WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Educational Testing Service v. aaa Case No. D2010-0022 1. The Parties
The Complainant is Educational Testing Service of New Jersey, United States of America, represented by Lile H Denard of Dorsey & Whitney of United States of America.
The Respondent is aaa of Neimengguzizhiqu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xinnet Technology Corporation. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2010. On January 7, 2010, the Center transmitted by email to Xinnet Technology Corporation a request for registrar verification in connection with the disputed domain name. On January 12, 2010, Xinnet Technology Corporation transmitted by email to the Center its verification response disclosing the registrant's name differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on January 13, 2010, providing the registrant information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 14, 2010.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on January 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2010. The Respondent did not submit any Response. The Center notified the Respondent's default on February 9, 2010.
The Center appointed Douglas Clark as the sole panelist in this matter on February 19, 2010. 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.
The Complaint was submitted in English and included a request from the Complainant that English be the language of the proceedings, while the language of the registration agreement for the domain name is Chinese. On January 13, 2010, the Center notified both the Complainant and Respondent in English and Chinese that the Parties would be given the opportunity to submit comments on Complainant's language request.
On January 14, 2010, the Complainant filed a request for English to be the language of the proceedings.
The Respondent did not submit any objection to the language request within the specified due date of January 18, 2010.
On January 19, 2010, the Center notified the Complainant and the Respondent in English and Chinese that:
“Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either Chinese or English;
3) appoint a Panel familiar with both languages mentioned above, if available.”
The Center also notified the Complainant and the Respondent that the discretion to decide the language of the proceedings lay with the Panel on appointment. Decision on language of proceedings
The domain name registration agreement is in Chinese. According to Rules paragraph 11, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement”.
In its Complaint and request for English to be the language of the proceedings, the Complainant relied upon two grounds to support the request that English be the language of the proceedings:
1. The Respondent's ability to understand English; and
2. Expense and delay in requiring translation.
This Panel is often called upon to determine the language of proceedings in UDRP disputes involving domain names where the registration agreement is in a language other than English. Most of these cases are where the registration agreements are in Chinese.
The Panel consider the issue of language of proceedings in detail in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191.
The Panel would like to emphasise that the key issue in determining the language of proceedings is fairness to both parties. Bearing this in mind the Panel now considers the Complainant's grounds for requesting the proceedings proceed in English.
With regard to the first ground, the Complainant relied upon the following factors:
a. The domain name consists of a famous mark, TOEFL, which denotes a test for English language testing proficiency;
b. The registration denote Respondent's knowledge of the TOEFL test;
c. Respondent has offered English language products and services to assist person's preparing to take the TOEFL test;
d. The Respondent registered the domain name in Roman characters as well as registering an email address toefldd@[email address];
e. The domain name includes the English word “easy”.
The Complainant argued that as a result “the Respondent has demonstrated the ability to understand and effectively communicate in English”.
The Panel cannot agree with this conclusion. The Panel agrees that it is likely the Respondent can understand English. The evidence does not show that the Respondent can effectively communicate in English.
With regard to the second ground, the Complainant also relied on the case L'Oreal v. Liao Quanyong,WIPO Case No. D2007-1552 to argue that to require translation of the complaint would cause “substantial additional expense and delay”.
The Panel did not find this second ground convincing because the Complainant filed with its Complaint notarised reports in Chinese prepared on behalf of the Complainant. These reports showed the use made by the Respondent of the Complainant's materials on the website under the domain name. The reports were prepared at the request of a Chinese agent of the Complainant, who can communicate in Chinese. The Complainant clearly had the ability to file the Complaint in Chinese, if necessary, without incurring “substantial expense and delay”.
More importantly, the Complainant, despite requesting the proceedings proceed in English, did not provide a translation into English of the Chinese language evidence.
This panel was faced with a similar issue in a recent decision which it made in Chinese Banque Accord v. Ding zhe Xiao,WIPO Case No. D2009-1614. As the decision was in Chinese, the panel considers it worthwhile to repeat the key point on language of proceedings in the Banque Accord decision in English. In the Banque Accord case the Complainant made a similar argument regarding the language of proceedings. That is, that it could not communicate in Chinese and would be put to considerable expense to translate the claim. However, in the same case the Complainant filed evidence of use made in China of the Complainant's mark, Oney, including a website “.” The content of the “” website was solely in Chinese. Clearly, the Complainant had the ability to communicate in Chinese and in that case given there was no evidence the Respondent could communicate in English the panel while accepting the Complaint in English issued its decision in Chinese.
The Panel would encourage parties to consider fully what will be fair to both parties when making their request as to language of proceedings. There is no bar to requesting bilingual proceedings. This can be done in a similar form to the determination made by the Centre set out above. This Panel has conducted such bilingual proceedings. See: Giochi Preziosi v. He Chongge,WIPO Case No. D2009-0472.
Indeed, when a party is relying on evidence in a language other than that of the complaint without providing a translation (as was done by the Complainant in this case), it is this Panel's view that it is generally fair practice (as the Center usually does wherever possible where a language request is received) to send communications as if it was a bilingual proceeding (so called dual-language). Otherwise, it is well within a panel's rights to request a translation of the evidence into the language of the Complaint or for the panel to ignore the evidence that is not translated into the language of the Complaint.
