Language Direct GmbH v. Ian Hewitt
Claim Number: FA1104001381632
Complainant is Language Direct GmbH (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, New York, USA. Respondent is Ian Hewitt (“Respondent”), represented by Colin T.J. O'Brien of Partridge IP Law, P.C., Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <languagedirect.com>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2011; the National Arbitration Forum received payment on April 4, 2011.
On April 4, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <languagedirect.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@languagedirect.com. Also on April 5, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received on April 26, 2011 but was determined not to be in compliance with ICANN Rule #5(a) as the annexes were not separated from the Response. The Panel in the exercise of his discretion decided to admit and consider the Response.
On April 29, 2011 Complainant filed a Reply in the form of Additional Submissions which were admitted and considered by the Panel.
On May 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
On May 4, 2011 Respondent filed a Rejoinder in the form of Additional Submissions which were admitted and considered by the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Language Direct GmbH (Language Direct), is a Switzerland-based company specializing in language lessons delivered via telephone and the Internet, translation services, and language testing.
Complainant claims to have 200 employees and freelance staff located in offices across 6 continents.
Complainant claims common law trademark rights in the name LANGUAGE DIRECT dating back to 2004 when Complainant commenced business in Basel, Switzerland. Complainant submits that the trademark LANGUAGE DIRECT has acquired secondary meaning, and has become a distinctive identifier associated with Complainant’s services.
Complainant registered the domain name <languagedirect.net> in 2004 and has established an Internet presence at that address.
On April 25, 2006, Complainant incorporated as a limited liability company, Language Direct GmbH organized under the laws of Switzerland.
On April 22, 2008, Complainant registered Language Direct Corporate Services GmbH as a limited liability company organized under the laws of Switzerland.
Complainant submits that since its inception, Complainant has expended large sums of money advertising its goods and services, and promoting its products and trademark and has acquired considerable goodwill in its business and in its trademark as a result. Complainant’s direct expense related to advertising and marketing campaigns between January 1, 2006 and July 1, 2007 was $123,630.00 USD. Total revenue for the period 2006 to 2007 was $336,076.99 USD.
Complainant acquired a number of large multi-national clients during this period and Complainant’s business has grown steadily since 2004. By 2010, Complainant provided services in 42 different languages.
Complainant owns 86 domain names used to promote its LANGUAGE DIRECT mark and claims to have continuously marketed its services through its website at <languagedirect.net> since 2004. Complainant claims to maintain an extensive Internet presence, and the Internet is the primary marketing channel used by Complainant, and Complainant submits that its use of the Internet as a marketing and sales channel will continue to increase in the future.
Complainant submits that over the years, Complainant has developed advertising partnerships with 15 major airlines throughout the world and submits that these partnerships have allowed Complainant to reach customers on a global scale through various airline loyalty programs and significant exposure on airline websites, airplane seat-back promotional materials, and airline e-mail and print marketing. As a result, Complainant’s advertising reaches tens of millions of airline travelers each year.
Complainant submits that its advertisements have reached approximately 1% of all Australians and approximately 5 million impressions annually worldwide from 2006 to 2007.
In support of its claim to have common law rights in the LANGUAGE DIRECT mark Complainant states that it has been the recipient of several awards and media recognition since launching its language solutions business in 2004 and has provided examples of same dating back to April 15, 2008.
Complainant submits that the disputed domain name, <languagedirect.com>, is confusingly similar to Complainant's LANGUAGE DIRECT mark. The disputed domain name incorporates the entirety of Complainant’s mark and merely adds the generic top-level domain name (gTLD) extension “.com.”
