BPP Holdings Limited v Robyn Joanne Makin

WIPO Case No. D2024-2112

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BPP Holdings Limited v. Robyn Joanne Makin

Case No. D2024-2112

1. The Parties

1.1 The Complainant is BPP Holdings Limited, United Kingdom, represented by Demys Limited,

United Kingdom.

1.2 The Respondent is Robyn Joanne Makin, United Kingdom.

2. The Domain Name and Registrar

2.1 The disputed domain name <bppprofessionaldevelopment.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2024. At that date the recorded registrant details for the Domain Name provided in response to a WhoIs search was “Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf”. On May 27, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the Domain Name. On May 27, 2024, the Registrar transmitted by email to the Center its verif ication response disclosing the underlying registrant and contact information it held for the Domain Name. The Center sent an email to the Complainant on May 28, 2024 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 May 29, 2024.

3.2 The Center verif ied that the Complaint together with the amended Complaint satisf ied 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2024. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on June 21, 2024.

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3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 25, 2024. The Panel f inds 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

4.1 The Complainant is a company incorporated in the United Kingdom and is a provider of professional education and training services. The Complainant was founded in 1976 as Brierley Price Prior, a f irm of accountancy tutors, and has since expanded its portfolio to include law, business, f inance, tax, and health courses. The Complainant has over 20 offices across the United Kingdom and Ireland and employs more than 1,800 staf f . The Complainant owns and operates several subsidiaries, including “BPP University Limited”, a degree-awarding body, with five separate schools and “BPP Professional Education Limited”, a specialist provider of professional education, delivering a range of Professional Qualifications, Professional Apprenticeships, and Professional Development programs.

4.2 The Complainant operates its main website f rom the domain name <bpp.com>, where it of fers

information about its courses, programs, and services, as well as online professional development learning
resources and tools.

4.3 The Complainant owns a number of registered trade marks that comprise or incorporate the term “BPP”. They include:

(i)        United Kingdom registered trade mark No. UK00901502376 dated October 11, 2001 for BPP as a word mark in classes 9, 16, and 41.

(ii)       European Union trade mark No. 001502376 dated October 11, 2001 for BPP as a word mark in classes 9, 16, and 41; and

(iii)      United States trade mark No. 75891634 dated May 20, 2003 for BPP as a standard character mark in classes 9, 16, and 41.

4.4 The Complainant is also the owner of United Kingdom figurative mark (“UK00002587039”) that takes the form a stylised representation of the face of a lion (the “Lion Mark”).

4.5 The Domain Name was registered on September 6, 2021. It has been used since registration for a website featuring the Complainant’s BBP name and mark, as well as the Lion Mark and purporting to of fer “Professional Development” services. The website adopted a similar format and colour scheme to a website previously operated by the Complainant, and incorporated links to the Complainant’s website. At the bottom of the page appeared the text “© BPP Professional Education Limited”.

5. Parties’ Contentions
A. Complainant

5.1 The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.

B. Respondent

5.2 The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

A. Identical or Confusingly Similar

6.1 It is generally accepted that the f irst element functions primarily as a standing requirement.

The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

6.2 The Complainant has shown rights in respect of the BPP trade mark for the purposes of the Policy (see WIPO Overview 3.0, section 1.2.1).

6.3 The entirety of that trade mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy (see WIPO Overview 3.0, section 1.7).

6.4 Although the addition of other terms in a domain name may bear on the assessment of the second and third elements, the Panel finds the addition of the words “professional development” in the Domain Name does not prevent a f inding of confusing similarity between Domain Name and the mark for the

purposes of the Policy (see WIPO Overview 3.0, section 1.8).

B. Rights or Legitimate Interests

6.5 Paragraph 4(c) of the Policy provides a list of circumstances in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.

6.6 In the present case, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name.

6.7 However, dealing with the issue more directly, and for reasons that are set out in the context of the Panel’s assessment of bad faith, the Panel is satisfied that the Domain Name deliberately impersonates the Complainant has been registered and held for a website that falsely impersonates the Complainant.

6.8 There is no rights or legitimate interests in using the Complainant mark in the Domain Name to
impersonate the Complainant (see WIPO Overview 3.0, section 2.5.1). Further, the Panel is of the view that

such use and impersonation provide positive evidence that no such rights or legitimate interests exist.

6.9 Accordingly, the Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

6.10 The Panel is satisfied that the Domain Name has been registered and used by the Respondent with

knowledge of the Complainant and with the intention of drawing Internet users to a website that
impersonates the Complainant.

6.11 First, the Panel is satisf ied that the Domain Name was registered with the knowledge of and a

deliberate intent to refer to the Complainant and its marks. The reason for this is that the Domain Name can only be sensibly understood as the letters “bpp” combined with the words “professional development”. As the Complainant offers professional development services using the BPP mark, the most reasonable explanation for the registration of the Domain Name is in order to refer to the Complainant and its services.

6.12 Second there is the website that has operated f rom the Domain Name, which the Panel is satisf ied deliberately impersonates the Complainant’s business. Not only does it use a similar colour scheme to that of a previous website operated by the Complainant’s subsidiary, but the website prominently displays the

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Complainant’s BPP mark and the Lion Mark and falsely and directly claims in a copyright notice that this is the website of the Complainant’s subsidiary.

6.13 Exactly why the Respondent has engaged in this false impersonation is not clear. However,

regardless of the reasons why this has been done, deliberately registering a domain name that impersonates a trade mark holder with the intention of operating a website that falsely impersonates a trade mark holder, is registration and use of a domain name in bad faith.

6.14 Accordingly, the Panel f inds the third element of the Policy has been established.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bppprofessionaldevelopment.com> be transferred to the Complainant.

/Matthew S. Harris/
Matthew S. Harris
Sole Panelist
Date: July 4, 2024