trademark in numerous countries, including the following trademark registrations in China and US (hereinafter referred to as the “BERLITZ trademarks”):

China Reg. No. 727256, registered on January 28, 1995.
China Reg. No. 728766, registered on February 7, 1995.
China Reg. No. 770718, registered on October 28, 1994.
US Reg. No. 1946638, registered on January 9, 1996.
US Reg. No. 0893056, registered on June 16, 1970.
US Reg. No. 2230254, registered on March 9, 1999.
US Reg. No. 2320901, registered on February 22, 2000.
US Reg. No. 0524786, registered on May 2, 1950.
US Reg. No. 2033991, registered on January 28, 1997.
US Reg. No. 3840941, registered on August 31, 2010.
US Reg. No. 2561225, registered on April 16, 2002.

The Disputed Domain Name <berlitzguangzhou.com> was registered by the Respondent on September 24, 2019, and resolves to a website presenting numerous apps which provide pornographic contents.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Disputed Domain Name be transferred to the Complainant based on the following grounds:

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

The Complainant owns numerous BERLITZ trademarks worldwide, including China and the United States. The Disputed Domain Name incorporates the BERLITZ trademark in its entirety. The addition of the “guangzhou” geographic term does not distinguish the Disputed Domain Name from the Complainant’s BERLITZ trademarks.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Respondent’s name is not related to BERLITZ and has never been known by that name. The Complainant has not licensed or otherwise approved the Respondent’s use of any of the BERLITZ trademarks. There is no evidence that the Respondent is using the Disputed Domain Name incorporating the BERLITZ trademark for a bona fide offering of goods or services or in a legitimate noncommercial or fair manner. On the contrary, the Disputed Domain Name resolves to a website depicting pornographic images and distributing malware. It appears that the Respondent intends to divert Internet users seeking information on the Complainant to the Respondent’s adult content website and seek commercial gains.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Complainant has a long established reputation in the use of BERLITZ trademarks for 141 years. It is not plausible that the Respondent was unaware of the Complainant and its rights in the BERLITZ trademarks at the time of the registration of the Disputed Domain Name.

The Respondent is using the Disputed Domain Name to attract Internet users who are interested in the Complainant’s services, and then disrupting the Complainant’s business, tarnishing the distinctiveness and repute of the BERLTZ trademarks, and generating commercial gain, all of which constitute use in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”

It is well-established that in considering whether a disputed domain name is identical or confusingly similar to a registered trademark, the Top-Level Domain (for example, “.com” and “.net”) may be disregarded (GA Modefine SA v. Yonghui Huang, WIPO Case No. D2008-0355; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194).

The Complainant has established that it has rights in the BERLITZ trademarks.

The Disputed Domain Name, <berlitzguangzhou.com>, incorporates the BERLITZ trademark in its entirety. The addition of “guangzhou” geographic term does not serve to distinguish the Disputed Domain Name from the Complainant’s trademarks. In fact, it may likely cause Internet users to believe that the Disputed Domain Name designates a site operated by, or on behalf of, Complainant or a subsidiary or associate of Complainant. Therefore, the addition of “guangzhou” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s BERLITZ trademarks.

The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s BERLITZ trademarks. The condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable Provider, in compliance with the Rules of Procedure, that [...] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

A complainant may show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455)

The Complainant has established that it is the owner of the BERLITZ trademarks and confirmed that the Respondent is not connected with nor affiliated to the Complainant nor is the Respondent authorized to use the BERLITZ trademarks to register the Disputed Domain Name.

No record in the WhoIs database indicates that the name of the Respondent is at all related to “Berlitz,” nor is there any evidence that the Respondent is commonly known by that name. According to the evidence filed by the Complainant, the Disputed Domain Name directs Internet users to a webpage with various pay-per-clicks links which resolved to pornographic apps. It is clear that the Respondent is using the Disputed Domain Name to confuse and misleadingly divert consumers for commercial gain. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production shifts to the Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not submit any evidence or allegation to show that it has rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy in respect of the Disputed Domain Name. Therefore, the Respondent has not claimed that it has rights or legitimate interests in the Disputed Domain Name.

The Panel concludes that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: [...] (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Porno-squatting is a practice where confusion with a well-known trademark is used to divert customers to a pornographic website for a commercial purpose, and that the pornographic content is sufficient to find a bad faith (Vivendi v. Guseva Svetlana, WIPO Case No. D2018-2631; Red Bull GmbH v. Whois Agent, Domain Protection Services, Inc. / esco escortlar, escort sitesi, WIPO Case No. D2017-1639; L’Oréal v. Robert Caceres, Dollerviews, WIPO Case No. D2015-1200). The use of a domain name to induce Internet users to download malware is sufficient to find use in bad faith (Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1034; Facebook Inc. v. Domain Admin, Whoisprotection.biz / Murat Civan, WIPO Case No. D2015-0614).

The Complainant’s BERLITZ trademarks have been registered in many jurisdictions in the world, including China and the United States. The Respondent chose to use its trademarks as the distinctive part of the Disputed Domain Name. No allegation or evidence suggests that the Respondent selected the BERLITZ trademarks as used in the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademarks. Therefore, the Panel finds that the Disputed Domain Name has been registered in bad faith.

According to the evidence filed by the Complainant, the Disputed Domain Name directs Internet users to a webpage with various pay-per-clicks link which resolved to pornographic apps. In addition, when downloading the apps, a warning message indicating that it may contain malicious software. It appears that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to pornographic software by creating a likelihood of confusion with the Complainant’s BERLITZ trademarks. It also shows that the Respondent has intentionally attempted to spread malicious software with the website linked to the Disputed Domain Name. Given the above, the Disputed Domain Name is being used in bad faith.

As the Disputed Domain Name has been registered and is being used in bad faith, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been fulfilled.

7. Decision

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 <berlitzguangzhou.com> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: February 19, 2020