Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Berlitz Investment Corporation v. Pierre Hacopian, Mr. Cheap.com LLC

Case No. D2007-0483

1. The Parties

Complainant is Berlitz Investment Corporation, Princeton, United States of America, represented by Adams and Reese LLP, United States of America.

Respondent is Pierre Hacopian, Mr. Cheapo.com LLC, Hoboken, United States of America.

2. The Domain Names and Registrar

The disputed domain names are

<berlitzfrench.com>

<berlitzgerman.com>

<berlitzsoftware.com>

<berlitzspanish.com>

registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2007. On March 29, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain names at issue. Dotster, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the registrant’s contact details. 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 Respondent of the Complaint, and the proceedings commenced on April 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2007. The Response was filed with the Center on May 2, 2007.

The Center appointed Mark Partridge as the sole panelist in this matter on May 11, 2007. 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.

The Panel has allowed and considered a supplemental filing by Complainant.

4. Factual Background

Complainant has provided language courses since 1878 under the mark BERLITZ. The BERLITZ mark has been widely used and promoted throughout the world. Complainant has registered the mark as a trademark in numerous countries, including the United States of America. Complainant operates its principal website at <berlitz.com>.

In March 2006, Complainant learned that Respondent operated a website at “www.berlitzsoftware.com”, which purported to sell Complainant’s courses. After notice of Complainant’s objection, Respondent replied that it would disable the domain name and website.

In January 2007 Complainant learned that the domain name <berlitzsoftware.com> was used for a site with links to Complainant’s competitors and with a link to an offer for sale of the disputed domain names at an asking price of $2,000. Respondent offered to sell the domain names to Complainant for $250 each, an amount it deemed to cover its out-of-pocket expenses.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain names are confusingly similar to its famous trademark, that Respondent lacks any right or legitimate interest in the domain names, and that the domain names were registered and used in bad faith.

B. Respondent

Respondent claims it used the domain names for a bona fide offering of goods and services because it registered and used the domain names as a reseller of genuine BERLITZ language courses. It further claims that it did not act in bad faith because it offered to sell the domain names to Complainant for no more than its out-of-pocket costs.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has established rights in the BERLITZ mark. The disputed domain names combine Complainant’s mark with apt descriptive terms for Complainant’s products. Such use increases, rather than avoids, the potential for confusion. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

Respondent claims that it has a legitimate interest in the domain names because it made bona fide use of the domain names to sell genuine Berlitz products. Other decisions have addressed similar issues with respect to the resellers of genuine goods. For example, in Dr. Ing.h.c.F. Porsche AG v. Del Fabbro Laurent, Case No. D2004-0481 (WIPO, August 20, 2004), the Panel found in favor of a respondent who used the domain name <porsche-buy.com> for the resale of Porsche automobiles. On the issue of bona fide use, the panel stated:

“To be bona fide, the offering must meet several requirements (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Those include the following:

- A respondent must actually be offering the goods or services at issue;

- A respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

- A respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner; i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent;

- A respondent does not corner the market in all domain names or deprives the trademark owner of reflecting its own mark in a domain name.”