WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc.
Case No. D2004-0324
1. The Parties
The Complainant is Educational Testing Service, Princeton, New Jersey, United States of America, represented by Dorsey�&�Whitney, LLP, United States of America.
The Respondents are Educational Training Services, Sonny Pitchumani, Randal Nelson, and MLI Consulting, Inc., New York, New York, United States of America and/or Toronto, Ontario, Canada.
2. The Domain Names and Registrars
The disputed domain names are: , registered with Network Solutions, Inc.; and and , both registered with NameS (a VeriSign Co.) (collectively, “the Domain Names”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on May 3, 2004. On that same day the Center transmitted by email to Network Solutions, Inc. and NameS a request for registrar verification in connection with the Domain Names. On May 4, 2004, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details for the administrative, billing, and technical contacts. Also on May 4, 2004, the Center received by e-mail from Respondent Randal Nelson what he characterized as “not a Formal Response” to the Complaint. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondents of the Complaint, and the proceedings commenced on May 5, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May�25,�2004. The Response was filed with the Center on May 21, 2004.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on June�4,�2004. 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
A. Complainant’s Business and Marks
Complainant has used, registered or applied to register “ETS” and variations of it in the United States and in 69 other countries for goods including books, manuals, computer programs, audio cassettes, videocassettes, and for services including educational testing. (Copies of printouts from the U.S. Patent and Trademark Office (“PTO”) are attached as Exhibit 9 to the Complaint.) Based on those printouts Complainant’s first use of ETS in commerce dates back to the late 1940’s, with registration dates in the early 1950’s. Complainant has also used, registered or applied to register EDUCATIONAL TESTING SERVICE in the United States and worldwide for goods and services, including educational testing services. (Copies of printouts from the PTO are attached as Exhibit 10 to the Complaint.) Based on that information, Complainant’s first use of EDUCATIONAL TESTING SERVICE in commerce dates back to the late 1940’s with registration dates in the early 1980’s.
On December 19, 1947, the American Council on Education, the Carnegie Foundation for the Advancement of Teaching and the College Entrance Examination Board turned over their testing programs, a portion of their assets and some of their employees to form ETS – a national organization devoted exclusively to educational testing and research. Among the many well-known tests Complainant or its related companies developed and administer are: GMAT� (“Graduate Management Admission Test”); GRE� (“Graduate Record Examinations”); TOEFL� (“Test of English as a Foreign Language”); and TOEIC� (“Test of English for International Communication”). In connection with these tests, Complainant has developed numerous test preparation products, including print publications, CD-ROMs and computer software. These products contain information about studying for and taking the tests. Complainant and its representatives offer them for sale worldwide, including on Complainant’s websitesi located at “” and “”. Complainant also provides general information about its tests on these websites, as well as registration information for taking the tests anywhere in the world. (Copies of sample pages from Complainant’s websites are attached as Exhibit 12 to the Complaint.)
Complainant generates more than $600 million in annual revenue, and has spent considerable sums of time, effort and money researching, developing, marketing and promoting products and services sold under its ETS and EDUCATIONAL TESTING SERVICE marks. Furthermore, those marks are regularly mentioned in newspaper and magazine articles in the United States and abroad. (Copies of such articles are attached as Exhibit 13 to the Complaint.)
B. Respondents’ Business and Domain Namesii
MLI Consulting, Inc. (MLIC) promotes itself as a Management Consulting organization having core competencies in productivity and profit improvement plans, enterprise resources planning, and educational and management training services. Respondents claim MLIC is incorporated and operates under New York law, and has been offering test preparation and educational training programs since 1991.
Educational Training Services is a strategic business unit of MLIC that is involved in test preparation and management training programs having the objective of imparting skill-enhancing training required to get a jump on the graduate school admission tests, such as Complainant’s GMAT� and GRE� tests. Respondents registered on July 6, 1999; on September 4, 2001; and on August 3, 2001. It is undisputed that all of the Domain Names resolve to the same website, located at “www.”. On that website Respondents promote and offer for sale their test preparation programs and study materials.
