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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ELS Educational Services, Inc. v. Domaincar

Case No. D2005-1348

 

1. The Parties

The Complainant is ELS Educational Services, Inc., Princeton, New Jersey, United States of America, represented by Adams and Reese LLP, Nashville, Tennessee, United States of America.

The Respondent is Domaincar, Panama, Panama.

 

2. The Domain Name and Registrar

The disputed domain name <els-europe.net> is registered with DomainDoorman, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2005. On December 28, 2005, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On January 25, 2006, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 13, 2006. The Center verified that the Complaint, together with the amendment to the 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 February 22, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2006.

The Center appointed Eduardo Machado as the sole panelist in this matter on March 24, 2006. 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

Complainant owns trademark registrations for the ELS mark in 23 countries. It is the owner of United States registrations and foreign registrations for ELS trademarks and service marks, and also marks containing the term ‘ELS,’ such as ELS INTERNATIONAL, ELS LANGUAGE CENTERS, and ELS WE TEACH ENGLISH TO THE WORLD. These set of ELS marks are registered in over 80 countries, including the European Union, and Panama. The Certificates of Registration date from November 1982 to December 2003.

Complainant has been providing English language instruction under the mark ELS since 1961. Since November 1994, Complainant has used the “www.els.com” website to advertise and sell its services. Complaint is also the owner of different domain names containing the ELS mark such as <els.edu>, <els.info>, <els.us>, <elsmail.com>.

Complainant advertises and sells its services through its <www.els.com> website and related websites, through print media, its agents, and its language centers. Complainant has spent substantial sums advertising and promoting their goods and services.

Complainant has over 45 language centers located around the world, including one in Panama, which was opened in 1998, and over 40 ELS Language Centers across the United States; ELS agents in Europe, Asia, and Central and South America.

Respondent registered the domain name at issue on October 18, 2005. The disputed domain name resolves to a directory that comprises links which direct users to websites of competitors of Complainant.

 

5. Parties’ Contentions

A. Complainant

i. Complainant argues that it has been the exclusive owner of the strong and well-known ELS mark for over forty years.

ii. Complainant argues that the addition of the geographically descriptive term “Europe” to its ELS mark leaves the resulting ‘els-europe’ likely to be confused with Complainant’s trademark. Since (a) Complainant’s ELS trademark is the dominant element of the domain name at issue; (b) because addition of the geographically descriptive term “Europe” to any trademark, and particularly to a famous trademark like ELS is insufficient to prevent confusing similarity; and (c) because the public is likely to assume ‘els-europe’ denotes the European operations of ELS.

iii. Complainant also argues that it has found no evidence that the Respondent has any rights in the ELS mark; nor in the domain name at issue.

iv. Complainant argues that Respondent’s is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

v. Complainant argues finally that Respondent is a known cybersquatter, and it has been a respondent in at least 14 UDRP proceedings involving over 120 domain names, all variations of well-known trademarks, all of which were transferred to their rightful owner.

B. Respondent

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

 

6. Discussion and Findings

Although the Respondent did not reply, it is proper for the Panel to examine the Complainant’s contentions having regard to both the Policy and the Rules.

A. Identical or Confusingly Similar

Complainant is correct that the domain name <els-europe.net> is confusingly similar to Complainant’s trademark ELS, which is a registered mark in many countries.

The addition of a geographically descriptive term is not sufficient to distinguish a mark from its adopter. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark.” In this case, the trademark ELS is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <els-europe.net> is somehow connected with the owner of the ELS trademark.

Moreover, the addition of a place name to a trademark is a common method for indicating the location of a branch associated with the owner of the trademark. Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244 “the addition of the city “Atlanta” to Complainant’s trademark adds to rather than diminishes the likelihood of confusion. The addition of a place name to a trademark, such as the addition of “Atlanta” to “Crowne Plaza” is a common method for indicating the location of a business enterprise identified by the trademark or service mark.” In this case, considering that Complainant has over 45 language centers around the world, the likelihood of confusion is increased.

To sum up, Respondent added ‘europe’ to Complainant’s ELS mark, and ‘els-europe’ is confusingly similar to ELS. Finally, a top level domain used for the registration (“.com” or “.net”) is irrelevant in assessing confusing similarity.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name at issue as enumerated in paragraph 4(c) of the Policy. The Complainant has made out a prima facie case that the Respondent lacks rights and legitimate interests in the domain name. The Respondent, by failing to file a Response, did nothing to dispute this contention nor to provide information as to its interests in using the disputed domain name. The timing of the Respondent’s registration of the disputed domain name – being so many years after Complainant’s first, and widespread, use of its ELS mark, including in Panama – leaves one hard-pressed to imagine what rights or legitimate interests in the domain name Respondent could have. The fact that the domain name resolves to a directory that comprises links which direct users to websites of competitors of Complainant, also leaves the Panel with the conclusion that the Respondent has no rights or legitimate interests in the diputed domain name. Therefore, the Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes the following particular circumstances of this case:

(i) the Complainant’s trademark has a strong reputation and is widely known, including in Panama and in Europe, and the Complainant has used the aforesaid trademark to identify it’s business for more than 40 years;

(ii) the Respondent has provided no evidence whatsoever of any good faith use by it of the disputed domain name, and has not participated in this proceeding even though properly notified thereof;

(iii) the disputed domain name resolves to a directory that comprises links which direct users to websites of competitors of Complainant and to other commercial websites.

In light of these circumstances, the Panel makes the reasonable inference that the Respondent was aware of the Complainant and its trademark and that the Respondent registered the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.

The third element of the Policy has been met.

 

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 name <els-europe.net> be transferred to the Complainant.


Eduardo M. Machado
Sole Panelist

Dated: March 30, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1348.html

 

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