Complainant is Educational Testing Service of Princeton, New Jersey, United States of America ("US"), represented by Jones Day, US.
Respondent is Sulaiman Ali of Duhok, Kurdistan, Iraq. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with FastDomain, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2017. On September 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 15, 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 September 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2017. The Center received an email communication on September 25, 2017, from the person included as Administrative and Billing contact in the WhoIs for the Domain Name, claiming to have nothing to do with the Domain Name. The Center notified the Parties of the Commencement of Panel Appointment Process on October 17, 2017.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on November 2, 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 Educational Testing Service is one of the world's largest private non-profit educational testing and assessment organizations. Complainant has been the leader in developing and administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for Americans and citizens of other countries seeking college and graduate school admission. Since its formation in 1947, 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 or its related companies include the TOEFL test.
According to the evidence submitted by Complainant, Complainant has a large number of trademark registrations for TOEFL, including:
- the trademark TOEFL registered with the United States Patent and Trademark Office under number 1,103,427 and a registration date of October 3, 1978;
- the trademark TOEFL registered with the United States Patent and Trademark Office under number 2,461,224 and a registration date of June 19, 2001.
The Domain Name was registered on May 19, 2017. The Domain Name currently resolves to a website which mentions that the website is closed.
The trademark registrations of Complainant were issued prior to the registration of the Domain Name. 5. Parties' Contentions A. Complainant
Complainant submits that the Domain Name is identical and confusingly similar to Complainant's TOEFL trademark as it incorporates the TOEFL mark in its entirety. According to Complainant the mere addition of the generic term "international" to the TOEFL mark does not decrease the confusing similarity arising from the incorporation of Complainant's TOEFL mark in its entirety.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not a licensee of or otherwise affiliated with Complainant and Complainant has never authorized or otherwise condoned or consented to Respondent's registration of the Domain Name. Complainant submits that Respondent is not commonly known by the Domain Name, has not made any preparations to use or used the Domain Name in connection with a bona fide offering of goods or services, and has not used the Domain Name for any legitimate noncommercial or fair use purpose. Rather than using the Domain Name in connection with a bona fide offering of goods or services, or otherwise using the Domain Name for any legitimate purpose, Respondent registered and previously operated the Domain Name in an attempt to deceive Internet users into thinking that Respondent operates an official TOEFL test website and diverting them to the website associated with the Domain Name. According to Complainant, upon accessing the former website associated with the Domain Name, users encountered a logo consisting of Complainant's logo in combination with the words "TOEFL International". The former website associated with the Domain Name also displayed the TOEFL marks and Complainant's copyrighted graphics and text without authorization in connection with Respondent's TOEFL test preparation materials, and also falsely claimed to be a "TOEFL Test Authorized Center." Complainant submits that after having contacted Respondent, Respondent explained that the website associated with the Domain Name had been "closed" but according to Complainant the website still contained Complainant's logo and the TOEFL mark. In addition, Complainant asserts that Respondent did not comply with Complainant's request to transfer the Domain Name to Complainant.
According to Complainant, Respondent registered, used, and is holding the Domain Name in bad faith, and in complete disregard of Complainant's exclusive rights to use the TOEFL mark.
Complainant submits that Respondent clearly knew of Complainant's well-known TOEFL mark at the time it registered and used the Domain Name as evidenced by Respondent's display of Complainant's logo and TOEFL mark, copyrighted photos and statements that he was operating a "TOEFL Test Authorized Center". B. Respondent
Respondent did not reply to Complainant's contentions.
After Notification of Complaint and Commencement of Administrative Proceeding of September 25, 2017, the Center received on September 25, 2017, an informal email communication from the person included as Administrative and Billing contact in the WhoIs for the Domain Name. According to this person, who appears to have been the original Registrant of the Domain Name, he just helped with a friend's request to hire him a subdomain as this friend does not have a credit card because he lives in Iraq where there are no credit cards. This person contacted his friend and asked him to delete anything illegal or misuse of trademarks. Calling his friend in Iraq again after commencement of the Administrative Proceeding, the friend told this person that he closed his website and is getting in touch with the freelancer developer or designer to change his name and things. This person included as Administrative and Billing contact in the WhoIs for the Domain Name also mentioned that he eliminated his credit card which he helped his friend with and concluded by mentioning that he is a teacher and that he does not want his name to be connected with anything illegal as he hopes that his reputation before his students be very clear and transparent.
The Center advised this person included as Administrative and Billing contact in the WhoIs for the Domain Name that in the Notification of Complaint and Commencement of Administrative Proceeding his name and contact details had only been included as Administrative and Billing contact, and not as Registrant contact. The Center also informed this person that it will be at the discretion of the Panel to consider the informal email communication of September 25, 2017. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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 that complainant proves each of the following three elements to obtain an order that the disputed domain name be transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(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.
The Panel is satisfied that the registrant of record for the Domain Name is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this proceeding. While the current Administrative and Billing contact of the Domain Name appears to have been the previous registrant of the Domain Name, based on the available record the Panel finds that the Respondent has at all times been the beneficial holder of the Domain Name. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of several trademark registrations for TOEFL. The Domain Name incorporates the entirety of the TOEFL trademark as its distinctive element. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates a complainant's trademark in its entirety. The addition of the term "international" and the generic Top-Level Domain ("gTLD") ".com" is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant's trademarks. B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its trademarks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name with intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant.
Based on the evidence provided by Complainant, including an email communication of August 14, 2017, from Respondent to Complainant mentioning that it has closed the website and that it was just an experimental launching, the Domain Name currently resolves to a website which mentions that it is closed. At different times the Domain Name resolved to a website displaying the well-known TOEFL mark and Complainant's copyrighted graphics and text without authorization in connection with the TOEFL test preparation materials. The Panel also notes the informal email communication mentioned above from the person included as Administrative and Billing contact in the WhoIs for the Domain Name, who was the original Registrant of the Domain Name, that he just helped his friend and that he is a teacher and does not want to be connected with anything illegal.
The Panel does not consider such use a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the website to which the Domain Name resolved did not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the well-known TOEFL trademarks, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has Respondent acquired any trademark or service mark rights. Moreover, the Domain Name currently resolves to a website which mentions that the website is closed.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith.
Noting the well-known status of the TOEFL marks and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew or should have known of Complainant's well-known TOEFL marks at the time of registration of the Domain Name, and therefore registered the Domain Name in bad faith. The Panel notes that Respondent's initial use of the website at the Domain Name, which incorporated Complainant's trademark and copyrighted material, indicates that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location. This amounts for bad faith use for the purposes of the Policy.
Furthermore, the fact that the Domain Name currently directs to a website which mentions that it is closed does not prevent the Panel from finding registration and use in bad faith, which is supported by the circumstances of this case. 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 Complainant.
Dinant T. L. Oosterbaan
Sole Panelist
Date: November 9, 2017
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