The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America (“United States”), represented by Jones Day, United States.
The Respondent is Ali Mohammed Ahmed, Afakcenter of Baghdad, Iraq. 2. The Domain Name and Registrar
The disputed domain name (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 August 17, 2017. On August 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 18, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2017.
The Center appointed John Swinson as the sole panelist in this matter on September 25, 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
The Complainant is Educational Testing Service, a non-profit organisation in the United States. The Complainant was formed in 1947 and develops and administers various achievement, aptitude, competency and admissions tests. One of the Complainant’s tests is the “TOEFL” which evaluates English proficiency of test-takers whose native language is not English. In 2005, the Complainant launched the “TOEFL iBT” test (i.e., Internet-based TOEFL) which enabled test-takers to access the test directly via the Internet.
The Complainant owns numerous registered trade marks, including Benelux registered trade mark number 954514 for IBT (the “Trade Mark”) which was registered on April 8, 2014. The Complainant’s United States registered trade mark number 3953133 for TOEFL IBT, registered on May 3, 2011, indicates earlier use of the term “iBT”.
The Complainant owns numerous domain names which incorporates the Trade Mark, including , , and which were registered on October 17, 2004, April 16, 2014, October 17, 2004 and August 10, 2011 respectively. Each of these domain names incorporating the Trade Mark re-directs to a website at the domain name , at which the Complainant provides its services.
The Respondent is Ali Mohammed Ahmed, an individual of Iraq and the registered owner of the Disputed Domain Name. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on July 2, 2017.
According to the Complaint, at the time the Complaint was filed, the website associated with the Disputed Domain Name appeared identical to the Complainant’s official TOEFL iBT test registration website located at “toefl-registration./TOEFLWeb/extISERLogonP” (the “Complainant’s Website”).
At the time of this decision, the Disputed Domain Name does not point to an active website.
The Complainant sent a cease and desist letter to the Respondent concerning the Disputed Domain Name on July 28, 2017 by email and post. According to the Complaint, the Respondent did not reply to the letter and the letter sent by post was unable to be delivered owing to an issue with the address. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions. (i) Identical or Confusingly Similar
The Disputed Domain Name incorporates the Trade Mark in its entirety. There is sufficient similarity between the Trade Mark and the Disputed Domain Name so as to render it confusingly similar, regardless of the presence of other terms in the Disputed Domain Name.
Given the fame of the Trade Mark, and the fact that the Disputed Domain Name wholly incorporates the Trade Mark, consumers are likely to believe that the Disputed Domain Name is affiliated with, authorised or endorsed by the Complainant.
The addition of the generic terms “registration” and “test” to the Trade Mark in the Disputed Domain Name creates a high likelihood that consumers will be deceived into believing that the Disputed Domain Name is owned by or affiliated with the Complainant.
According to the Complaint, the Respondent operated the Disputed Domain Name as a phishing website which is relevant to a finding of confusing similarity. By necessity, an effective phishing website entails consumer confusion and it is clear that the Respondent intended to, and did actually, cause consumer confusion regarding whether the website at the Disputed Domain Name was the Complainant’s Website. (ii) Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not a licensee of or otherwise affiliated with the Complainant. The Complainant has never authorised or otherwise condoned or consented to the Respondent’s registration of the Disputed Domain Name.
The 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.
Further, rather than using the Disputed Domain Name in connection with a bona fide offering of goods or services, or otherwise using the Disputed Domain Name for any legitimate purpose, the Respondent was operating the Disputed Domain Name as an unauthorised phishing website. Specifically, according to the Complaint, the Respondent duplicated the Complainant’s Website in order to collect the personal information of Internet users who believed that they were setting up a test registration profile with the Complainant or logging into their account registered with the Complainant. Many of the links on the website associated with the Disputed Domain Name resolved to the Complainant’s website, which gave the Respondent’s phishing website a sense of legitimacy.
The Respondent’s operation of a phishing website is considered a form of Internet fraud and therefore establishes a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. (iii) Registered and Used in Bad Faith
The Respondent registered and used the Disputed Domain Name in bad faith and in complete disregard of the Complainant’s rights in the Trade Mark.
The Respondent clearly knew of the Complainant’s rights to the Trade Mark at the time the Disputed Domain Name was registered and used as evidenced by the Respondent’s near-identical duplication of the Complainant’s Website and use of the Trade Mark in the Disputed Domain Name. Such knowledge is sufficient to establish that the Disputed Domain Name was registered and used by the Respondent in bad faith.
The Respondent’s registration and use of the Disputed Domain Name is clearly designed to misdirect consumers in search of the Complainant’s Website. The Respondent’s unauthorised phishing scheme was designed to gain access to the login credentials and/or personal information of test-takers and other customers of the Complainant through the website associated with the Disputed Domain Name. The Respondent’s phishing activity is a clear instance of bad faith registration.
The Respondent failed to respond to a cease and desist letter sent from the Complainant on July 28, 2017 and a follow-up email on August 7, 2017. The Respondent’s failure to respond further supports an inference of bad faith.
The Respondent has provided a false address and organisation name “AFAKCENTER” (i.e., A FAK[E] CENTER) which further supports a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel is satisfied that the Complainant has rights in “iBT” by virtue of its ownership and use of the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name and is combined with the descriptive terms “registration” and “test”. It is well established that the addition of a descriptive term does not prevent a finding of confusing similarity.
In this case, the generic Top-Level Domain (gTLD) “.org” is immaterial in assessing confusing similarity under the Policy and may be ignored.
In light of the above, the Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Panel accepts the Complainant’s submission that the Respondent is not a licensee or otherwise authorised by the Complainant to use the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trade mark rights in relation to the Trade Mark.
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of services. At the time the Complaint was filed, the website associated with the Disputed Domain Name was almost identical in appearance to the Complainant’s Website. In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. At the time the Complaint was filed, the Disputed Domain Name resolved to what appears to be a phishing website which appeared to enable the Respondent to gain access to the login credentials and/or personal information of Internet users believing it to be the Complainant’s Website, presumably for commercial gain. Previous panels have held that the use of a domain name for the illegal activity of phishing can never confer rights or legitimate interests on a respondent (see section 2.13.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.
Based on the evidence provided by the Complainant, the Panel concludes that the Respondent had knowledge of the Trade Mark at the time of registering the Disputed Domain Name. The Panel finds that the Respondent sought to take advantage of the reputation of the Complainant’s business and the Trade Mark, and registered the Disputed Domain Name because of this reputation. The Panel reasonably considers that the likely effect of the Respondent’s registration and previous use of the Disputed Domain Name was to attract Internet users to its website for commercial gain. This is evidence of bad faith registration and use (see paragraph 4(b)(iv) of the Policy). In addition, the Panel considers that the additional terms contribute to confusing similarity, as the terms “registration” and “test” can be easily associated with the Complainant’s goods and services.
The Respondent’s bad faith registration and use is further demonstrated by the fact that the Respondent used the Disputed Domain Name for what appears to be a phishing website, an illegitimate activity, which is manifestly considered evidence of bad faith (see section 3.1.4 of the WIPO Overview 3.0).
In light of the above, and the Respondent’s failure to provide evidence to the contrary, the Panel finds that the Complainant has succeeded on the third element 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 the Complainant.
John Swinson
Sole Panelist
Date: October 5, 2017
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