Complainant is Educational Testing Service of Princeton, New Jersy, United States of America, represented by Dorsey & Whitney, LLP, United States of America.
Respondent is Fang Ting of Shanghai, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2011. On March 22, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On March 23, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 14, 2011.
The Center appointed Yijun Tian as the sole panelist in this matter on April 28, 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
Complainant Educational Testing Service (“ETS”) is a not-for-profit corporation organized and existing under the Education Law of the State of New York, with its principal place of business in Princeton, New Jersey, United States. Complainant is the largest private not-for-profit educational research and measurement institution in the world.
Complainant also owns numerous registrations for the TOEFL IBT mark throughout the world (Exhibit 3 to the Complaint), including the United States (August 31, 2009) and China (since December 14, 2009) (Exhibit 4 to the Complaint).
The disputed domain name was registered on December 10, 2010, and the website was used to sell Complainant competitor’s products. 5. Parties’ Contentions A. Complainant
(a) Trademark upon Which the Complaint Is Based
Complainant has used, registered and applied to register the trademark TOEFL IBT and variations thereof in the United States and around the world for a number of goods and services.
Complainant’s TOEFL IBT trademark was registered in United States since August 31, 2009. Complainant also owns numerous registrations for the TOEFL IBT mark throughout the world (Exhibit 3 to the Complaint), including China (since December 14, 2009). (Exhibit 4 to the Complaint).
Complainant also owns registrations for numerous domain names which contain “ibt” (Exhibit 5 to the Complaint).
(b) Complainant’s Well-established Rights in its Well-known TOEFL IBT Trademark
Complainant is the largest private not-for-profit educational research and measurement institution in the world. It was founded in December 1947.
With the advent of the Internet, Complainant devised a version of its TOEFL test that is administered online and coined the trademark TOEFL IBT to distinguish that version of the test from the traditional paper-and-pencil version. (Exhibit 6 to the Complaint).
“IBT” serves as a salient, inseparable feature of Complainant’s TOEFL IBT trademark. As used in Complainant’s mark, IBT is so integrated with TOEFL that it cannot be regarded as a separable element from TOEFL.
(c) The Disputed Domain Name is Confusingly Similar to the Trademark in Which Complainant Has Rights
The disputed domain name is confusingly similar to Complainant’s TOEFL IBT trademark, as it incorporates the distinctive IBT component of Complainant’s trademark in its entirety. The primary element of the disputed domain name (i.e., “ibt”) is identical to the inseparable feature of Complainant’s well-known mark TOEFL IBT. The only difference between the disputed domain name and the distinctive IBT component of Complainant’s trademark is the mere addition of the generic or descriptive word “blog”.
Given the reputation and fame of Complainant’s TOEFL IBT trademark and the fact that the disputed domain name incorporates widely-recognized and the distinctive IBT component of Complainant’s trademark in its entirety, the disputed domain name is likely to confuse consumers into believing that Respondent’s website accessed through the disputed domain name is affiliated with or endorsed by Complainant, or that Respondent’s use of the disputed domain name is authorized by Complainant.
(d) Respondent Has no Rights or Legitimate Interests in Respect of the Disputed Domain Name
Respondent has not made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor could Respondent do so in light of the renown of Complainant’s trademark and Complainant’s exclusive rights in such mark.
Respondent has not been commonly known as “ibt”. Moreover, Respondent is also not making a legitimate noncommercial or fair use of the disputed domain name without intent (1) for commercial gain to divert consumers misleadingly; or (2) to tarnish the trademarks at issue.
Respondent’s use of the distinctive IBT component of Complainant’s mark in the disputed domain name to “bait” consumers to its own test taking products and services is commercial and does not constitute fair use.
(e) Respondent has Registered the Disputed Domain Name in Bad Faith
Respondent has registered the disputed domain name without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of Complainant’s well-known TOEFL IBT trademark.
Prior UDRP panels have held that bad faith is found if it is unlikely that the registrant would have selected the domain name without knowing of the reputation of the trademark in question. Given Complainant’s widespread use and registration of the TOEFL IBT mark around the world, Respondent certainly had actual or constructive notice of Complainant’s ownership and use of the TOEFL IBT mark prior to registering the disputed domain name. To proceed with registration in the face of such knowledge clearly demonstrates bad faith on the part of Respondent.