Sonny Pitchumani and Randal Nelson are the Managing Director and Chief Executive, respectively, of Respondent MLIC. WHOIS search results indicate that Educational Training Services is the Registrant of and Sonny Pitchumani is designated as the Administrative Contact. Sonny Pitchumani’s contact information is given as: “Maple Leaf International Consulting, Inc.” located at Toronto, Ontario (Exhibit 1 of the Complaint.) WHOIS search results also indicate that Sonny Pitchumani is both the Registrant and Administrative Contact for the domain name . His contact information indicates an association with MLIC in New York City. (Exhibit 2 of the Complaint.) WHOIS search results further indicate that Randal Nelson is the Registrant and Administrative Contact for “.” His contact information also indicates an association with MLIC in New York City. (Exhibit 3 of the Complaint.) In correspondence with the Center, Randal Nelson’s signature line indicates his association with “MLI Consulting, Inc. and Educational Training Services.” Printed towards the top of the same stationary is “MLIC” and underneath “Maple Leaf International Consulting, Inc.” Similarly, on Respondents’ website they reference “Maple Leaf International Consulting, Inc.” in close proximity to “MLIC” and Educational Training Services.
5. Parties’ Contentions
A. Complainant
As a result of Complainant’s long-standing use of ETS and EDUCATIONAL TESTING SERVICE (“the Marks”) in connection with its products and services, the Marks have acquired worldwide recognition as identifying exclusively Complainant’s products and services. In Decision No. G00911172, dated October 23, 2002, the ETS mark was found by the Taiwan Intellectual Property Office to be famous in Taiwan and throughout the world. (A copy of the decision with an English translation is attached as Exhibit 14 of the Complaint.) Complainant alleges the Marks are famous, recognized in every field of endeavor and enjoy a worldwide reputation and renown among professional, occupational, economic, governmental, institutional and industrial sectors.iii Complainant exclusively owns the goodwill symbolized by the Marks.
The Domain Names are essentially identical and certainly confusingly similar to the ETS mark because the primary element of the Domain Names “ets” is identical to the ETS mark. Respondents’ use of “worldwide” in connection with the ETS mark creates the false impression that the website associated with the Domain Names is a subsidiary or branch affiliated with Complainant. Given the fame of the ETS mark and the fact that Respondents’ Domain Names are used in connection with the sale and offer for sale of goods and services identical to those of Complainant, the Domain Names are likely to confuse consumers into believing that Respondents’ business is affiliated with or endorsed by Complainant, or that Respondents’ use of the Domain Names is authorized by Complainant. Complainant was first alerted to Respondents’ use of the domain name because it was contacted by consumers who had purchased Respondents’ test preparation goods and services under the mistaken belief that such goods and services were produced or endorsed by Complainant.
Respondents have no rights or legitimate interests in the Domain Names. Complainant’s registrations for ETS evidence its exclusive rights in the mark in connection with the goods and services covered by those registrations, and Complainant has not authorized Respondents to use the ETS mark. Respondents have not made use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services, nor could Respondents do so in light of the fame of the ETS mark and Complainant’s exclusive rights in the ETS mark in the field of educational testing and test preparation. Furthermore, none of Respondents have been commonly known by the Domain Names and Respondents are not making a legitimate noncommercial or fair use of the Domain Names.
Respondents have registered the Domain Names without any bona fide basis to capitalize unfairly on the goodwill of Complainant’s ETS mark. They selected the Domain Names fully aware of Complainant’s ETS mark and the associated products and services, and with the specific intent to cause consumer confusion and to free-ride on the vast goodwill associated with Complainant’s marks. Complainant sent a cease and desist letter to Respondents regarding their infringement of the ETS and EDUCATIONAL TESTING SERVICE marks on August 24, 2000. (A copy is attached as Exhibit 18 to the Complainant.) Complainant further filed suit against Maple Leaf International Consulting, Inc. and Sonny Pitchumani for trademark infringement in Federal Court in Canada on March 28, 2001. (A copy of Complainant’s Statement of Claim is attached as Exhibit 19 to the Complaint.) Respondents registered the Domain Names and after it was notified of Complainant’s objections. In fact, Respondent registered on March�27, 2003. Such pattern of conduct demonstrates Respondents’ bad faith.
