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Ufi Limited v. Oznic GmbH
Case No. D2006-0203
1. The Parties
The Complainant is Ufi Limited, Sheffield, South Yorkshire, United Kingdom of Great Britain and Northern Ireland, , represented by McGrigors Solicitors, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Oznic GmbH, Voerde, Germany.
2. The Domain Name and Registrar
The disputed Domain Name <learndirect.com> is registered with CORE Internet
Council of Registrars.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2006. On February 16, 2006, the Center transmitted by email to CORE Internet Council of Registrars a request for registrar verification in connection with the Domain Name at issue. On February 28, 2006, CORE Internet Council of Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 21, 2006.
The Center appointed Kristiina Harenko as the sole
panelist in this matter on March 30, 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
The Complainant has the following registered trademarks:
- European Community trademark LEARNDIRECT, registration number 1353374, for classes 9,16, 21, 25, 26 and 41 dated October 18, 1999;
- European Community trademark LEARNDIRECT, registration number 1673433 for classes 28, 35 and 42 dated May 17, 2000;
- United Kingdom trademark LEARNDIRECT; registration number 2288654 for classes 9, 16, 41 dated December 20, 2001;
- Australia trademark LEARNDIRECT, registration number 831704 for classes 9, 16, 21, 25, 26, 41 dated April 14, 2000;
- Mexico trademark LEARNDIRECT, registration numbers 667865, 670928, 67597, 675928, 685043, and 699020, for classes 9, 16, 21, 25, 26, 41 respectively dated April 18, 2000;
- South Africa trademark LEARNDIRECT registration numbers 2000/06950, 2000/06951, 2000/06952, 2000/06953, 2000/06954 in classes 9, 16, 21, 25 and 26 dated April 12, 2000; and
- United States trademark LEARNDIRECT registration number 2,920,282 for classes 9, 16, 21, 25, 26 and 41 dated January 25, 2005.
The Domain Name <learndirect.com> was registered
by Marcus Faure a director of the Respondent on November 7, 2005. The Domain
Name was transferred to the Respondent solely at some point between December
29, 2005 and January 12, 2006.
5. Parties’ Contentions
The Complainant has operated under its LEARNDIRECT mark since November24, 1999, the date upon which the Complainant launched its distance learning programme under the LEARNDIRECT mark. Since its launch the Complainant has grown rapidly and Learndirect has a pre-eminent reputation for adult education. The Complainant contends that its services are known to United Kingdom general public as Learndirect and learndirect is synonymous with the Complainant and its services. The Complainant also has Learndirect centres overseas in Australia, Belgium, Belize, Bosnia and Herzegovina, Brunei Darussalam, Canada, Cuba, Cyprus, Falkland Islands Malvinas, France, Germany, Gibraltar, Iraq, Ireland, Nepal, Netherlands, Saint Vincent and the Grenadines, South Africa The Former Yugoslav Republic of Macedonia and Timor-Leste.
The Complainant contends that the LEARNDIRECT mark is distinctive of the Complainant because
- of the Complainant’s extensive use and investment described in the Complaint;
- it is recognized by purchasers as a trademark indicating the Complainant as the trade source;
- of the public awareness of the mark as a trademark by virtue of the extensive marketing campaigns, awards and press references;
- independently of use or context, learndirect has
no dictionary or grammatical meaning in English. The generic terminology for
the services offered by the Complainant is “distance learning” and
a correct descriptive terminology would be direct learning (see Canadian
Hockey Association v. Mrs Jello, LLC, WIPO
Case No. D2005-1050).
The Domain Name is identical to the Complainant’s
registered and unregistered trademarks LEARNDIRECT. The differences between
the figurative trademark registrations for LEARNDIRECT and the plain word LEARNDIRECT
are so insignificant that they will go unnoticed by the average consumer. The
addition of the suffix “.com” in the Domain Name is recognized as
being irrelevant (see e.g. Microsoft Corporation v. Amit Mehrotra, WIPO
Case No. D2000-0053).
The Complainant states that the Respondent has no relationship with the Complainant. The Respondent is not and has never been licensed by the Complainant to use the Complainant’s trademarks. To the best of the Complainant’s knowledge, the Respondent is not known by the name <learndirect.com>, or any other derivative of Learndirect and has never been known by the name.
The Respondent has acted in bad faith because it has engaged in a pattern of conduct to prevent trademark owners from reflecting their marks in a corresponding domain. These refer to the following four domain names: <switchboardworldwide.com> , <switchboardcanada.com>, <gironet.biz> and <gironet.info>. Regarding gironet domain names the Complainant refers to the fact that Gironet GmbH is the registered proprietor of a European Community registered trademark for GIRONET. In these cases the Respondent is using the websites for commercial purposes to display links to third party websites.
