WIPO Domain Name Decision D2018-2434 for onlinetoefl.org
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Educational Testing Service v. Registration Private, Domains By Proxy, LLC / Hikmet Sahiner, Avrimpex Case No. D2018-2434 1. The Parties
The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America (“United States”), represented by Jones Day, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Hikmet Sahiner, Avrimpex of Ankara, Turkey, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2018. On October 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 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 29, 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 November 2, 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 November 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2018. The Respondent did not submit any response. The Respondent sent several informal email communications but did not submit any formal Response. Accordingly, the Center notified the Parties on November 27, 2018 that it would proceed to the panel appointment.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on December 10, 2018. 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 is a United States company specialized in educational testing services namely, administering tests dealing with languages. The Complainant language testing services are known with the TOEFL trademark throughout the world.
The Complainant owns multiple trademark registrations TOEFL including the followings among others:
- TOEFL word mark No. 1103427 registered on October 3, 1978 before the United States Patent and Trademark Office covering the classes 16 and 41.
- TOEFL word mark No. 2006 28369 registered on May 11, 2009 for the classes 9, 16, 41 and 42 in Turkey where the Respondent is domiciled.
The Complainant’s TOEFL trademark has been recognized as a well-known trademark according to the Turkish Patent and Trademark Office on June 24, 2011.
The Complainant’s TOEFL trademark has been recognized as a well-known trademark in previous UDRP decisions.
The Complainant owns several domain names such as and among other several domain names.
The disputed domain name was registered on July 6, 2012 in the name of the Respondent domiciled in the city of Ankara, Turkey. The Panel visited the disputed domain name on January 11, 2019, and observed that the disputed domain name redirects to the website “” in Turkish, which offers language courses and other services related to the language tests organized by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark TOEFL and that the addition of the descriptive word “online” reinforces the association between the disputed domain name and the Complainant’s trademark.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark TOEFL. The Complainant further asserts that in the view of bad faith use of the disputed domain name, the services offered by Respondent cannot be considered for a bona fide offering of goods and services by an authorized or non-authorized third party.
Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s trademark considering that the Respondent is using the Complainant’s trademark with its logo and that the Respondent’s website clearly suggests that the website belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant.
The fact that the website does not provide any information on the true identity of the website provider clearly shows that the Respondent intentionally creates the impression that the services offered on the Respondent’s website are provided by the Complainant or at least an official dealer by misleading users on the source of the website and thereby attract, for commercial gain, Internet users to the website. B. Respondent
Though the Respondent did not formally reply to the Complainant’s contentions, he sent several email communications between October 29, 2018, November 5, 6 and 7, 2018 stating that:
- the disputed domain name is not identical or confusingly similar to the trade mark TOEFL;
- it is clear from the underlying website content that the Respondent is targeting online prep course website for Turkish speakers;
- there are several websites including the term “toefl” and that the fact that the Complainant is targeting the Respondent is discriminatory;
- he has legitimate rights and interest on the disputed domain name as the term “toefl” is generic;
- the disputed domain name is used for offering online prep course towards TOEFL exam;
- it has not registered or used the disputed domain name in bad faith;
- the Complainant has been acting in bad faith and discriminatory manner. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must p