In this case, the Panel has decided to proceed in line with the Center's initial determination of the language of proceedings and accept the Complaint as filed in English (and because the Panel can read them without requiring translation of the exhibits). The Panel would have accepted a Response filed in Chinese. While this would have incurred some expense on the part of the Complainant it is fairer to the Respondent to allow it to respond in the language of the registration agreement if it so wishes. As the only pleading is in English and the Panel is satisfied it is likely in the circumstances of this case that the Respondent can understand English, the Panel will issue a decision in English. 4. Factual Background
The Complainant is a not for profit corporation organised and existing under the Education Law of the State of New York which has been providing education and language testing services since 1947. The Complainant has used, registered and applied for numerous trademarks for, inter alia, information manuals dealing with education testing and administering tests dealing with languages in the United States of America and worldwide, including, the Mainland of the People's Republic of China. It obtained its first United States Trademark Registration for TOEFL in 1978 and in the Mainland of the People's Republic of China in 1994.
The disputed domain name was registered on October 31, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that the domain name is confusingly similar to its trademark TOEFL and its domain name .
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith.
The Complainant's has made many arguments to support its case. The Panel has considered all of these, but only summarises the main arguments below. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant's well-known mark TOEFL and its domain name . The mere addition of the generic term “easy” does not remove the similarity. The Complaint relies on numerous domain name cases to support this argument, including a number decided in favour of the Complainant. Rights or Legitimate Interests
The Respondent cannot demonstrate that is has any rights or legitimate interests in the domain name and that prior panels have put a light burden on complainants to prove a negative (Croatia Airlines dd v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455).
The Respondent has not made any bona fide use of the domain name nor is it known by the domain name. The use of the domain name in fact breaches the Respondent's Registration Agreement which requires the use of the domain name not breach others' rights. Registered and Used in Bad Faith
The Complainant asserts that the Respondent has registered and used the mark in bad faith on the basis that the use of the domain name is to capitalize on the Complainant's goodwill.
The Respondent must have known of the Complainant and its rights in the TOEFL mark before registering the domain name and while the domain name is not currently in use could not intend to make any use that would infringe the Complainant's rights. The Complainant also adduced notarised evidence from China that the Respondent was making available the Complainant's test materials on the website under the domain name until September 2009. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(i) The domain name 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
The Complainant has registered trademark rights in the TOEFL mark in the United States of America and China. The Respondent has registered the disputed domain name , which merely adds the generic word “easy” to the Complainant's mark.
The Panel is satisfied from the evidence filed that the TOEFL mark is distinctive of the Complainant's business. The addition of the word “easy” does not in anyway detract from the similarly of the TOEFL mark or domain name to “toefleasy”. Rather in the Panel's view it clearly indicates that the website under the domain name is designed to help make “Toefl” tests easy.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered mark TOEFL.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The disputed domain name was registered in 2008, approximately 30 years after the Complainant obtained its first registration of the TOEFL trademark in the United States of America, and 13 years after the Complainant obtained its first TOEFL trademark in China. The Respondent is not known by the disputed domain name and has never been authorized by the Complainant to use the registered marks.
The Respondent has not provided evidence of the type specified in paragraph 4(c) of the Policy giving rise to rights or legitimate interests in the domain name.
The Panel is satisfied from the evidence filed that the use made by the Respondent of the domain name is not bona fide, and cannot give rise to rights or legitimate interests on the part of the Respondent under paragraph 4(a) of the Policy.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of four circumstances which, if found by the Panel to be present, alone or in combination, shall be evidence of the registration and use of the domain name in bad faith.
The Complainant effectively (although without citing it relies principally on the provisions of paragraph 4(b)(iv) of the Policy:
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's 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 Respondent's web site or location or of a product or service on the Respondent's web site or location. a. Registration in bad faith
The evidence filed by the Complainant clearly demonstrates that at the time of the Respondent's registration of the disputed domain name in 2008, the Complainant had already established a global reputation in the TOEFL marks including in China. The subsequent use made by the Respondent of the domain name to make the Complainant's test materials available on the website is also clear evidence of bad faith.
The Panel accordingly has no hesitation in finding, in the absence of any response from the Respondent that the registration was in bad faith. b. Use in bad faith
The Complainant provided clear evidence to demonstrate the Respondent's use of the disputed domain name in bad faith up to September 2009. The Complainant's test materials were available up to that date on the Respondent's website without the authorisation of the Complainant. The website also made reference to TOEFL by reference to its Chinese trademark, making it clear that the Respondent was well aware of the Complainant.
This is sufficient for this Panel to find that the domain name has been used in bad faith.
Perhaps out of an abundance of caution because the domain name at the time of filing the Complaint was not being used, the Complainant argued that the mere passive holding of the domain name was also use in bad faith. To this Panel the fact the domain name was being used in bad faith at a time relatively close to the filing of the Complaint is sufficient evidence of use in bad faith and it is not, therefore, necessary to consider the question of passive holding in this case.
Accordingly, the Complainant has satisfied the third element under paragraph 4(a) of the Policy. 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 name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Dated: February 22, 2010
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