The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America (“United States”) or (“US”), represented by Jones Day, United States.
The Respondent is Ahmed Ali, Tito of Mansoura, Egypt. 2. The Domain Name and Registrar
The Domain Name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2018. On January 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 30, 2018, the Registrar transmitted by email to the Center its verification response. On February 1, 2018, the Center transmitted by email to the Registrar a request for clarification. On the same day, the Registrar transmitted by email to the Center its clarification 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 February 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 2, 2018.
The Center appointed Tommaso La Scala as the sole panelist in this matter on March 12, 2018. 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
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 wide number of trademark registrations consisting – among others – of the terms TOEFL and TOEFL IBT, including the followings:
- US trademark registration no. 1,103,427 “TOEFL”, granted on October 3, 1978;
- US trademark registration no. 2,461,224 “TOEFL”, granted on June 19, 2001;
- US trademark registration no. 3,953,133 “TOEFL IBT”, granted on May 3, 2011.
The Domain Name was registered on October 17, 2017. The Domain Name currently resolves to a page without content, although it was previously connected to a website that – according to Complainant – exactly reproduced the latter’s official website.
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 and TOEFL IBT trademarks, as it incorporates both the TOEFL and TOEFL IBT marks in their entirety. According to Complainant, the addition of a generic term such as “exam” to the TOEFL and TOEFL IBT marks does not decrease the confusing similarity arising from the incorporation of Complainant’s marks in their entirety, but rather increases the potential risk of confusion, given the educational field in which Complainant works.
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 allegedly registered and previously used the Domain Name in order to deceive Internet users and make them believe that Respondent was running an official TOEFL test website, by 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 an exact copy of ETS’s website, including the ETS logo. The website associated with the Domain Name also displayed similar text and graphics to those on ETS’s official website, serving as an impersonation site.
Complainant submits that it firstly (unsuccessfully) requested the hosting provider to shut down the website connected to the Domain Name and later contacted the original listed registrant, an unrelated third party, in order to get the transfer of the Domain Name.
That individual replied that he was not the domain owner, but that he had only reserved the Domain Name. The latter subsequently sent to Complainant a communication from the Registrar, stating that the registrant for the Domain Name website was updated, and that a 60-day inter-registrar transfer lock had been placed. After the 60-day transfer lock ended, Complainant contacted the new listed registrant, Respondent in this proceeding, demanding the take down the infringing website and the transfer the Domain Name. Despite such communication, Complainant received no response from Respondent.
Furthermore, although Complainant never received a reply from Respondent, a change was made to the website associated with the Domain Name, namely a modification of the logo “ETS” in “MTS”, with the same format and colours of the ETS logo.
According to Complainant, Respondent registered, used and is holding the Domain Name in bad faith, and in violation of Complainant’s exclusive rights to use the TOEFL and TOEFL IBT marks.
Complainant submits that Respondent clearly knew of Complainant’s well-known TOEFL and TOEFL IBT marks at the time it registered and used the Domain Name, given that the website connected to it exactly reproduced Complainant’s website, as well as its copyrighted contents and layout. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that Complainant has rights in the registered trademarks TOEFL and TOEFL IBT.
The Domain Name wholly incorporates Complainant’s trademarks TOEFL and TOEFL IBT. It also contains the additional element “exam”, which is a generic word definitely descriptive of the services offered by Complainant with the mentioned signs.
In the similar case of Educational Testing Service v. S B,WIPO Case No. D2009-0600 (July 1, 2009), a UDRP Panel found to be confusingly similar to ETS’s TOEFL mark. See also Aktiebolaget Electrolux v. Mohammad Aghakhani,WIPO Case No. DIR2014-008 (January 26, 2015) finding confusingly similar to AEG; Educational Testing Service v. Domains by Proxy Inc. / Zhao Zhihui / Chen keqing, WIPO Case No. D2008-0993 (Oct. 3, 2008) finding confusingly similar to ETS’s GRE mark; Educational Testing Service v. Erhan Bayram, WIPO Case No. D2011-0276 (April 21, 2011) addition of “the generic word ‘online’” to ETS’s TOEFL mark “does not distinguish the disputed domain names from the Complainant’s trademarks”.
As a matter of fact, the addition of a term which is descriptive of a complainant’s goods and/or services
actually increases rather than mitigates the potential risk of confusion. See, among others, Educational Testing Service v. Eunho Hwang, WIPO Case No. D2017-0993 (July 3, 2017) “The addition of the descriptive term does not prevent a finding of confusing similarity and in the present case the addition of ‘center’ may cause Internet users to think that Domain Name related to a centre promoting or otherwise connected with the Complainant TOEFL Test.”.
Therefore, the Panel finds that the Domain Name is confusingly similar to the trademarks in which Complainant has rights. Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel believes 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 submitted by Complainant, the Domain Name previously resolved to a website exactly reproducing Complainant’s official website, with same graphic, same copyrighted contents and same logo. 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 disclose at all the lack of relationship between Respondent and Complainant as the holder of the well-known TOEFL and TOEFL IBT trademarks, in particular as there has never been any business relationship between the Parties. Respondent is also not commonly known by the Domain Name nor has Respondent acquired any trademark or service mark rights.
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.
Taking into account the renowned status of the TOEFL and TOEFL IBT marks and the specific circumstances of this case, namely the prior use of the website at the Domain Name, the Panel believes that Respondent knew or should have known of Complainant’s well-known TOEFL and TOEFL IBT marks at the time of registration of the Domain Name, and therefore registered the Domain Name in bad faith.
In particular, the Panel underlines the fact that Respondent’s initial use of the website (which incorporated Complainant’s trademarks, logo and copyrighted material) indicates that Respondent registered and used the Domain Name with the specific purpose of attracting, 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.
Further and definitive evidence of Respondent’s bad faith can be easily found in Respondent’s unauthorized use of Complainant’s ETS logo and copyrighted images and text on the website associated with the Domain Name, as such circumstance represents a clear attempt to pass off as ETS (see, in this regard, WIPO D2016-0014).
Therefore, the Panel finds that the Domain Name has been registered and is being used in bad faith. Complainant has satisfied the third element in paragraph 4(a) 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 Domain Name be transferred to Complainant.
Tommaso La Scala
Sole Panelist
Date: March 21, 2018
Full & Egal Universal Law Academy