The Complainant is Educational Testing Service of New Jersey, United States of America represented by Jones Day, China.
The Respondent is c/o Dynadot Privacy of California, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2012. On March 6, 2012, the Center transmitted by email to Dynadot, LLC. a request for registrar verification in connection with the disputed domain names. On March 7, 2012, Dynadot, 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 March 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 30, 2012. 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 is an educational research and testing institution which administers examinations under its TOEFL, 托福, TOEIC, and 多益 trademarks. Complainant was formed in 1947 and has since administered examinations under these trademarks in multiple countries worldwide. The examinations administered by Complainant are used to determine test takers’ proficiency in the English language.
Complainant owns registrations for its TOEFL, 托福, TOEIC, and 多益 trademarks in China, Taiwan, and the United States of America. These registrations were granted in various years, the earliest being 1982 and the most recent being 2006.
Respondent is an entity based in the United States of America. The disputed domain names were created on November 12, 2010. 5. Parties’ Contentions A. Complainant
Complainant claims that it is the largest private not-for-profit educational institution in the world. Complainant claims to administer more than 50 million tests at over 9,000 locations in over 180 countries annually. Some of the tests administered by Complainant are for English language proficiency, specifically those administered under the TOEFL, 托福, TOEIC, and 多益 trademarks. Complainant maintains that its TOEFL examination is known as both TOEFL and 托福 by Chinese language speaking consumers, and that its TOEIC examination is known as both TOEIC and 多益 by these consumers. Complainant claims that extensive promotion and publicity by Complainant and third parties have led to its marks being renowned by educational, professional, occupational, economic, governmental, institutional, and industrial sectors. Complainant notes that searches for its 托福 and 多益 trademarks provide millions of results related to Complainant, and has provided copies of third party articles and publications which recognize Complainant’s trademarks, promote Complainant’s activities in China, and confirm recognition of its trademarks by a significant portion of the public.
Complainant claims that the disputed domain names are confusingly similar to the TOEFL and TOEIC trademarks in which Complainant has rights in the United States and are identical to the 托福 and 多益 trademarks in which Complainant has rights in China and Taiwan. Complainant maintains that it has not authorized Respondent to use its trademarks, and that there is no evidence that Respondent has rights or legitimate interests in the disputed domain names. Regarding bad faith, Complainant alleges that Respondent registered the disputed domain names primarily to rent or sell them for profit. Complainant also claims that the disputed domain names could not be used in good faith due to their use of Complainant’s prominent and distinctive trademarks and the likelihood that consumers would be confused that the disputed domain names are licensed, sponsored, or approved by Complainant. Complainant also cites the use of the domain name by Respondent to display monetized links to third party websites as further evidence of bad faith.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant owns trademark registrations for TOEFL, 托福, TOEIC, and 多益 which precede the creation of the disputed domain names on November 12, 2010. Specifically, Complainant owns registrations for 托福 in China, TOEFL in China, TOEFL in the United States, 多益 in Taiwan, and TOEIC in the United States.
The disputed domain names are identical to the trademarks registered by Complainant in China and Taiwan. They are also Chinese translations of the TOEFL and TOEIC trademarks owned by Complainant in Respondent’s jurisdiction, the United States. It is not a requirement of the Policy that a complainant’s trademark rights be recognized in a respondent’s county of residence. See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong,WIPO Case No. D2003-0668 (“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of the Respondent’s residence”). A majority of the results of an Internet search query for Complainant’s 多益 and 托福 marks are related to Complainant and Complainant’s services; it is therefore difficult to imagine a scenario where consumers would not be confused by the use of these marks to compose a domain name.
When considering translations and confusing similarity, it has been held that a domain name which reproduces a registered trademark phonetically is confusingly similar to that trademark. See, e.g., Auchan v. Oushang Chaoshi,WIPO Case No. D2005-0407 (noting that those conversant in the Chinese language would be likely to conclude that “OU SHANG probably refers to “欧尚” -- the Chinese mark of AUCHAN” in a finding of confusing similarity between the trademark AUCHAN /欧尚 and the domain name ).
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
There is no evidence in the record to indicate that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the terms 多益 or 托福. As such, Complainant has made out its prima facie case that Respondent lacks rights or legitimate interests, which Respondent has not rebutted.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Complainant owns registered trademark rights in TOEFL, 托福, TOEIC, and 多益 which precede the creation of the disputed domain names. It is clear from the record that Complainant’s services are known by their Chinese names 多益 and 托福 by Chinese language speakers. Complainant has provided significant evidence of this in the form of third party articles, publications, references, and reports.
The disputed domain names incorporate Complainant’s trademarks in their entirety. Use of a trademark in this manner supports a finding of a likelihood of confusion. See, e.g., Xerox Corporation v. Imaging Solution,WIPO Case No. D2001-0313 (“The Domain Name at issue wholly incorporates the Complainant’s central trademark "Xerox". This is sufficient to justify the finding that the name is "confusingly similar" to the Complainant’s registered trademarks”). Given the notoriety of Complainant’s trademarks, it is difficult to imagine a scenario where Respondent could have been unaware of Complainant when registering the disputed domain names. The terms 多益 and 托福 are not commonly used in Chinese apart from their use in reference to Complainant or Complainant’s services; there is little doubt that Respondent had knowledge of Complainant when registering the disputed domain names.
Any doubts in favor of Respondent are minimized upon consideration of the domain names’ content. Specifically, the record shows that the content of both domain names has offered each for rent or sale to the highest bidders, and that the content of has specifically referred to Complainant as follows:
“托福.net (TOEFL in C) – English test operated by ETS, and its full name is “Test of English as a Foreign Language”.
Further, the record shows that webpages featured at the disputed domain names have featured sponsored links to third party websites which reference Complainant in their text. This use of Complainant’s name and trademarks creates a risk that consumers will mistakenly believe that the links featured at the disputed domain name are sponsored by, endorsed by, affiliated with, or approved by Complainant. Websites displaying sponsored links have been regarded as illegitimate use of a domain name when there is evidence that the links displayed are efforts to trade off the goodwill of an established trademark. See, e.g., Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006 (Sponsored links displayed on a landing page are not legitimate where advertisements are directly related to the trademark value of the domain name); The Knot, Inc. v. In Knot we Trust LTD,WIPO Case No. D2006-0340 (similar opinion); Brink’s Network, Inc. v. Asproductions,WIPO Case No. D2007-0353 (similar opinion).
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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 disputed domain names and be transferred to Complainant.
Kimberley Chen Nobles
Sole Panelist
Dated: 24 May, 2012
Full & Egal Universal Law Academy