(f) Respondent is Using the Disputed Domain Name in Bad Faith
Respondent’s intent is to capitalize on Complainant’s goodwill. Respondent is the same bad faith registrant recently encountered by Complainant. Respondent’s use of the disputed domain name suggests a false designation of origin or sponsorship for any goods or services that Respondent may offer on a website associated with the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the trademark TOEFL IBT (the “Trade Mark”) acquired through registration. The Trade Mark has been registered worldwide including in China (Exhibit 4 and Exhibit 5 to the Complaint), and enjoys a widespread reputation in the “educational testing, measurement and research” industry.
Since Complainant has established being the owner of a trademark filed prior to the Complaint, in order to determine whether or not the disputed domain name is identical or confusingly similar to the Trade Mark of Complainant a comparison shall be done between the Trade Mark and the disputed domain name . (See eC, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis,WIPO Case No. D2004-0552.)
The Panel emphasizes that its determination on this issue is based on a comparison between the commercial impressions imparted by the disputed domain name and Complainant's TOEFL IBT marks. It was found, in Scholastic Inc. v. ScholasticA and Ramit Sethi,WIPO Case No. D2001-0946, that “a trademark owner does not "own" all combinations of marks using its principal word”. One of the salient questions that the Panel has regard to in this respect is whether the trademark TOEFL IBT is distinguishable as such within the disputed domain name. See e.g. paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) and relevant cases cited therein.
In the present case, Complainant claims that: IBT serves as a salient, inseparable feature of Complainant’s TOEFL IBT trade mark. As used in Complainant’s mark, IBT is so integrated with TOEFL that it cannot be regarded as a separable element from TOEFL. The Panel acknowledges that both TOEFL and TOEFL IBT are well-known trademarks. The Panel also acknowledges that IBT may serve as a salient, inseparable feature of Complainant’s TOEFL IBT Trade Mark. However, this does not mean that IBT itself, as a part of the TOEFL IBT Trade Mark, is protected as an “independent” trademark, or that incorporation of the letters “ibt” in the disputed domain name necessarily establish identity or confusing similarity with the mark TOEFL IBT for the purposes of the Policy. After all, Complainant is apparently not the owner of the “ibt” trademark, and has not registered “ibt” as an independent trademark.
According to paragraph 4.5 of the WIPO Overview 2.0, “a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name…. reviewing dictionaries or encyclopedias to determine any common meaning, or discretionary referencing of trademark online databases.”
The Panel finds “ibt” has been registered as a trademark in different countries by entities other than Complainant. For example, an image containing “ibt” has been registered as a trademark used for installation, maintenance and servicing of fire alarms and security systems for buildings and owned by Integrated Building Technologies (IBT) Inc. in the United States since 1999;1 and a word “ibt” trademark has been registered by TELUS Corporation in Canada in 2007.2 Further, in the Trade Mark TOEFL IBT, “IBT” is apparently an abbreviation of “Internet-based Test”. However, a Google search conducted by the Panel shows that “ibt” can also serve as an abbreviation of many other phrases, such as Integrated Building Technologies, International Business Training, and Integrated Business Technologies. Thus, when Internet users see the disputed domain name , they may not directly link it to TOEFL Internet-based Test, and it seems to this Panel unlikely that their first thought would necessarily be of the subsidiary “IBT” component of Complainant’s TOEFL IBT Trade Mark.
Nevertheless, the Panel finds that the first element test for confusing similarity is so often applied by panelists these days (as also mentioned in paragraph 1.2 of the Overview and cases cited therein) as more of a standing (relatively low threshold) requirement, and provided the trademark is distinguishable as such within the disputed domain name, this would usually suffice for this purpose.
Moreover, it seems that the WIPO Overview 2.0 has explained the “confusing similarity” broadly. Paragraph 1.2 of the WIPO Overview 2.0 noted that: “[s]ome panels have additionally required that, for a domain name to be regarded as confusingly similar to the complainant's trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services”, and pointed out such panels would “typically assess this risk having regard to such factors as the overall impression created by the domain name […] and whether an Internet user unfamiliar with any meaning of the disputed domain name seeking the complainant's goods or services on the world wide web would necessarily comprehend such distinguishing value vis-à-vis the relevant mark”. In other words, “a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services” is an important element for determining the threshold of “confusing similarity”.