The Complainant contends that the Respondent is using
the Domain Name in order to attract internet users to its website or other online
presences for commercial gain. The Respondent is using the Domain Name for sponsored
links to the Complainant’s competitors as well as to a massive multitude
of other businesses. The Respondent redirects web traffic from the Domain Name
to certain companies intending to benefit from the web traffic actually intended
for the Complainant. Numerous UDRP Panels have determined that such use of a
disputed domain name does not constitute legitimate or right-based use by a
Respondent (see Drake Bliss v. Cyberline Enterprises, WIPO
Case No. D2001-0718; Micro Electronics, Inc. v. J Lee, WIPO
Case No. D2005-0170 and a recent arbitration involving the Respondent (InfoSpace,
Inc. v. Marcus Faure and OzNic GMbH Claim Number FA0512000605203 “The
Panel does not find a bona fide offering of goods or services under Policy 4(c)(i)
where Respondent is using Complainant’s SWITCHBOARD mark to operate a
website that displays links for the purpose of earning referral fees. Furthermore
such use for Respondent’s commercial gain does not constitute a legitimate
noncommercial or fair use of the domain names under Policy 4(c)(iii).“
The Respondent is only using the Domain Name to attract Internet users for commercial
gain to a website not associated with the Complainant. Accordingly, the Respondent
is trading off the Complainant’s commercial reputation and goodwill and
gaining commercially by receiving revenues through the proliferation of pay
per click links on the Domain Name.
At the time of the Respondent’s registration
of the Domain Name in November 2005, had it carried out trademark or internet
search engine searches for learndirect it would, if it was not already familiar
with the Complainant at that time through the Complainant’s extensive
use, have provided the Respondent with clear and unambiguous notice of the Complainant’s
trademark registrations, extensive use of and reputation for learndirect (see
Kate Spade, LLC v. Darmstadter Designs WIPO
Case No. D2001-1384). The new Domain Name registration by the Respondent
was a new registration on November 7, 2005 (see Ideenhaus Kommunikationasagentur
GmbH v. Ideenhaus GmbH, WIPO Case
No. D2004-0016; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO
Case No. D2000-1406; and BWR Resources Ltd v. Waitomo Adventures Ltd
WIPO Case No. D2000-0861). In view of
these findings the Complainant’s extensive rights in learndirect at the
time, the registration on November 7, 2005, of the Domain Name was in bad faith.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Pursuant to Policy, Complainant must convince the Panel on the following three criteria:
(i) the domain name is identical or confusingly similar to a trademark in which it holds rights; and
(ii) Respondent has no right or legitimate interests in the domain name; and
(iii) The domain name was registered and used in bad faith.
A. Identical or Confusingly Similar
The Domain Name <learndirect.com> is a identical to the registered trademark LEARNDIRECT. The addition of the suffix “.com” in the Domain Name is recognized as being irrelevant in this respect.
B. Rights or Legitimate Interests
The trademark LEARNDIRECT is registered trademark in numerous countries and general public is aware of the trademark and the trademark is recognized by purchasers as a trademark indicating the Complainant as the trade of source.
The Respondent has no relationship with the Complainant. The Respondent is not and has never been licensed by the Complainant to use the Complainant’s LEARNDIRECT trademarks.
The Respondent has not replied to the Complainant’s contentions. The arguments by the Complainant, as summarized here above under 5A, supported by means of proof submitted by the Complainant, have convinced the Administrative Panel that the Respondent has not had, nor has, any rights or legitimate interest in respect of the domain name <learndirect.com>.
C. Registered and Used in Bad Faith
The Respondent has registered the Domain Name in November 2005, at the time when the Complainant has registered its trademark LEARNDIRECT in numerous countries and the general public has become aware of the trademark due to its extensive use. The Respondent must have been aware of the trademark at the time the Domain Name was registered to it. The Respondent has acted in bad faith because it has engaged in a pattern of conduct to prevent trademark owners from reflecting their marks in a corresponding Domain Name. Although the domain name consists of the two dictionary terms “learn” and “direct” it seems likely from the case file and it particular the Respondent’s history that the Respondent has registered the Domain Name <learndirect.com> for the primary purpose of benefiting from web traffic intended for the Complainant for commercial gain and is only using the Domain Name to attract Internet users for commercial gain to a website not associated with the Complainant.
Therefore, in the absence of contrary evidence the Panel finds that Respondent’s
bad faith registration and use of Domain Name identical to Complainant’s
mark, is demonstrated by its actual knowledge of Complainant’s rights
in this mark prior to its registration of the disputed Domain Name, its lack
of any rights or legitimate interest in respect of the disputed Domain Name,
and its use of the <learndirect.com> domain name to resolve to a website
designed to attract, for commercial gain, Internet users to Respondent’s
website by creating a likelihood of confusion with Complainant’s LEARNDIRECT
mark as to the source, sponsorship, affiliation or endorsement of the website
or of the products sold on that website.
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, <learndirect.com> be transferred to the Complainant.
Dated: April 12, 2006