Complainant submits that the addition of the gTLD ".com" extension to Complainant's mark is irrelevant to the Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name. Complainant submits that Respondent has offered to sell the disputed domain name to Complainant for $10,000.00 USD which far exceeds Respondent’s out-of-pocket costs of $2,500.00 USD is evidence that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
Additionally, Complainant submits that there is no evidence in the record to suggest that Respondent is commonly known by <languagedirect.com> pursuant to Policy ¶ 4(c)(ii). Respondent is known as “Ian Hewitt” as shown in the WHOIS information provided by Respondent. See Annex 1; see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests where Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant submits that Respondent has registered and is using the disputed domain name in bad faith. While Respondent may claim to have originally registered the disputed domain name on March 22, 1999, Complainant submits that for the purpose of this proceeding this Panel should take April 2010 as the relevant date of acquisition. The WHOIS history indicates that Respondent sold the disputed domain name to “Matt Lewis” of Pittsburgh, PA in March 2010. Respondent subsequently re-purchased, and registered, the disputed domain in April 2010 and this sale and re-purchase is also corroborated by Respondent’s March 14, 2011 email to Complainant. See The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name May Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (Although the disputed domain name had been created prior to the complainant obtaining rights in the mark at issue, the Panel found the complainant’s rights to predate the respondent’s registration because the disputed domain name had been transferred to the respondent only a month prior to the proceeding. “Therefore, one only needs to trace the registration date back to the most recent transfer instead of the original registration.”); see also RapidShare AG and Christian Schmid v. Fantastic Investment Limited, FA1338403 (Nat. Arb. Forum Oct. 8, 2010) (holding “[e]ven if a domain name was initially registered in good faith, this good faith does not provide protection for subsequent bad faith transferees.”).
Complainant argues that Respondent's offer to sell the disputed domain name to Complainant on March 14, 2011 with knowledge of Complainant's use of the LANGAUGE DIRECT mark is evidence of bad faith registration of the disputed domain name by Respondent.
Complainant submits that on June 24, 2005, Complainant emailed Respondent with an offer to buy the disputed domain name. On that same day, Respondent replied to the Complainant in the negative, and refused to transfer the disputed domain name. Thus, at the time of registering the disputed domain name in April 2010, Respondent had actual knowledge of Complainant’s rights in the LANGUAGE DIRECT mark. Complainant submits that the registration of a domain name that is confusingly similar to another’s mark in spite of knowledge of the mark holder’s rights is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
In addition, on March 15, 2011, Respondent emailed Complainant, threatening to establish a new site to link to language schools as an affiliate, stating that Respondent is happy for Complainant to bring UDRP proceedings, inferring that even an offer of US$10,000 for the domain name would not be acceptable at this stage and indicating that there was no guarantee that he would re-open negotiations. Shortly thereafter, Respondent updated its website to display affiliate links to Complainant’s competitors. Prior to receiving Complainant’s email on March 8, 2011, Respondent’s website did not contain affiliate links to Complainant’s competitors.
Complainant submits that the timing of Respondent’s purchase and registration of the disputed domain name in April 2010, and Respondent’s change in use of the disputed domain name after Complainant’s inquiry is evidence of opportunistic bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Westcor Santan Village LLC v. David Letro, FA248888 (Nat. Arb. Forum April 2, 2009) (“After the shopping center opened in 2007, Respondent changed how it used the disputed domain name to resolve to a website purporting to be a blog about Complainant’s business. The Panel finds that the timing of Respondent’s registration of the disputed domain name and change in use is evidence of opportunistic bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Respondent has been the respondent in numerous other UDRP proceedings in which the disputed domain name was transferred from Respondent to the respective complainants in those cases. This UDRP history, which spans over a decade, indicates a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). Up until it sold the disputed domain name in March 2010, Respondent identified itself in its WHOIS record as “Admin Billing” of Tokyo, Japan, having the email address “language@gol.com” (which is the same email address on its current WHOIS record). Complainant provides an extensive list of previous UDRP cases naming “Admin Billing” and/or “Ian Hewitt” as the respondent in an annex to the Complaint. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
B. Respondent
Respondent submits that Complainant is not entitled to the relief sought.