Respondents are using the Domain Names in bad faith to operate a website through which they sell an assortment of goods and services covered by Complainant’s registrations, namely, preparation courses and materials for the GMAT� and GRE� tests – both of which were developed and are administered by Complainant. (Copies of sample pages from Respondents’ website are attached as Exhibit 20 to the Complaint.) Respondent offers such goods and services using the designation “ETS,” which is identical to Complainant’s ETS mark.
B. Respondents
Respondents have never received any notice of dispute from Complainant who was aware of the registration and use of the Domain Names in connection with a bona fide offering of educational training and test preparation services and products, and Respondents have legitimate interests in and rights to use the Domain Names. The Complainant, after 5 years of knowledge of such registration and use by Respondents, “smacks of ulterior motives” on the part of the Complainant and a finding of Reverse Domain Name Hijacking by the Panel will be appropriate.
Policy 4(c)(i) uses ‘bona fide’ as a qualifier modifying ‘offer,’ not ‘use’. Respondents truly believe that the Domain Names were registered and are being used in absolute good faith in connection with good faith offering of legitimate and legal goods and services. The Domain Names correspond to the trade name by which the Respondent organization has been known since 1991. Complainant does not enjoy exclusive rights to use the mark ETS because the subject mark may give the Complainant some limited rights with respect to ‘some’ test development activities but because of their generic nature do not give the same right across all testing functions, and certainly not across other products and services. Complainant is aware of this fact as evidenced by its registration of a separate service mark ‘ETS INTERNATIONAL’ (73799911) with the PTO. This act on the part of the Complainant shows that ‘etsworldwide’ does not have the same connotation as its ‘ETS’ mark. The Registry search shows that the mark ‘ETS INTERNATIONAL’ has not been renewed.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element contains two parts: first, does Complainant have rights in a relevant mark and, second, are the Domain Names identical or confusingly similar to that mark.
Regarding the first part, Respondents repeatedly allege that the Marks “are nothing but generic descriptive phrases, or acronyms thereof” and their “sheer genericness” rebuts the presumption of exclusive rights conferred by ownership of the Marks. Respondents point to many third-party uses and PTO registrations of ETS for unrelated goods and services in an attempt to show that ETS is generic and Complainant has limited rights in the ETS mark. Those third-party uses and registrations are not evidence proving that Complainant’s ETS mark is generic and Complainant is not asserting rights in ETS for any and all goods and services. World Wrestling Federation Entertainment, Inc. v. Aaron Rift, WIPO Case No. D2000-1499 (December 29, 2000). Complainant has established rights in the Marks based on its long-standing use and registration of the Marks with the PTO. Those registrations are entitled to a presumption of validity, which Respondents have not rebutted.iv Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004).
Regarding likelihood of confusion, it is well settled that the use of lower case letter format and the addition of the gTLD “.com” are not significant in determining whether the Domain Names are identical or confusingly similar to the mark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000). The primary element of , , and is “ets” which is identical to Complainant’s ETS mark. The sole difference is the addition of the geographical identifier “worldwide.” Previous panels have held that if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words. See, e.g., Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004) (“bailbonding” added to mark Aladdin in ), Scholastic Inc. v. Sai Tong Ho, WIPO Case No. D2001-1011 (November 1, 2001) (“china” added to mark SCHOLASTIC in ). Here, adding the term “worldwide” which describes a common aspect of Complainant’s and Respondents’ businesses is likely to increase the likelihood of confusion. That is, the likely reaction of Internet users seeing the “worldwide” Domain Names would be that the site is operated by, or on behalf of, Complainant or a related company and they would be confused. See Educational Testing Service v. Park Jeong Foreign Language Institute, WIPO Case No. D2001-1064 (November 15, 2001).
