Decisión del Panel Administrativo nº D2018-2322 of WIPO Arbitration and Mediation Center, February 27, 2019 (case Rosetta Stone Ltd. v. Digital Privacy Corporation / Stuart Thomas)
| Resolution Date | February 27, 2019 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer with dissenting opinion |
| Dominio | Generic Domains |
The Complainant is Rosetta Stone Ltd. of Harrisonburg, Virginia, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Digital Privacy Corporation of California, United States / Stuart Thomas of Los Angeles, California, United States, represented by ESQwire.com P.C., United States.
The disputed domain name [rosettastone.app] is registered with 101domain, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2018. On October 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 22, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 24, 2018.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2018. On November 14, 2018, the Respondent requested an automatic four-day extension to submit a Response under paragraph 5(b) of the Rules. On November 16, 2018, the Respondent was granted an additional extension of time to file a Response until November 21, 2018. The Response was filed with the Center on November 21, 2018. On November 27, 2018, the Center received a supplemental filing from the Complainant. On December 7, 2018, the Center received a supplemental filing form the Respondent. The Complainant submitted a reply to the Respondent’s supplemental filing on December 12, 2018. The Respondent submitted a reply to the Complainant’s second supplemental filing on December 14, 2018.
The Center appointed Assen Alexiev, Luca Barbero, and The Hon Neil Brown Q.C. as panelists in this matter on January 7, 2019. The Panel finds that it was properly constituted. Each member of 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.
Exercising its powers under paragraphs 10 and 12 of the Rules, the Panel has decided to accept the supplemental filings of the Parties and to take them into account, as they deal with issues that the Parties were not in a position to take into account and discuss in the Complaint and in the Response.
The Complainant was established in 1992 as Fairfield Language Technologies. In 2006, the company was renamed to Rosetta Stone Ltd. The Complainant offers interactive language-learning products for the study of 30 languages, including its Rosetta Stone mobile application available in Google Play and in the Apple App Store. The Complainant has offices in various cities in the United States, Tokyo, Seoul, London, Dubai, and Sao Paulo, and is a publicly traded company on the New York Stock Exchange.
The Complainant is the owner of the following trademark registrations for “Rosetta Stone” (the ROSETTA STONE trademark):
- the trademark ROSETTA STONE with registration No. 2761492, registered on September 9, 2003 in the United States for goods in International Class 9;
- the trademark ROSETTA STONE with registration No. 3569720, registered on February 3, 2009 in the United States for services in International Class 38;
- the trademark ROSETTA STONE with registration No. 3749526, registered on February 16, 2010 in the United States for services in International Class 42;
- the trademark ROSETTA STONE with registration No. 4019088, registered on August 30, 2011 in the United States for services in International Class 41;
- the European Union trademark ROSETTA STONE with registration No. 004779864, registered on January 18, 2007 for goods and services in International Classes 9, 16, and 41;
- the European Union trademark ROSETTA STONE with registration No. 010327062, registered on February 1, 2012 for services in International Classes 38, 41, and 42; and
- the trademark ROSETTA STONE with registration No. TMA627854, registered on December 8, 2004 in Canada for goods and services in International Classes 9, 38, 41, and 42.
The Complainant’s official website is located at the domain name [rosettastone.com].
The disputed domain name was registered on May 8, 2018. It is currently inactive.
The Complainant submits that its ROSETTA STONE trademark is well recognized by consumers, industry peers and the broader global community as a result of the Complainant’s significant investments over the years to advertise, promote, and protect the ROSETTA STONE trademark through various forms of media, including the Internet. The Complainant’s primary website at “www.rosettastone.com” has received 2.56 million visitors in the past six months according to Similarweb.com, and Alexa.com ranks it as the 5,802nd most popular site in the United States and 17,968th in the world. In Google Play, the Complainant’s Rosetta Stone mobile application has been installed by more than five million users, while the Apple Store ranks the same mobile application at No. 25 in the education category with a rating of 4.7 out of 5. The Complainant received the 2017 Tabby Awards for the best iOS phone application and the best Android phone application in the education category, and together with Siemens Professional Education, the Complainant won the eLearning Award 2018 for the most innovative workplace learning program.
According to the Complainant, the disputed domain name is identical to the ROSETTA STONE trademark in which the Complainant has rights, as it incorporates the trademark in its entirety.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The granting of trademark registrations to Complainant for the ROSETTA STONE trademark is prima facie evidence of the validity of “rosetta stone” as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use it. The Complainant points out that the Respondent is not commonly known by the disputed domain name, and the WhoIs information for the disputed domain name identifies its registrant as Stuart Thomas, which name does not resemble the disputed domain name. The Complainant adds that it has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s ROSETTA STONE trademark, and points out that the disputed domain name redirects Internet users to a blank page without content. According to the Complainant, the Respondent has failed to make use of this disputed domain name and has not demonstrated any legitimate use of it. The Complainant also refers to the fact that the Respondent registered the disputed domain name on May 8, 2018, which is many years after the Complainant applied for registration and commenced the use of its ROSETTA STONE trademark in 1992 and after it registered the [rosettastone.com] domain name in 1999.
With its supplemental submissions, the Complainant points out that the Respondent has not offered any verifiable evidence for the use of the disputed domain name or for any preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The declaration submitted by the Respondent is self-serving, not inherently credible and not supported by relevant pre-Complaint evidence. The Complainant disputes that the evidence submitted by the Respondent “is highly suggestive of the types of existing services offered and intended to be offered”, because it is not supported by evidence of a relationship between the Respondent’s existing products or services and the disputed domain name. The Respondent’s current products make no reference to the disputed domain name and do not reflect any use or intention to use it.
The Complainant states that the Respondent does not deny that the Complainant’s ROSETTA STONE trademark is well known, and that the Respondent was aware of the Complainant and its rights when registering the disputed domain name. The existence of Complainant’s Rosetta Stone app on every major mobile application platform today is further evidence in this regard. The Complainant states that when a distinctive well-known mark is involved, past panels have tended to view with a degree of skepticism a respondent’s defense that the domain name was merely registered for legitimate speculation based on a dictionary meaning as opposed to targeting a specific brand owner. The Complainant points out that the ROSETTA STONE trademark possesses substantial inherent and acquired distinctiveness, and the awareness of it is considered to be significant. According to the provisions of Article 6bis of the Paris Convention for the Protection of Industrial Property (“Paris Convention”), extended by...
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