Respondent argues that he first registered the disputed domain name on March 23, 1999 and Respondent and his affiliate companies have been in control of the domain name almost continuously since then except for a twenty day period in which the Respondent mistakenly transferred the disputed domain name to a third party but arranged to have it transferred back on learning of his mistake.
Respondent submits that he registered his company Language Direct with the Government of Western Australia on September 2005.
Respondent asks this Panel to note that Complainant registered the domain name <languagedirect.net> on August 4, 2004, five years after Respondent registered the disputed domain name <languagedirect.com>.
Respondent further submits that Complainant first registered the business name Language Direct Gmbh in Switzerland on April 25, 2006 more than six months after Respondent registered the business name in Australia.
Respondent points to the fact that Complainant does not own any trademark registrations for the LANGAGE DIRECT mark and only applied to register the mark in Switzerland on March 16, 2011. Furthermore, while the Complainant has provided evidence of advertising in Australia it has not provided any evidence of sales in that jurisdiction.
Respondent submits that in 1996 he wrote and published a book entitled “Edutainment: How to Teach Language with Fun and Games”. Respondent submits that the book was published under the name Language Direct and assigned the ISBN number 0-9586492-00. The Respondent has furnished a print out of from Amazon.com that shows that the earliest review of the book as July 3, 1997.
Respondent submits that he registered the disputed domain name while teaching in Japan on March 22, 1999. When Respondent returned to Australia he registered the business name Language Direct with the State of Western Australia Government and he receives tax bills addressed to Language Direct by the Government of Australia.
Respondent refers to the email correspondence that passed between himself and a principal of the Complainant prior to the initiation of this proceeding and states that the principal of Respondent first contacted him by email on June 24, 2005 stating that she would like to make an offer to purchase the disputed domain name and inter alia claiming that Complainant had registered LANGUAGE DIRECT as a trademark. Respondent states that Respondent’s claim to ownership of a registered trademark was untrue at the time and remains untrue today. Respondent submits that the email exchange relating to the possible sale and purchase of the disputed domain name was initiated by Complainant and over the years since he first registered the disputed domain name Respondent has refused numerous offers to purchase it.
Respondent submits that Complainant is now engaged in reverse domain name hijacking because Complainant has made a number of attempts to purchase the disputed domain name from Respondent only to be rebuffed each time. In 2011 Complainant offered to purchase the disputed domain name for $3,000 and initiated this proceeding to hijack the disputed domain name when Respondent made a counter-offer to sell the disputed domain name for $10,000.
C. Complainant’s Additional Submissions
In a Reply by way of Additional Submissions Complainant denies that Respondent published any book under the name LANGUAGE DIRECT. Complainant submits that the sole evidence of his activities under the name LANGUAGE DIRECT provided by Respondent relates to a book entitled “Edutainment: How to Teach Language with Fun and Games.” This book was originally published by Delta Systems Co Inc., and thus, Respondent’s alleged rights in the LANGUAGE DIRECT mark do not date back to 1996, when Respondent alleges to have written its book.
Complainant refers to an Amazon.com screenshot dated April 25, 2011 submitted by Respondent, and notes that the book publisher is listed as “Language Direct.” However, Complainant refers to another Amazon.com screenshot dated April 8, 2011, submitted as an annex to the Complaint that lists the book publisher as Delta Systems Co Inc.
Complainant asks this Panel to note that the current UDRP proceeding was initiated on April 5, 2011 and submits that Respondent changed the publisher information from Delta Systems Co Inc. to “Language Direct” after receiving the Complaint in an attempt to misleadingly show that its 1996 book in some way incorporated the LANGUAGE DIRECT mark.
Complainant denies that Respondent has superior rights in the name LANGUAGE DIRECT merely because it registered the domain name <languagedirect.com> in 1999.
Complainant refers to Respondent’s claim to have first registered the domain name <languagedirect.com> in 1999 but asks this Panel to note that Respondent has never operated any type of book publishing business using the disputed domain name. Complainant submits that instead, the disputed domain name has been exclusively used by Respondent to advertise and sell its domain name portfolio, as well as to host sponsored advertisements linked to Complainant’s competitors. Complainant refers to screenshots of Respondent’s website from the Internet Archive at Archive.org for each of the years 2000 - 2010, in support of this assertion.