In the present case, the content of the website of the defaulting Respondent's disputed domain name at least would seem to suggest Respondent selection and use of the disputed domain name in connection with TOEFL-related services (“overall impression” test). Thus, the Panel finds it seems that the incorporation of the IBT component of Complainant’s trademark in its entirety and the content of the webpage under the disputed domain name created a clear risk that Internet users may actually believe there to be a “real connection” between the disputed domain name and the complainant and/or its TOEFL-related services. An Internet user unfamiliar with any meaning of the disputed domain name seeking Complainant's TOEFL-related services on the website may not “necessarily comprehend such distinguishing value vis-à-vis the relevant mark”.
While paragraph 1.2 of the WIPO Overview 2.0 has also mentioned “[t]he content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP”, the Panel finds that a clear risk that Internet users may actually believe there to be a real connection between the disputed domain name and Complainant and/or its goods and services itself would be sufficient to establish a prima facie “confusing similarity” under Paragraph 4(a) of the Policy.
The Panel notes that this finding will not be fatal to Respondent's case, if Respondent is in fact operating a site with legitimate interest and in good faith. If this is the case, the “legitimate interest” and “bad faith” elements of the Policy should afford adequate protection to Respondent.
Further, paragraph 1.2 of the WIPO Overview 2.0 stated: “the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [... ] typically being regarded as insufficient to prevent threshold Internet user confusion”, and “the applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”. The Panel therefore finds that the additions “blog” and “.net” are not sufficient to negate the confusing similarity between the disputed domain names and the Trade Mark.
The Panel holds that the Complaint on balance fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that the Respondent has commonly been known by the disputed domain name; and
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein)
Complainants have rights in the TOEFL IBT Trade Mark throughout the world (Exhibit 3 to the Complaint), including the United States (since August 31, 2009) and China (since December 14, 2009) (Exhibit 4 to the Complaint) which precede Respondents’ registrations of the disputed domain name (in 2010).
According to the Complaint, Complainant is the largest private not-for-profit educational research and measurement institution in the world. It was founded in December 1947. With the advent of the Internet, Complainant devised a version of its TOEFL test that is administered online and coined the Trade Mark TOEFL IBT to distinguish that version of the test from the traditional paper-and-pencil version. (Exhibit 6 to the Complaint). Complainant has developed sound reputation and fame of TOEFL IBT Trade Mark and TOEFL-related services, including Internet Based Test (“IBT”). Further, according to Complainant, Respondent is not authorized dealer of TOFEL or TOFEL IBT branded services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondents to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “ibt” in its business operations. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to offer TOEFL-related services.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. By contrast, Complainant owns registrations for numerous domain names which contain “ibt” (Exhibit 5 to the Complaint). There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on December 10, 2010. The content of the website of the defaulting Respondent's disputed domain name would seem to suggest Respondent selection and use of the disputed domain name in connection with TOEFL-related services.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, Respondent is using the IBT component of Complainant’s mark in the disputed domain name to attract consumers to its own test taking products and services is commercial and does not constitute fair use.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith. a). Registered in Bad Faith
The Panel finds that Complainant enjoys a widespread reputation in the Trade Mark with regard to its TOEFL-related services since 1947. Complainant has registered its TOEFL IBT Trade Mark worldwide, including registration in China since 2009. Complainant has set up numerous exam centers for TOEFL IBT tests, including in many major cities in China. It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name. The Panel therefore finds that the Trade Mark not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainants’ TOEFL-related services. b). Used in Bad Faith
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website offering Complainant’s TOEFL-related goods and/or services.
To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).
As introduced above, in the present case, the content of the website of the defaulting Respondent's disputed domain name at least would seem to suggest Respondent’s selection and use of the disputed domain name in connection with TOEFL-related services. Given the widespread reputation of the Trade Mark and Complainant owns registrations for numerous domain names which contain “ibt” (Exhibit 5 to the Complaint), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the disputed domain name resolves. In other words, Respondent has through the use of confusingly similar disputed domain name created a likelihood of confusion with the Trade Mark. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential partners and end users are led to believe that the website at the disputed domain name is either one of Complainant’s sites or the sites of official authorized partners of Complainant, which it is not. Moreover, Respondent has not formally responded to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the disputed domain name and webpage which is confusingly similar to Complainant’s, intended to ride on the goodwill of Complainant’s Trade Mark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the websites on to which the disputed domain name resolve are indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of 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 disputed domain name be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: June 13, 2011
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