The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America, represented by Dorsey & Whitney, LLP, United States of America.
The Respondent is Prinn Sukriket of Bangkok, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2011. On March 8, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2011, the Registrar 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 March 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2011.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 19, 2011. 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 not-for-profit organisation organised and existing under the Education Law of the State of New York in the United States of America. The Complainant is the owner of numerous registrations worldwide for the trade mark TOEFL (the “Trademark”), including registrations in Thailand, where the Respondent is based. The date of first use of the Trade Mark was 1964 (in the United States of America). The earliest of the Complainant’s registrations for the Trade Mark in Thailand is 1982.
The Complainant is also the owner of numerous domain names comprising the Trademark, including , , , , , , and .
The Complainant’s registrations for the TOEFL trademarks pre-date the Respondent’s registration of the disputed domain name.
The disputed domain name was registered on January 23, 2009. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant was founded in 1947 and is the largest not-for-profit educational research and measurement institution in the world. It is the leader in developing and administering tests for measuring skills and aptitude for admission to educational institutions. Continuously since 1964, the Complainant has been administering English language proficiency tests for non-native English speakers under the Trade Mark, which has become well-known worldwide in respect of such tests. Since 1964, more than 24 million students in over 130 countries worldwide have taken the TOEFL test. The test is recognised in more than 7,500 educational institutions worldwide.
The disputed domain name is confusingly similar to the Trademark. It comprises the TOEFL trademark and the term “thai”.
The Respondent has no trademark rights in respect of the disputed domain name and has not been licensed or authorised by the Complainant to use the Trademark.
The Respondent has registered and used the disputed domain name in bad faith to capitalise on the goodwill in the Trademark and to intentionally attract users, for commercial gain, to the web site at the disputed domain name, by creating confusion with the Trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. That:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
These elements are discussed in turn below. A. Identical or Confusingly Similar
The Complainant is the owner of several, well-known trademarks for TOEFL for language testing and related materials, among other things. These marks are entirely incorporated into the disputed domain name; the only variation is the addition of the word “thai” at the end of the disputed domain name.
The addition of the word “thai” to the word “toefl” in the disputed domain name serves to confuse and mislead Internet users seeking the services or products of the Complainant in Thailand. Such use is likely to mislead Internet users to create the false impression that the web site to which the disputed domain name resolves 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.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. 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 of production 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 the Respondent has no rights or legitimate interests in respect of the disputed 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 it 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 the 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 resolves to an active web site in Thai and English offering services associated with providing preparation for the TOEFL. From this use of the Trademark, there is no doubt that the Respondent was aware of the Complainant’s trademark rights when it registered the disputed domain name. The Respondent is making prominent use of the Trademark TOEFL. The Respondent further provides a disclaimer at the bottom of the pages of the disputed domain name stating the following: “TOEFL is a registered trademark 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 Complainant’s trademark rights 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) of the Policy. Paragraph 4(b)(iv) of the Policy 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.
As explained above, the disputed domain name resolves 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. This and other courses are offered for a payment. The provision 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 only one page (see “”) where it is not likely to be seen by any of the Internet users viewing the web site. The Panel observes that by the time such disclaimer is noticed by an Internet user, such user would have 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; Pliva, Inc. v. Eric Kaiser,WIPO Case No. D2003-0316 and Educational Testing Service v. Kendall Square, Sira Sudhikam,WIPO Case No. D2009-0035.
It is therefore the finding of this Panel that the Respondent is using the disputed domain name in bad faith. 7. Decision
For 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.
Pablo A. Palazzi
Sole Panelist
Dated: May 1, 2011
Full & Egal Universal Law Academy