Complainant submits that furthermore, at no time between 1999 and 2010 did Respondent use the mark LANGUAGE DIRECT on the domain <languagedirect.com> or anywhere else. Contrary to Respondent’s assertion that it has superior rights since it registered the domain name in 1999, merely registering the disputed domain name does not afford Respondent rights in the mark LANGUAGE DIRECT under paragraph 4(a)(ii) of the Policy. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).
Complainant denies that Respondent has acquired superior rights in the name LANGUAGE DIRECT merely because of his Australian Business Name registration. Complainant submits that in his Response, Respondent has stated “On September 29, 2005, Respondent registered his company Language Direct with the Government of Western Australia”. Complainant submits that this statement is false, as no such company registration exists. Complainant submits that legitimate company registrations in Australia are made through the Australian Securities and Investments Commission and result in the issuance of an Australian Company Number. Respondent’s mere registration of an Australian Business Name registration for the name LANGUAGE DIRECT is not the same as, nor should it be treated as an equivalent to, a registered trademark or the incorporation of a company nor does it confer any intellectual property rights on the registrant. Complainant submits that an Australian Business Name registration is offered free of charge by the Australian Taxation Office to any person providing a date of birth and street address in Australia. Registration is done online and is immediate and the registration of the business name is simply an obligation imposed by statute on a person who intends to carry on business under a name other than their own name. See Christian Dior Couture v. Chirstina Dior/Chris Vella, D2009-0032 (WIPO Feb. 27, 2009) (“[A]n Australian Business Name Registration is not the same as, or to be treated as the equivalent to, a registered trade mark. It does not give the possessor of that Registration any exclusive right to use that name and does not of itself provide a right or legitimate interest for the purposes of the Policy…unlike registered trademark rights, the registration of a business name does not confer proprietary rights. Rather, it is an obligation imposed by statute on a person who intends to carry on business under a name other than their own name.”)
Complainant submits that Respondent’s argument that his Australian Business Name was registered on September 29, 2005 before Complainant’s incorporation of Language Direct GmbH in Switzerland is irrelevant, because Complainant’s common law rights in the mark LANGUAGE DIRECT date back to 2004 and Respondent’s purported rights, if any, only date back to September 29, 2005. Respondent had previously owned Australian Business Name registration number 0170752G for “Language Direct” in connection with “publishing of language education books” but Respondent expressly cancelled that registration on April 18, 2005. Respondent fails to mention his cancellation of the earlier Australian Business Name Registration in his Response.
Complainant submits that on June 24, 2005, Complainant notified Respondent of Complainant’s rights in the mark LANGUAGE DIRECT in Switzerland and made an offer to buy the domain name <languagedirect.com>. At the time this offer was made, Respondent had no active Australian Business Name Registration under the name LANGUAGE DIRECT because his Australian Business Name Registration 0170752G had been cancelled two months prior.
Complainant notes that Respondent subsequently applied for a new ABN registration number BN10360542 for the name LANGUAGE DIRECT in connection with “Internet Marketing/Sales” on September 29, 2005.
Complainant submits that while Respondent purports to have rights in the term LANGUAGE DIRECT for its alleged book publishing business, any such rights were expressly abandoned on April 18, 2005 when Respondent cancelled its ABN registration number 0170752G, and ceased its alleged book publishing activities.