Respondents insist that “there are no commonalities across any of the activities that the Complainant and the Respondents pursue.” The evidence clearly proves otherwise. Provided as Exhibit 12 to the Complaint, are copies of pages from Complainant’s website. The website has a “starting points” key that directs Internet users such as “students” to information relevant to them (e.g., “Official Test Prep from the Test Maker”). Also, Complainant runs an “Online Store” offering for sale “one-stop shopping for quality educational products, software, and publications.” Test takers may purchase study guides for exams, full-length practice tests, web-based practice tools that immediately score essays used in certain tests, and guides to graduate programs. Complainant uses “ETS” throughout its website in conjunction with test preparation products and services. As evidenced from Respondents’ website and admitted by Respondents, they too are targeting students and other test takers with their test preparation products and services. Throughout Respondents’ website are references to Complainant’s GMAT� and GRE� exams and associated review courses and study materials. Respondent touts its test-taking training materials and study guides, as well as its classroom and web-based test preparation resources.
In contradiction to its claims that there are no commonalities between the businesses of Complainant and Respondents, Respondents readily admit that Complainants “supply” test questions and tests to potential and registered test takers as well as explanation books for the answers. They attempt to discount this evidence on the basis that Complainant does not “sell” such materials. This is irrelevant and, in any event, not supported by the evidence (e.g., Complainant’s “Online Store”).
Given Complainant’s established rights in the ETS mark and the fact that Respondents’ products, services and customers overlap with those of Complainant, there is a strong likelihood that consumer confusion will occur.v
For the foregoing reasons, the Panel finds that Policy, Paragraph 4(a)(i) has been satisfied.B. Rights or Legitimate Interests
Complainant has established rights in the ETS mark for, among other things, test preparation goods and services. It is uncontested that Complainant has not licensed or otherwise authorized Respondents to use the ETS mark in connection with Respondents’ business or as part of the Domain Names. Insofar as Complainant has made a prima facie showing that Respondents lack rights to the Domain Names (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June�1,�2004)), this shifts the burden to Respondents to show by concrete evidence that it has rights or legitimate interests in the Domain Names. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000). “‘Concrete evidence’ constitutes more than mere personal assertions. . . . Evidence in the form of documents or third party declarations should be furnished in support of such assertions.” Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000). Pursuant to Paragraph 4(c) of the Policy, Respondents may satisfy their burden by demonstrating any of the following: (i) before any notice of the dispute, Respondents use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondents (as an individual, business, or other organization) have been commonly known by the domain name, even if they have acquired no trademark or service mark rights; or (iii) Respondents are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondents contend that they have a legitimate interest in the Domain Names because they used them in conjunction with a “bona fide” business and before they received notice from Complainant. Not all use prior to notice of the dispute qualifies as a bona fide use. See World Wrestling Federation Entertainment, Inc. v. Aaron Rift, WIPO Case No. D2000-1499 (December 29, 2000). “[C]onsideration of good faith is a key issue in determining whether use is bona fide under the policy.” San Francisco Museum of Modern Art v. Joshua S. Drapiewski, WIPO Case No. D2000-1751 (April�25, 2001). Here, Respondents’ good faith use of ETS, from the inception, was in short supply. It is undisputed that Respondents have been using three Domain Names that incorporate Complainant’s entire ETS mark to point to Respondents’ website which offers for sale test-taking preparation goods and services which overlap with those of Complainant. Furthermore, rather than use its trade name as a metatag, Respondents used Complainant’s registered Marks. Thus, the Panel finds that Respondents’ activities do not constitute use of the Domain Names in connection with a bona fide offering of goods or services. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (February 22, 2001). As explained in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”, WIPO Case No. D2000-0847 (October�12, 2000): “We . . . conclude 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.”
Regarding Paragraph 4(c)(ii), Complainant alleges that none of the Respondents have been commonly known by the Domain Names but, rather, as their individual names or trade names. Respondents argue that they adopted “ets” because it was the natural acronym of their trade name Educational Training Service, but that misses the point. Respondents have not presented any evidence to demonstrate that they have been commonly known as ETS. Moreover, Paragraph 4(c)(ii) requires evidence that Respondents had rights prior to and not merely following from the use of the Domain Names. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004). This is particularly true under the circumstances here, where Respondents adopted another’s mark, raising an issue about whether the Domain Names were registered and are being used in good faith. Id.
