WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Educational Testing Service v. QuickOffice Case No. D2010-0511 1. The Parties
The Complainant is Educational Testing Service of New Jersey, United States of America represented by Dorsey & Whitney, LLP of New York, United States of America.
The Respondent is QuickOffice of Bangkok, Thailand. 2. The Domain Names and Registrar
The disputed domain names , and are registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center(the “Center”) on April 5, 2010. On April 6, 2010, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain names. On April 8, 2010, N LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 April 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2010.
The Center appointed Francine Tan as the sole panelist in this matter on May 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. 4. Factual Background
The following factual background is set out in the Complaint. The Complainant is one of the largest private not-for-profit educational research and measurement institutions in the world. It was founded in 1947 when 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 – an organization devoted to educational testing, measurement and research. Since its formation, the Complainant has been at the forefront 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; and teacher certification, among others. The many well-known tests developed and administered by the Complainant and/or its related companies include the TOEIC test (Test of English for International Communication); the TOEFL test (Test of English as a Foreign Language); the TSE test (Test of Spoken English); and the GRE tests (Graduate Record Examinations).
The Complainant develops, administers and scores more than 50 million tests annually in more than 180 countries. The Complainant maintains an extensive worldwide network of local test administrators and authorized testing centers. (a) TOEFL
Since 1964, nearly 24 million students have taken the TOEFL test in more than 130 countries, and over 7,300 institutions worldwide use scores from the test. The Complainant has developed numerous TOEFL test preparation products and services, including print publications, CD-ROMs, computer software and online writing exercises. These products and services provide information on taking the TOEFL test and authentic TOEFL practice test questions, and they are offered for sale worldwide by the Complainant, including on the Complainant's official website for the TOEFL test, accessible through the domain names , , , and .
The Complainant has used, registered and applied to register the trade mark TOEFL and variations thereof in the United States of America and around the world for a number of goods and services including information manuals dealing with educational testing, and educational testing services, namely, administering tests dealing with languages, and computer programs for use in the field of language proficiency testing and test preparation.
In Thailand, the Complainant owns several registrations for the TOEFL trade mark, including: Registration No. Bor711 for TOEFL & Design, dated May 22, 1992; Registration No. Bor743 for TOEFL, dated May 22, 1992; Registration No. Kor1544 for TOEFL, dated April 3, 1992; Registration No. Kor1545 for TOEFL & Design, dated April 3, 1992; Registration No. Kor55758 for TOEFL & Design, dated January 22, 1987; and Registration No. Kor501 for TOEFL, dated July 1, 1982. (b) TOEIC
The Complainant also developed the Test of English for International Communication (TOEIC test). It is used by corporations, private employers, government agencies and English programs to measure the English skills of people working in an international environment. The TOEIC test is made available worldwide by the Complainant and administered by authorized institutions and/or through TOEIC test program representatives under contract with the Complainant. It is the world's leading test of English language proficiency in a workplace setting. The test is administered to over 5 million people a year in over 90 countries, and more than 9,000 businesses and organizations around the world depend upon it. It offers an objective assessment of English language proficiency.
The Complainant has also developed numerous TOEIC test preparation products and services, including print publications, CD-ROMs, computer software and online writing exercises. They are offered for sale worldwide by the Complainant, including on Complainant's official website for the TOEIC test, accessible through the domain names , , and . The Complainant also provides general information about the TOEIC test on its website, as well as registration information for taking the test anywhere in the world.
The Complainant has used, registered or applied to register the trade mark TOEIC and variations thereof in the United States of America and in jurisdictions around the world for a number of goods and services, such as educational testing services, namely, administering tests dealing with language proficiency; informational manuals dealing with educational testing; and computer programs for use in the field of language proficiency testing. Use of the TOEIC trade mark in the United States of America commenced from 1979.
In Thailand, the Complainant owns several registrations for the TOEIC trade mark, including Registration No. Kor49704 for TOEIC, dated September 9, 1986; Registration No. Kor49705 for TOEIC, dated September 9, 1986; and Registration No.Bor26431 for TOEIC, dated September 3, 2004. 5. Parties' Contentions A. Complainant
The Complainant asserts as follows:
(1) The disputed domain names are identical or confusingly similar to the trade marks of the Complainant in which it has rights.