Furthermore, Complainant refers to posts made by Respondent in an Internet forum on November 15, 2008 entitled “Help to value and sell sites for a fee”, on which the Respondent stated, “I guess I am hopeful to find a mentor with heaps more experience in domain sales and monetization, I own the domains at languagedirect.com and own sites like eslgames.com and teststeststests.com that get OK traffic but don't make much. My fantasy is to find a very experienced mentor/partner to help make the sites more profitable and/or sell some domains for what they are worth.” Complainant submits that this clearly demonstrates that Respondent was focusing his business interests on monetizing and driving traffic to his domain names, and was not using the name LANGUAGE DIRECT in connection with any sort of book publishing business. Complainant submits that therefore it follows that Respondent’s prior use of the name LANGUAGE DIRECT for alleged book publishing activities is completely unrelated to its current use of the name for domain name marketing and sales.
Respondent expressly discontinued use of the LANGUAGE DIRECT name in connection with book publishing activities when it cancelled its ABN registration number 0170752G.
Complainant submits that Respondent can only have rights in marks that are being used, and Respondent is not entitled to warehouse potentially useful marks. Complainant denies that Respondent has common law rights in the name LANGUAGE DIRECT. Complainant submits that authoring a single book that does not reference the name LANGUAGE DIRECT does not afford Respondent rights or legitimate interests in the name.
Complainant refers to the tax bill addressed to “Language Direct” adduced by Respondent and notes that since Respondent has registered an Australian Business Name any tax bill would naturally come to the name provided on the registration. Complainant argues that this does not establish that Respondent has an operating business under the name “Language Direct.” Furthermore, the tax bill provided by Respondent is for $0.00 and Respondent does not demonstrate any taxable revenue for the first quarter of 2011 from its alleged activities surrounding the term LANGUAGE DIRECT.
By contrast since its inception in 2004, Complainant’s sales to Australian customers have totaled $28,899.29 USD.
Because Complainant had established common law rights in the mark LANGUAGE DIRECT in Switzerland dating back to 2004, Complainant does not need to establish common law rights in Australia as well. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years). Complainant submits that therefore, Respondent’s argument that Complainant has provided no evidence of actual sales in Australia is irrelevant.
Respondent alleges that he “accidentally transferred” the domain name to a third party in 2010, and upon learning of this “mistake”, Respondent then re-purchased the domain name. Complainant submits that this however, is simply a case of greed, where Respondent, a serial cybersquatter, sought to profit by selling its 1,600 typo-squatting domain names, and then realized that it could profit even more if he retained and monetized <languagedirect.com>.
Complainant submits that Respondent’s April 2, 2010 email to the third party does not prove that the Respondent accidently transferred the domain name. In fact, Respondent knowingly sold the domain name, and subsequently decided it was valuable. Respondent, realizing the potential advertising revenue it could generate by free-riding off the tremendous goodwill of Complainant’s LANGUAGE DIRECT trademark, negotiated the transfer of the disputed domain name <languagedirect.com> back from Matt Lewis. Furthermore, Complainant asks if Respondent truly transferred the domain name by mistake, why did he pay $2,500.00 to regain possession of <languagedirect.com>? Complainant submits that if Respondent’s actions were simply an honest mistake, Respondent should have negotiated a transfer back from the third party at no cost.
Respondent stated in a March 15, 2011 email to Complainant, monetizing the domain name <languagedirect.com> had been Respondent’s intention for a number of years: “This http://languagedirect.com/ has been planned for YEARS and is now coming to fruition (very much under construction). When I can make at least $1,000 per year from this, why would I accept your pathetic offer??”
Subsequently, Respondent launched his new website with sponsored advertisements and links to Complainant’s competitors. See Complaint, Annex 66. See The Regional Municipality of Peel v. Gaganjot Dhillon, D2004-1003 (WIPO February 16, 2005) (“Respondent argues that its main business ‘is offering a bona fide business directory’. The Panel does not dispute this fact, but it is the current use of the disputed Domain Name which is the object of these proceedings, not the Respondent’s main business”).
Complainant submits that Respondent’s bad faith intent is also evidenced by its registration of multiple typosquatting domain names of other famous trademarks, such as Alaska Airlines and LastMinuteTravel.com as evidenced in the information provided by Respondent in an annex to the Response. See also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).
