WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Educational Testing Service v. Kendall Square, Sira Sudhikam Case No. D2009-0035 1. The Parties
The Complainant is Educational Testing Service of Princeton, New Jersey, the United States of America, represented by Dorsey & Whitney LLP, United States.
The Respondent is Kendall Square, Sira Sudhikam of Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2009. On January 14, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On January 14, 2009, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 24, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 16, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 24, 2009. 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 one of the largest private not-for-profit educational research and measurement institute in the world. Since it was created in 1947, the Complainant has been a leader in developing and administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for Americans and citizens of other countries seeking preparatory school, college and graduate school admission, licenses for technical and paraprofessional occupations, teacher certifications, etc.
The Complainant owns the rights to the TOEFL trademark in the United States and around the world for a number of goods and services, including information manuals dealing with educational testing and educational testing services. Since 1964, nearly 20 million students have taken the TOEFL test in more than 110 countries, and over 6,000 institutions worldwide use scores from the test.
As a result of the Complainant's long and prominent use of the TOEFL trademark for and in connection with its products and services, the TOEFL trademark has acquired worldwide recognition and is identified exclusively with the Complainant's goods and services. The TOEFL mark's registration in the USPTO establishes its validity and presumption of the Complainant's ownership of the TOEFL trademark.
The TOEFL mark is registered as a trademark throughout the world. In Thailand, the Complainant owns six registrations, the first obtained on 1982. The mark TOEFL is associated with the Complainant in Thailand and is recognized as originating from the Complainant.
The Complainant also owns the registered domain names , , , and .
The Respondent registered the disputed domain name on August 8, 2005. The disputed domain name is resolved to a web site in the Thai language which presents information about the TOEFL and offer preparation courses for the TOEFL provided by the Complainant. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is essentially identical and certainly confusingly similar to Complainant's TOEFL mark, as it incorporates the TOEFL mark with the country name Thailand.
The Complainant also argues that the descriptive geographic reference to Thailand in the disputed domain name creates a false impression that the site to which the disputed domain name belongs to, or is associated with the Complainant.
The Complainant further argues that the primarily element of the domain name , “toefl”, is identical to Complainant's well known trademark.
The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name , based on the Complainant's continuous and long prior use of its mark TOEFL.
The Complainant further argues that it has not licensed or otherwise permitted the Respondent to use its trademark. There is no relationship between the parties which would justify the registration of the disputed domain name by the Respondent.
The Complainant further argues that the Respondent directs consumers through the disputed domain name and website to the Complainant's main competitor and is thus engaging in unfair competition.
Further, the Complainant argues that the Respondent has registered and is using the domain name in bad faith, in order to capitalize on the goodwill of the Complainant's mark TOEFL and is using it in bad faith, misleading consumers that seek the Complainant's goods and services. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is confusingly similar to the Complainant's TOEFL trademark, in which the Complainant has rights. The Complainant has rights to the TOEFL trademark. The Complainant has had a trademark issued on the TOEFL trademark in the United States since 1978 (serial number 1,103,427). The registered TOEFL trademark was issued for educational testing services, namely administering tests dealing with languages. The Complainant has numerous other trademarks issued for the TOEFL mark in many other countries since 1978, including in Thailand.
The addition of the geographic signifier “thailand” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's TOEFL trademark. Previous UDRP panels have decided that the mere addition of a geographical name to a trademark does not exclude confusing similarity. See, for example, Accor v. Everlasting Friendship Trust,WIPO Case No. D2005-0626, Wal-Mart Stores Inc v. Walmarket Canada,WIPO Case No. D2000-0150 and Educational Testing Service (ETS) v. Marketing Total S.A.,WIPO Case No. D2007-0450.
Moreover, the addition of the word “thailand” to the word “toefl” in the disputed domain name serves to confuse and mislead the persons seeking the services or products of the Complainant in Thailand. Such use is likely to mislead persons to create the false impression that the web site to which the disputed domain name is resolved to is associated with or connected with the Complainant. See Educational Testing Service v. Park Jeong Foreign Language Institute,WIPO Case No. D2001-1064 and Educational Testing Service (ETS) v. Marketing Total S.A.,WIPO Case No. D2007-0450.
The addition of a generic top-level domain (gTLD) “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “. com” is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
The result is that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and the Respondent has failed to assert any such rights.
The Panel finds that the Complainant has established such prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the TOEFL trademark. The Respondent has not submitted a response and has not provided any evidence to show he has any rights or legitimate interests in the disputed domain name.
Accordingly, and in light of the Panel's finding below, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)).
The Respondent is making use of the disputed domain name. The disputed domain name is resolved to a web site offering services associated with providing preparation for the TOFEL and other tests offered by the Complainant. From the use of the trademark TOEFL in the web site to which the disputed domain name is resolved to, there is no doubt that the Respondent was aware of the trademark rights the Complainant had when he registered the disputed domain name. The Respondent is making prominent use of the trademark TOEFL together with the ® symbol, which indicates that the TOEFL trademark is registered. The Respondent further provides a disclaimer at the bottom of the home page of the said web site stating that “TOEFL and TOEIC are registered trademarks of Educational Testing Service (ETS). This website is not endorsed or approved by ETS”. Thus, it is the finding of this Panel that the Respondent was aware of the trademark rights of the Complainant when it registered the disputed domain name and that the Respondent registered the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii). Paragraph 4(b)(iv) provides that evidence of bad faith use shall include the use of the domain name, showing intentional attempt to attract, for commercial gain, Internet users to the web site 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 the web site or location or of a product or service on the web site or location.
The disputed domain name is resolved to a web site providing assortment of goods and services related to providing of tests of the English language the same services covered by the various trademark registrations of the Complainant under the TOEFL mark. The Respondent makes bold use of the TOEFL trademark for one of its offered courses. The Respondent offers a “Course TOEFL ®” for preparing for the TOEFL examination and for developing “English skills of listening, speaking, reading, writing and grammar.”
This and other courses are offered for a payment. Providing of such services shows an intentional attempt to attract, for commercial gain, Internet users to the web site, by creating a likelihood of confusion with the Complainant's TOEFL trademark, and by confusing Internet users as to the source, sponsorship or affiliation or endorsement of the web site by the Complainant.
The Respondent's use of a disclaimer stating that the TOEFL is a registered trademark of the Complainant and that the web site is not affiliated with the Complainant fails to remedy this situation. The disclaimer is located at the bottom of the home page where it is not likely be seen by any of the Internet users viewing the web site. When it has been seen by an Internet User, this user has already been exposed to the various materials offered by the Respondent and has been in all likelihood misled as to the source, sponsorship or endorsement by the Complainant of the web site. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698 (“by the time consumers get to read the disclaimers, the domain name has already diverted them from the Complainant.”) See also Pliva, Inc. v. Eric Kaiser,WIPO Case No. D2003-0316. It is therefore the finding of the panel that the Respondent is using the disputed domain name in bad faith. 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: March 10, 2009
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