Complainant is Educational Testing Service of Princeton, New Jersey, United States of America ("United States"), represented by Jones Day, United States.
Respondent is Ahmed Hasan Ali, Dr. Haider of Baghdad, Iraq. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 5, 2017. On April 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 7, 2017, the Registrar 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 18, 2017.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on May 31, 2017. 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 was established in 1947 and describes itself as the world's largest private non-profit educational testing and assessment organization and the leader in developing and administering tests for measuring skills. Complainant develops, administers and scores more than 50 million tests per year, in more than 180 countries and 9,000 locations worldwide. The tests developed and administered by Complainant include the TOEFL-test for evaluating the English proficiency of people whose native language is not English. In 2005, Complainant launched the TOEFL iBT test which is delivered to test-takers directly via the Internet at secure computer test sites certified by Complainant. It results from Complainant's undisputed allegations that the TOEFL-tests are particularly made available also in numerous cities in Iraq, where Respondent is located, including Babil, Baghdad, Basra, Duhok, Erbil and Sulaimani.
Complainant is the registered owner of several trademark registrations consisting of the terms ETS, TOEFL and TOEFL iBT in particular United States Reg. No. 558,879 ETS (for services in class 42, registered on May 13, 1952), United States Reg. No. 1,103,427 TOEFL (for goods and services in classes 16 and 41, registered on October 3, 1978) and United States Reg. No. 3,953,133 TOFEL iBT (for goods in classes 9 and 16, registered on May 3, 2011).
Furthermore, Complainant also owns trademark registrations in Iraq, i.e. registered Iraq trademark No. 47363 ETS and registered Iraq trademark No. 47365 TOEFL.
The disputed domain name was registered on February 13, 2017. It results from Complainant's documented allegations that the disputed domain name consists of a substantive portion of Complainant's official TOEFL iBT-test registration domain name which is . It further results from Complainant's documented and undisputed assertions that Respondent began operating the website available under the disputed domain name as a phishing website to obtain the personally identifiable information of Complainant's customers. This phishing website appeared almost completely identical to Complainant's official TOEFL iBT test registration website.
On March 13, 2017 Complainant sent a cease-and-desist letter to Respondent demanding transfer of the disputed domain name. However, it results from Complainant's unrebutted allegations that it did not receive any substantial response by Respondent to this request. 5. Parties' Contentions A. Complainant
Complainant ascertains that the disputed domain name incorporates both the ETS Mark and the TOEFL Mark in their entireties. It has been well-established by previous UDRP decisions that a domain name incorporating a distinctive trademark in its entirety creates sufficient similarity between the mark and the disputed domain name so as to render it confusingly similar, regardless of the presence of other terms in the domain name.
Complainant further contends that Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, Respondent is not a licensee of or otherwise affiliated with Complainant. Moreover, Respondent is not commonly known by the disputed domain name, has not made any preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, and has not used the disputed domain name for any legitimate noncommercial or fair use purpose. All to the contrary: Respondent was rather operating the disputed domain name as an unauthorized phishing website.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith. In particular, Complainant alleges that Respondent registered, used, and is holding the disputed domain name willfully, in bad faith, and in complete disregard of Complainant's exclusive rights to use the ETS mark and the TOEFL mark. In Complainant's view, Respondent clearly knew of Complainant's rights to the ETS mark and the TOEFL mark at the time it registered and used the disputed domain name as evidenced by Respondent's near-identical duplication of Complainant's official TOEFL iBT test registration domain name and website. Second, Complainant takes Respondent's registration and use of the disputed domain name as clearly designed to misdirect consumers in search of Complainant's official website. In particular, Respondent was engaged in an unauthorized phishing scheme that was designed to gain access to the login credentials and/or personal information of TOEFL iBT test takers and other customers of Complainant through the website associated with the disputed domain name. Third, Respondent failed to respond to communications from Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy requires the complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the evidence provided that Complainant is the registered owner of trademark registrations consisting of the terms ETS (e.g., United States Reg. No. 558,879 and Iraq trademark No. 47363), TOEFL (e.g., United States Reg. No. 1,103,427 and Iraq trademark No. 47365) and TOEFL iBT (e.g., United States Reg. No. 3,953,133). The afore-mentioned marks predate the creation date of the disputed domain name, which is February 13, 2017.
Many UDRP Panels have found that a domain name is confusingly similar to a complainant's trademark where the domain name incorporates the complainant's trademark in its entirety (e.g., Facebook, Inc. v. Mirza Azim,WIPO Case No. D2016-0950; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910). This is the case in the present proceedings where several of Complainant's registered trademarks are fully included in the disputed domain name.
The Panel has therefore no doubt that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, a complainant must secondly establish that the respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate respondent's rights or legitimate interests in the disputed domain name. In the Panel's view, based on Complainant's undisputed allegations stated above, Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that Respondent lacks rights or legitimate interests in the disputed domain name.
The disputed domain name consists of a substantive portion of Complainant's official TOEFL iBT test registration domain name which is . Furthermore, no true self-generated content, but a practically identical copy of Complainant's official TOEFL iBT test registration website for phishing purposes is displayed on the website to which the disputed domain name resolves. Such use under the circumstances can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy (see Sanofi v. kiyuni,WIPO Case No. D2016-1190; Sanofi, Genzyme Corporation v. Domain Privacy,WIPO Case No. D2016-1193; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, supra; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra).
Furthermore, the Panel does not find any evidence that could lead the Panel to the conclusion that Respondent is commonly known by the disputed domain name or that he has acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.
The Panel notes that Complainant's marks ETS and TOEFL have been deemed well-known and highly distinctive marks by previous UDRP Panels (Educational Testing Service v. Int'l Names Ltd.,WIPO Case No. D2007-0449; Educational Testing Service v. Park Jeong Foreign Language Institute,WIPO Case No. D2001-1064). This Panel joins the view of these previous panels. Therefore, it is the view of this Panel that Respondent knew or should have known that the disputed domain name included Complainant's ETS and TOEFL trademarks when he registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed ETS and TOEFL marks and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra).
In addition, the disputed domain name resolved to a website showing a practically identical copy of Complainant's official TOEFL iBT test registration website for phishing purposes. The Panel finds that Respondent has therefore registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's ETS and TOEFL marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at paragraph 3.1.4. with further references).
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. 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 name, , be transferred to Complainant.
Tobias Malte Müller
Sole Panelist
Date: June 14, 2017
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