D. Respondent’s Additional Submissions
In a rejoinder submitted by way of Additional Submissions Respondent submits that Complainant’s Reply does not rebut the essential facts compelling a decision in Respondent’s favor.
Respondent submits that he did in fact publish a book and has furnished copied extracts from the book that Respondent claims was published by Respondent’s company Language Direct and distributed by Delta Systems Inc. in the United States together with a CD that contained songs referenced in the book. Respondent has offered to supply the originals of each to the Panel. Respondent repeats his claim to having superior rights in the LANGUAGE DIRECT mark and repeats his allegation that the Complainant misrepresented that it held a registered trademark in the Complainant’s email dated June 24, 2005.
Respondent submits that Complainant is established in Switzerland, a civil law jurisdiction where no common law trademark rights exist. Citing MCP Holding Ltd. V. Linh Wang D2010-1999 (WIPO Feb. 4, 2011)( finding that a claim of common law rights in Germany, Switzerland and Austria by the complaiant did not satisfy the requirement to show that it had valid trademark rights). Respondent argues that Complainant has no asserted any common law rights nor has it proven any secondary meaning in LANGUAGE DIRECT in Australia where Respondent has been using the trademark since 1996.
Respondent submits that the Complainant was engaged in reverse domain name hi-jacking which has been defined by the panel in Henkel KGaA v. Mr Augustin Sbinta , DRO2008-0003 (WIPO Apr. 14, 2008) as when “the Complainant knew or should have known at the time it filed the Complaintthat it could not prove one of the essential elements required by the Policy.” Respondent submits that Complainant in this case was aware that it could not succeed and refers to an email sent by the principal of Complainant to Respondent on March 8 2011 which states: “Hi Ian. Not a chance. There’s not much anyone can do with it – if they set up a language business on the site or a linkage to us we’ll simply take them to the UDRP on it. You are clearly OK as you are not attempting to profit from our brand on it, and were there first. Different matter for anyone who buys the domain now though. Can give you $2000 for it. It’s not worth an awful lot more – we’ve managed to grow quite nicely in the last years without the .com – its just a “nice to have” thing, that’s all.” A month later Complainant initiated this Complaint.
Respondent claims to have written and published a book entitled 1996 he wrote and published a book entitled “Edutainment: How to Teach Language with Fun and Games” in 1996 using the business name LANGUAGE DIRECT. Complainant accepts that the book was published but denies that it was published using the business name LANGUAGE DIRECT.
Respondent originally registered the disputed domain name on March 22, 1999.
Complainant has no registered trademark but has established a substantial goodwill in the use of the mark LANGUAGE DIRECT through substantial investment of money and energy since 2004.
Complainant registered the domain name <languagedirect.net> on 4 August 2004 and soon thereafter established an Internet presence.
On September 29, 2005 Respondent registered LANGUAGE DIRECT as his Australian Business Name. He had an earlier Australian Business Name Registration which he appears to have cancelled on April 18, 2005.
On April 25, 2006, Complainant incorporated as a limited liability company, “Language Direct GmbH” organized under the laws of Switzerland.
On April 22, 2008, Complainant registered the business name “Language Direct Corporate Services GmbH” as a limited liability company organized under the laws of Switzerland.
In the months of March and April 2010 Complainant transferred the disputed domain name to a third party for a short period but purchased it back and re-registered the disputed domain name in Respondent’s own name in April 2010.
Respondent has not used the disputed domain name for the purpose of advertising any language services but following a breakdown of negotiations between Respondent and a principal of Complainant corporation on March 15, 2011 Respondent posted links to language related services on a web site to which the disputed domain name resolves.
Preliminary Issue: Deficient Response
Respondent’s Response was submitted without the annexes separate from the Response and is therefore not in compliance with ICANN Rule 5. This Panel has decided in the exercise of its discretion, to accept and consider this Response as there is no prejudice to the Complainant and no significant prejudice to the process by so doing.