Nor have Respondents demonstrated any legitimate noncommercial or fair use of the Domain Names under Paragraph 4(c)(iii). Rather, the evidence strongly suggests that Respondents have attempted to use the Domain Names for commercial gain at the expense of Complainant’s business, by registering and using three domain names that incorporate the registered mark of a competitor coupled with using the Domain Names to direct consumers to a website offering for sale goods and services that overlap those that Complainant’s sell under its ETS mark. Such use constitutes a prima facie showing for purposes of Paragraph 4(a)(iii) that Respondents lack rights or legitimate interests in the Domain Names. Id. Similarly, Respondents’ infringing use of the Domain Names can not constitute fair use. SportSoft Golf, Inc. v. Hale Irwin’s Golfers Passport, NAF Case No. FA94956 (July 11, 2000). Instead it seems the ETS mark is being used as “bait” to lead consumers to its own test taking products and services. Amphenol Corporation v. Applied Interconnect, Inc. WIPO Case No. D2001-0296 (May 8, 2001).
For the foregoing reasons, the Panel finds that Policy, Paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Respondents argue that the Panel should not speculate in place of proof about Respondents’ intention in choosing the Domain Names (e.g., assume Respondents knew of Complainant’s Marks by virtue of the PTO registrations or fame of the Marks). No speculation is required here. Respondents readily admit that they performed a search of the PTO’s data base and found Complainant’s ETS mark. Throughout their website, Respondents refer to goods and services to assist test takers in preparing to take the GMAT� and GRE� -- tests which Complainant developed and administered long before Respondent was in business. And Respondents readily admit they chose ETS for their Domain Names because it is the acronym of their trade name Educational Training Services - this despite the fact that none of Respondents have been known by ETS. Furthermore, Complainant produced evidence from publications throughout the United�States and the world showing that the ETS mark is ubiquitously known and associated with its business. (Exhibit 13 of Complaint.) Complainant has been using ETS in conjunction with its business for over 40 years before Respondents began their business and registered the Domain Names incorporating Complainant’s mark. Respondents clearly had constructive, and unquestionably actual notice, of Complainant’s use of ETS on its test preparation goods and services and nonetheless selected Domain Names that incorporated the ETS mark. Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002). To have proceeded with registration knowing of Complainant’s rights in ETS demonstrates Respondents’ bad faith. Educational Testing Service v. Park Jeong Foreign Language Inst.,WIPO Case No. D2001-1064 (November 15, 2001); Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000). As Complainant points out, like other competitors, Respondents could have chosen Domain Names that did not use the ETS mark. See World Wrestling Federation Entertainment, Inc. v. Aaron Rift, WIPO Case No. D2000-1499, December�29, 2000.
With regard to and in particular, Complainant asserts that Respondents registered those domain names on September 4, 2001, and August 3, 2001, respectively, in bad faith because they registered them after (1) receiving a cease and desist letter (“the Letter”) from Complainants on August�24,�2000, regarding infringement of ETS and EDUCATIONAL TESTING SERVICE, and (2) Complainant’s suit for trademark infringement in Federal Court in Canada on March�28, 2000 (“the Canadian Action”). The Panel agrees. Respondents argue Complainant did not object to their use of the Domain Names by virtue of the Letter or the Canadian A Those claims are not credible for the reasons that follow. The Letter specifically references (1) the overlap in test-taking products sold by Complainant and Respondents, (2) Complainant’s use of the Marks in conjunction with its products and Respondents’ use of ETS in conjunction with their products, and (3) it clearly demands that Educational Training Services “immediately cease all use” of the Marks.
Furthermore, Respondents discount the notice value of the Letter and the Canadian Action based on where the letter was sent and against whom the Canadian Action was filed. As discussed earlier, the evidence of record demonstrates that Educational Training Services, MCI, Maple Leaf International Consulting, Inc., Sonny Pitchumani and Randal Nelson are all related in some way. The Letter was addressed to Respondent Educational Training Services, who registered the domain name. The Canadian address on the Letter was that provided to the Registrar by Respondent Educational Training Services as the address for Sonny Pitchumani, who is the Administrative Contact for the domain name. Similarly, the Canadian Action was brought against Sonny Pitchumani and Maple Leaf International Consulting, Inc. In addition to being the Administrative Contact for the domain name, Sonny Pitchumani also registered the domain name. Furthermore, the contact information provided for Sonny Pitchumani as Administrative Contact for is “Maple Leaf International Consulting, Inc.” located at the Canadian address where Complainant sent the Letter.
