WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Berlitz Investment Corporation v. Host Master, Transure Enterprise Ltd

Case No. D2020-1565

1. The Parties

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

The Respondent is Host Master, Transure Enterprise Ltd, United States.

2. The Domain Name and Registrar

The disputed domain name, <wwwberlitzpublishers.com>, is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2020. On the same date, the Center transmitted to the Registrar by email a request for registrar verification in connection with the disputed domain name. On June 17, 2020, the Registrar transmitted to the Center by email its verification response, disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 2020, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 24, 2020.

The Center verified that the Complaint together with the amended Complaint (collectively, 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 June 29, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was July 19, 2020. The Respondent failed to submit any Response. Accordingly, the Center notified the Respondent’s default on July 20, 2020.

The Center appointed D. Brian King as the sole panelist in this matter on July 28, 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

A. The Parties

The Complainant is Berlitz Investment Corporation, a company incorporated in Delaware, United States. The Complainant or its predecessors in title have used the BERLITZ mark in connection with the provision of language learning tools and services since 1878. The Complainant allows its licensees to advertise and sell their goods and services through the Complainant’s websites, as well as in retail locations and via print publications.

The Respondent has not provided the Panel with any information on its history or activities.

B. The Marks

The Complainant has registered the BERLITZ trademark in multiple jurisdictions. According to the Complaint, the Complainant’s licensees and affiliates spend millions of dollars annually promoting the BERLITZ mark, which has become famous world-wide. A non-exhaustive list of the Complainant’s trademark registrations follows (Annex 6 to the Complaint):

The Complainant and its licensees also own numerous domain names incorporating the BERLITZ mark. These include the Complainant’s principal website, <berlitz.com>, as well as <berlitzeu.com>, <berlitzasia.com> and <berlitzdigital.com>. Notably, the Complainant also owns the <berlitzpublishers.com> domain name.

C. The Domain Name

The disputed domain name, <wwwberlitzpublishers.com> (“Domain Name”), was registered on April 15, 2020. The Complaint alleges that the website to which the Domain Name resolves (“Website”) is used in a scam to distribute malware onto the computers of Internet users who visit the Website.

5. The Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is confusingly similar to its registered trademark. The dominant element of the Domain Name, the Complainant says, is the BERLITZ mark, and this is sufficient to establish that the Domain Name is confusingly similar to that mark. The Complainant further argues that the addition of the generic term “publishers” and the letters “www” does not sufficiently distinguish the Domain Name from its BERLITZ mark; on the contrary, these additions increase the confusing similarity, because the Domain Name is simply a typo-variant of the Complainant’s own <berlitzpublishers.com> website (i.e., with the letters “www” added). Finally, the Complainant contends that the addition of the generic-Top Level Domain (“gTLD”) “.com” likewise does not eliminate the confusing similarity.

The Complainant next submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant represents that it has not authorized the Respondent to use its mark in any way and submits that the Respondent is not known by any name corresponding to the Domain Name. Furthermore, the Complainant asserts, the Respondent is using the Website as a vehicle to distribute malware (Annexes 4 and 8 to the Complaint), which cannot be considered a bona fide offering of goods and services. The Complainant adds that, without permission to use the BERLITZ mark, the Respondent could not make any bona fide offering of goods and services via the Website in any event.

Finally, the Complainant submits that the Domain Name was registered and is being used in bad faith. It argues that the BERLITZ mark, which has been used in connection with its business for 142 years, is famous and recognized world-wide. As such, the Complainant contents, it is not plausible that the Respondent was unaware of the Complainant’s rights in the mark when registering the Domain Name, and therefore that registration was done in bad faith. The Complainant goes on to argue that using the Domain Name as a vehicle for distributing malware constitutes bad faith use within the meaning of the Policy. It adds, as a further argument, the contention that the Respondent has engaged in a pattern of registering and using domain names containing well-known third-party trademarks, citing other UDRP decisions as examples.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:

(i) the Domain Name is identical or confusingly similar to a 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.

Paragraph 4(c) of the Policy sets out illustrative circumstances that could demonstrate a respondent’s rights or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) above.

Paragraph 4(b) of the Policy sets out illustrative circumstances that could demonstrate registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) above.

A. Identical or Confusingly Similar

The Domain Name entirely incorporates the Complainant’s BERLITZ mark, appending to it the word “publishers,” the letters “www,” and the “.com” gTLD. UDRP panels have consistently held that the addition of generic or descriptive words or phrases to a complainant’s trademark — here, the word “publishers” and the letters “www” — does not prevent a finding of confusing similarity between a domain name and a mark (see, e.g., Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; eBay Inc. v. ebayMoving/Izik Apo, WIPO Case No. D2006-1307). The addition of the gTLD “.com” to the Complainant’s mark similarly does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11.

On these grounds, the Panel concludes that the Domain Name is confusingly similar to the Complainant’s BERLITZ mark.

B. Rights or Legitimate Interests

Many prior UDRP panels have found that a complainant only needs to establish a prima facie case in relation to the second element of the test under paragraph 4(a) of the Policy (see, e.g., Belupo d.d v. WACHEM d.o.o., WIPO Case No. D2004-0110; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205). Once a prima facie showing is made, the burden shifts to the respondent to prove that it does have rights or legitimate interests in respect of the disputed domain name.

The present Panel agrees that the Complainant need only make out a prima facie case and finds that it has met that standard here. In the absence of any contrary evidence, the Panel accepts the Complainant’s representation that it has not given the Respondent permission to use its BERLITZ mark in any way. The Panel also finds no indication that the Respondent is commonly known by a name corresponding to the Domain Name.

In these circumstances, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent has failed to provide any contrary evidence, despite having had the opportunity to do so. The Panel accordingly finds that the Complaint succeeds as to the second element of the test under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element of the test under paragraph 4(a) requires proof that the Domain Name has been registered and is being used in bad faith. Here, the Complainant has established to the Panel’s satisfaction that the BERLITZ mark is registered in multiple jurisdictions and well-known worldwide. It follows that the Respondent had at least constructive knowledge of the Complainant’s rights in that mark when registering the Domain Name. That conclusion is bolstered by the fact that the Domain Name appears to be a typographical-error variant of the Complainant’s <www.berlitzpublishers.com> domain name. In these circumstances, the registration of the Domain Name was done in bad faith (see, e.g., Berlitz Investment Corporation v. Marcus Santamaria, WIPO Case No. D2006-1082).

The Complainant has likewise proven to the Panel’s satisfaction that the Respondent is using the Website to attempt to distribute malware to Internet users (Annex 4 to the Complaint). That plainly constitutes use of the Domain Name in bad faith (see, e.g., Berlitz Investment Corporation v. Milen Radumilo, WIPO Case No. D2018-1303).

Accordingly, the Panel finds that the Complaint succeeds with respect to the third element under paragraph 4(a) of the Policy as well. Given this finding, it is not necessary for the Panel to consider the Complainant’s contention that the Respondent has engaged in a pattern of registering well-known trademarks in bad faith.

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 Domain Name, <wwwberlitzpublishers.com>, be transferred to the Complainant.

D. Brian King
Sole Panelist
Date: August 7, 2020