Westmore · UDRP DecisionLaureateglobaleducation.com
The Panel ordered transfer of <laureateglobaleducation.com>. It found the domain confusingly similar to the Complainant’s LAUREATE mark because the mark remained the dominant component despite the descriptive additions “global” and “education.” The Respondent lacked rights or legitimate interests because its unauthorized, confusion-based use was not bona fide and it did not rebut the Complainant’s prima facie case. Bad faith was established under paragraph 4(b)(iv): the Respondent was found to have registered and used the domain to create an impression of association with the Complainant and attract Internet users for commercial gain.
The timeline behind laureateglobaleducation.com
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The decision illustrates a straightforward targeting case in which a respondent combined a distinctive mark with words describing the complainant’s international education business and then used the domain in the same commercial field. The geographic connection was also significant: the Respondent was located in Kenya, where the Complainant held an earlier trademark registration.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Laureate Education, Inc. v. Laureate Education / Laureate Global Education Case No. D2014-2246 1. The Parties The Complainant is Laureate Education, Inc., Baltimore, Maryland, United States of America (“US”), represented by Venable, LLP, United States of America. The Respondent is Laureate Education / Laureate Global Education, Mombasa, Kenya. 2. The Domain Name and Registrar The disputed domain name <laureateglobaleducation.com> is registered with eNom (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2014. On December 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2015. The Center appointed Adam Taylor as the sole panelist in this matter on January 30, 2015. 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 operates an international network of over 75 campus-based and online institutions of higher education spanning around 30 countries in North America, Latin America, Europe and Asia. The Complainant has traded under the mark “Laureate” since at least 2004. The Complainant’s main website is at “www.laureateeducation.com”. The Complainant owns the following trade marks for LAUREATE: US trade mark no. 1508958 filed February 11, 1986 in class 41, and Kenya trade mark no. 55944 dated December 19, 2003 in class 9. The disputed domain name was registered on July 23, 2010. The Complainant sent a cease-and-desist letter to the Respondent on June 16, 2014. No response was received. As of November 25, 2014, there was a website at the disputed domain name headed “LAUREATE GLOBAL EDUCATION. A one stop shop for overseas education…”, which claimed to offer advice to students in East Africa about studying in educational institutions worldwide. 5. Parties’ Contentions A. Complainant Here is a summary of the Complainant’s contentions: The disputed domain name contains the Complainant’s registered mark LAUREATE and the generic terms “global” and “education”. There is no dispute that the disputed domain name is confusingly similar to the Complainant’s mark. The Complainant’s rights predate the Respondent’s registration of the disputed domain name. The Respondent is not an authorised user of the Complainant’s mark. The Respondent uses the disputed domain name for a website under the LAUREATE brand, which offers to match students with higher education institutions, in an attempt to cause confusion as to the site’s affiliation with the Complainant’s unique and well-known worldwide network. The Respondent is offering online educational services that are directly related to those offered by the Complainant. The Respondent further attempts to associate itself with the Complainant by claiming to partner with other Complainant institutions. This is no coincidence. The Respondent was and is fully aware of the Complainant. Moreover, Respondent is using its website to redirect potential customers to competing institutions. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has rights in the mark LAUREATE by virtue of its registered trade marks for that term. Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Second Edition (“WIPO Overview 2.0”) makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Paragraph 1.9 of WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name. Here, the Complainant’s distinctive trade mark is undoubtedly the dominant component of the disputed domain name and, as indicated in paragraphs 1.2 and 1.9 of WIPO Overview 2.0 , the addition of the descriptive terms “global” and “education” is insufficient to avert a finding of confusing similarity. For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark. The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases: “While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide . In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com” , WIPO Case No. D2000-0847 , the panel stated that: “… use which intentionally trades on the fame of another can not constitute a “ bona fide ” offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” See also Am. Online, Inc. v. Fu , WIPO Case No. D2000-1374 , (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”). Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case. The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind. The Complainant’s business pre-dates the disputed domain name, as does the Complainant’s registered trade mark in Kenya, where the Respondent is located. The Respondent claims to specialise in advising students about studying in educational institutions worldwide and it even lists one of the Complainant’s institutions on its website. So it can hardly have been unaware of the Complainant. The Respondent has not come forward to deny the Complainant’s assertions of bad faith. In the circumstances, it is difficult to conceive of any genuine reason why the Respondent would wish to register a domain name incorporating the term “Laureate.” Moreover, the Respondent has offered no explanation. In the circumstances, the Panel thinks it reasonable to infer that the Respondent selected the disputed domain name in order to give the impression that it was associated with the Complainant and thereby benefit commercially. The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark. The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy. 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 disputed domain name, <laureateglobaleducation.com>, be transferred to the Complainant. Adam Taylor Sole Panelist Date: February 13, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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