The disputed domain names incorporate the Complainant's distinctive trade marks in their entirety. Prior panels have held that the combination of two or more trade marks owned by another entity or other entities other than the domain name registrant does not render such domain names any less identical or confusingly similar to the complainant's trade marks. The only difference between the disputed domain name and the Complainant's TOEIC trade mark is in the mere addition of the generic/descriptive word “tutor”. Prior panel decisions have established the principle that the addition of such a generic term does not avoid confusion.
In view of the fact that the TOEFL and TOEIC trade marks are so well known and they have been incorporated in their entirety in the disputed domain names, the disputed domain names are likely to confuse customers into believing that the Respondent's website is affiliated with or endorsed by the Complainant, or that the Respondent's use of the disputed domain names is authorized by the Complainant.
(2) The Respondent has no rights or legitimate interests in the disputed domain names.
(a) All of the Complainant's TOEFL and TOEIC trademark registrations pre-date the registration date of the disputed domain names.
(b) The Complainant has not authorized the Respondent to use any of its trade marks.
(c) The Respondent has not made use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, nor could they do so in view of the Complainant's exclusive rights in these well-known trade marks.
(d) The Respondent has not been known by the names TOEFL or TOEIC. Rather, they seem to be commonly known by the name “Metis Education Center”, which is the name of the company used on the commercial website hosted at the disputed domain names. The Respondent has not provided proof that there is a group of consumers that associate the TOEFL and TOEIC portions of the disputed domain names with the Respondent rather than with the Complainant.
(e) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent (i) for commercial gain to misleadingly divert customers or (ii) to tarnish the trade marks at issue. The Respondent's commercial website offers test-taking preparation services that overlap and compete with those of the Complainant's. The use of the Complainant's trade marks in the disputed domain names as “bait” to entice customers to its own test-taking products and services does not constitute fair use and is in fact infringing use.
(f) Even if the Respondent were a licensed reseller of the Complainant's products and services, which it is not, they would not be entitled to use the latter's trade marks in its domain names without the Complainant's consent. In any case, the Respondent's commercial website features information and services relating to the International English Language Testing System (IELTS), the primary competitor to the Complainant's TOEFL test.
(g) The Respondent's use of the disputed domain names constitute a breach of the Registration Agreement and of the Policy, under which the Respondent is taken to warrant that, to the best of their knowledge and belief, neither the registration of the disputed domain names and the manner in which they are to be used would directly or indirectly infringe the rights of third parties.
(3) The Respondent has registered and used the disputed domain names in bad faith.
(a) The Respondent registered the disputed domain names to capitalize on the goodwill and reputation of the TOEFL and TOEIC trade marks. Prior panels have found bad faith registration where it is unlikely that the registrant would have chosen the disputed domain name without knowing of the reputation of the trade mark in question. In this case, the Respondent clearly had actual or constructive notice of the Complainant's TOEFL and TOEIC trade marks when they registered the disputed domain names. The Respondent offers information and services to those preparing to take the TOEFL or TOEIC tests, which were developed and administered by the Complainant long before the Respondent went into business.
(b) Innumerable legitimate providers of TOEFL/TOEIC preparation services carry on their businesses successfully without incorporating the Complainant's trade marks in the domain names for their websites. These operators do not ride on the goodwill of the Complainant's trade marks to draw traffic to their website. The Respondent should use their “Metis Education Center” designation in their domain name to avoid confusion.
(c) The Respondent's prominent use of the Complainant's TOEFL and TOEIC trade marks on its website without the latter's consent gives the false impression that the Respondent is providing authentic TOEFL and TOEIC services, or that it is endorsed or sponsored by the Complainant.
(d) The Respondent's use of a proxy service to conceal its identity is also evidence of bad faith registration. B. Respondent
The Respondent did not file a Response in accordance with the Rules but simply sent an acknowledgment by email to the Center on April 16, 2010, indicating that it had received the Complaint. 6. Discussion and Findings
According to Paragraph 15(a) of the Rules, the Panel is to decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain names registered by the Respondent are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(3) the disputed domain names have been registered and used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it has prior common law use, ownership and registration rights in the trade marks TOEFL and TOEIC. This has not been contested by the Respondent and therefore the next question to be considered is whether the disputed domain names are identical or confusingly similar to these trade marks.