Substantive Issues
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has provided ample evidence to prove on the balance of probabilities that it has acquired rights in the LANGUAGE DIRECT trademark though use in commerce in the provision of language services since 2004.
Complainant has had an Internet presence through its website established at the <languagedirect.net> address since that date and has invested significant resources in advertising and promoting its products across the world focusing on business relationships with airlines in particular since that date.
The disputed domain name is identical to Complainant’s LANGUAGE DIRECT trademark except for the addition of the .com gTLD extension and it is generally accepted by panels established under the Policy that the gTLD can be ignored when making the comparison. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).
Complainant has therefore succeeded in the first element of the test in Policy paragraph 4(a)(i).
Policy paragraph 4 (c) lists a number of circumstances, in particular but without limitation, that if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii).
Policy paragraph 4(c)(ii) expressly states that one of the circumstances that shall demonstrate a respondent’s rights or legitimate interest in a domain name is where the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights.
In the present proceeding Respondent has claimed that he published a book using the business name LANGUAGE DIRECT as early as 1996. This claim is supported by the fact that he first registered the disputed domain name <languagedirect.com> in 1999 prior to any use of the name or mark LANGUAGE DIRECT by Complainant which commenced its use in August 2004 at earliest.
Furthermore on the evidence Respondent had registered LANGUAGE DIRECT as a business name prior to 2005 when Respondent was in its infancy.
It is arguable therefore that Respondent was commonly known by the name LANGUAGE DIRECT prior to the establishment of Complainant.
On the other hand there is some conflict in the evidence as to whether Respondent published the book using the name LANGUAGE DIRECT. This is refuted by Complainant who has referred to apparently contradictory information on the Amazon.com website. Furthermore it is arguable that even if Respondent published the book as LANGUAGE DIRECT, such use was de minimis.
Paper based proceedings under the Policy make it difficult to test the evidence. Because this Panel finds that there is no evidence of bad faith registration it is not necessary to decide whether Respondent had rights or legitimate interest in the disputed domain name.
On the evidence Respondent first registered the disputed domain name in 1999. Respondent makes no claim to any rights in the LANGUAGE DIRECT mark prior to 2004.
Panelists under the Policy appear to be moving to a view that the issue of bad faith registration should be taken as the date on which a respondent registers a disputed domain name.
In the present case Respondent last registered the disputed domain name in April 2004 when Complainant had arguably acquired rights in the LANGUAGE DIRECT mark. However the facts of the present case are exceptional in that Respondent first registered the domain name in 1999. He claims to have published a book in the name LANGUAGE DIRECT in 1996 and it is quite reasonable to accept his evidence that he did so at face value, particularly as he first registered the disputed domain name three years later and he registered LANGUAGE DIRECT as an Australian Business Name prior to 2005 when he allowed his registration to lapse and re-registered the business name again that year.
Respondent was the registrant of the disputed domain name continuously from 1999 until the date of the Complaint except for a short period between March and April 2010.
In the circumstances this Panel finds that Complainant has failed to prove that the disputed domain name was registered in bad faith. The Complaint must therefore be denied and it is not necessary to proceed to decide on the issue of the alleged bad faith use by Respondent.
In the view of this Panel it is a significant and important fact in the present case that Complainant registered its domain name <languagedirect.net> on the .net gTLD on August 4, 2004, five years after Respondent registered the disputed domain name <languagedirect.com>. It follows that when Complainant commenced business as LANGUAGE DIRECT it was aware that the disputed domain name was not available and that Respondent held the registration for the disputed domain name but nonetheless decided to commence its business on the basis of a domain name registration with a .net gTLD. It is illogical that it can then complain that Respondent owns the disputed domain name.
While there is some evidence indicating that Complainant has engaged in reverse domain name hijacking the evidence on the record is not sufficient to make such a finding and Respondents request for a finding of same is refused.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <languagedirect.com> domain name REMAIN WITH Respondent.
James Bridgeman Panelist
Dated: May 16, 2011
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