Persons using a search engine to locate Complainant are likely to be led to Respondents’ site due to the similarity of the Domain Names (, .org, .net versus ) and metatags comprised of Complainant’s registered Marks -- ETS and EDUCATIONAL TESTING SERVICE. Such conduct has been recognized by the U.S. Courts as an infringement of trademark rights. See Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). Once at the site, Internet users will find materials similar to those available at Complainant’s site (including preparation courses and materials for the GMAT� and GRE� tests – both of which were developed and are administered by Complainant), and a link to Complainant’s site at which similar products are sold. At the top of several pages on Respondents’ website, the initial letters of the designation “Educational Training Services” are set off in large, bold type, creating a designation that is identical to Complainant’s ETS trademark. Moreover, the designation “ETSWORLDWIDE” appears in the title bar of every page of Respondents’ website.
Respondents’ use of the Domain Names in a confusingly similar manner creates a strong likelihood of confusion between the source or sponsorship of Respondents’ goods and services and those offered by Complainant. See, e.g., SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, NAF Case No. FA94956 (July 11, 2000) (use of domain name identical or confusingly similar to complainant’s registered trademark on goods identical to those covered by complainant’s registered trademark infringes upon complainant’s trademark and constitutes bad faith); Miller Brewing Co. v. The Miller Family, NAF Case No. FA104177 (April 15, 2002) (use of complainant’s well-known trademark in the domain name creates likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s website, thereby constituting bad faith use of the domain name). And if Respondents genuinely used “ets” to refer to their trade name, it would certainly seem more logical for them to include their trade name, rather than Complainant’s registered Marks in the metatags.
For the foregoing reasons, the Panel finds that Policy, Paragraph 4(a)(iii) has been satisfied.
D. Reverse Domain Name Hijacking
Respondents claim Complainant knew of their use of the Domain Names for 5 years before instituting this proceeding allegedly by virtue of Complainant’s visits to Respondents’ website. Respondents however, failed to provide any evidence of this including when Complainant’s were to have visited the website. In any event, for all of the above reasons Respondents have not made a case for reverse domain name hijacking.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, , and be transferred to the Complainant.
Harrie R. Samaras
Sole Panelist
Dated: June 18, 2004
i Complainant indicates that it owns the domain names , , , and which embody the ETS mark.
ii Respondents raise the issue whether Complainant correctly identified the registrants as the Respondents. Although the caption of the Complaint does not appear to list Sonny Pitchumani or Randal Nelson individually, the Complaint identifies them as Respondents (Paragraphs 8 and 10) and in fact they are the Managing Director and Chief Executive respectively, of MLIC, a named Respondent.
iii Respondents contest whether the Marks are famous. The Panel did not need to resolve this dispute to reach its decision.
iv Respondents argue that Complainant’s PTO registrations do not accord Complainant any rights in ETS for test preparation activities, that is, preparing for the test rather than preparation of the test. In making this argument Respondents have cherry-picked those portions of the registrations that would support such an argument and have completely ignored Complainant’s use of ETS in selling good and services that help test takers prepare for tests. The Panel is satisfied that Complainant through its PTO registrations and use have shown rights in the ETS mark as required for this proceeding.
v Complainant alleges, without providing any evidence, that it “was first alerted to Respondent’s use of the Domain Name because it was contacted by consumers who had purchased Respondent’s test preparation goods and services under the mistaken belief that such goods and services were produced or endorsed by Complainant.” Complainant’s lack of evidence of actual confusion is not fatal to the Panel’s conclusion that Complainant has satisfied its burden under Policy, Paragraph 4(a)(i).
vi Respondents argue that Complainant neither proved they sent the Letter nor that Respondents received the letter, though Respondents never state they in fact did not receive the Letter. This fact issue cannot be easily decided in this proceeding, however based on Respondents’ arguments, the Panel is inclined to believe that Complainant sent the Letter and Respondents received it.
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