The Panel is of the view that the disputed domain names are substantially identical and confusingly similar to the Complainant's TOEFL and TOEIC trade marks:
(i) The domain name incorporates the TOEFL trade mark in its entirety and consists essentially of the said trade mark in combination with the initials IELTS (which stands for the International English Language Testing System and which is a competitor of the Complainant). The Panel agrees that the fact that the domain name is a combination of the Complainant's trade mark with another element (in this case, the trade mark of a third party), does not serve at all to remove the confusing similarity with the Complainant's TOEFL trade mark.
(ii) The same reasoning applies in the case of the disputed domain name which is a combination of both trade marks of the Complainant and the trade mark/initials of the competing system, IELTS. (See Danisco A/S and Genencor International, Inc. v. Bong-Gyu Jeong,WIPO Case No. D2005-0973; Société des Produits Nestlé SA v. Stuart Cook,WIPO Case No. D2002-0118; Saab Automobile AB et al. v. Joakim Nordberg, WIPO Case No. D2000-1761).
(iii) As for the third domain name , this is a combination of the Complainant's trade mark TOEIC and a generic word “tutor”. It has been well established by earlier panel decisions that the addition of a generic or descriptive word to the complainant's trade mark in forming a domain name does not serve to remove the confusing similarity with the said trade mark. (See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; and Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022.) In fact, in this case, taking into account the nature of both parties' business activities, the addition of the word “tutor” serves to add to the confusion.
In the circumstances, the Panel finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests
The Complainant has put forward various arguments in support of its claims that the Respondent has no rights or legitimate interests in the disputed domain names. Taking all of these arguments and the evidence in the present record into account the Panel finds that the Complainant has therefore established a prima facie case under paragraph 4(a)(ii) of the Policy. Having done so, and in line with previous panel decisions, the burden shifts to the Respondent to rebut the allegations by providing evidence to the contrary. The Respondent is naturally in the best position to put forward evidence in its defence and in this regard, paragraph 4(c) of the Policy sets out ways in which the Respondent can show it has rights or legitimate interests in the disputed domain name. In this case though, the Respondent has chosen not to present any facts, information or documents in rebuttal. In the absence of any evidence to the contrary, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of certain circumstances which, if established by the Complainant, would be evidence of bad faith registration and use. One of these is:
- By using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location by creating a likelihood of confusion with the complainant's mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location (paragraph 4(b)(iv) of the Policy.)
The Complainant has presented evidence that has remained unchallenged by the Respondent, that the trade marks TOEFL and TOEIC are well known and that the Respondent knew or must have known of the Complainant's trade marks at the time it registered the disputed domain names. The Panel agrees that it obvious from the manner in which the Respondent's commercial website is used that the Respondent was aware of the Complainant and of its trade marks. Further, Panel is of the view that the Respondent was, more likely than not, intentionally attempting to attract, for commercial gain, Internet traffic to its website by creating a likelihood of confusion with the Complainant's TOEFL and TOEIC marks, and creating the false impression that the website was sponsored, affiliated or endorsed by the Complainant. Considering all the surrounding facts and evidence, the Panel finds that the Respondent's conduct constitutes bad faith registration and use.
As regards the submission made by the Complainant that the use of a proxy registration service is evidence of bad faith registration, the Panel would hesitate to conclude that this fact, in itself, is sufficient to establish that the registration was made in bad faith. As mentioned in D-Market Elektronik Hizmetler Ve Ticaret Anonim Sirketi v. A Domain Privacy/Transure Enterprise Ltd,WIPO Case No. D2010-0428, “[t]he use of privacy registration services is presently a legally acceptable practice and may be for legitimate purposes. E.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062. Without more, the use of a privacy or proxy registration service would not be sufficient to establish bad faith use or registration”.
In the said case of D-Market Elektronik Hizmetler Ve Ticaret Anonim Sirketi v. A Domain Privacy/Transure Enterprise Ltd, supra the respondent was found to be a “serial cybersquatter with a well-established history of abusing the trademark rights of others”. The panel in that case accordingly found the respondent's use of a proxy service to be further evidence of the respondent's bad faith. In this case, however, there is no evidence which shows the Respondent to be a “serial cybersquatter”. Hence, the Panel would not conclude that the mere use of the proxy registration service in the instant case was in and of itself evidence of bad faith use or registration. Nevertheless, the other facts and evidence presented are such as to establish the Respondent's bad faith registration and use.
In the circumstances, the Panel finds that the third element of paragraph 4(a) of the Policy has been satisfied. 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 Complainant1.
Francine Tan
Sole Panelist
Dated: June 2, 2010
Full & Egal Universal Law Academy