The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America ("USA"), represented by T&G Law Firm LLC, Viet Nam.
The Respondent is Van Xuan Ngoc of Ha Noi, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Nhan Hoa Software Company Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2018. On March 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 19, 2018, 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 Complaint was submitted in the English language. The language of the Registration Agreement for the Domain Name is Vietnamese. On March 20, 2018, the Center sent an email communication to the Parties in both English and Vietnamese regarding the language of the proceeding. On March 23, 2018, the Complainant requested that English be the language of the proceeding as submitted in the Complaint. The Respondent did not reply to the Center's communication regarding the language of the proceeding or the Complainant's submission.
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 March 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 18, 2018.
The Center appointed Linda Chang as the sole panelist in this matter on May 8, 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
The Complainant is a non-profit educational testing and assessment organization in the United States and develops, administers and scores more than 50 million tests per year in more than 180 countries and 9,000 locations. Well-known tests developed by the Complainant or its related companies include the TOEIC test, which the Complainant has been administering since 1979. The Complainant has developed numerous TOEIC test preparation products and services, including but not limited to print publications, compact discs, computer software and online writing exercises, and offers for sale worldwide including on its official websites and websites of its business partners.
The Complainant holds numerous trademark registrations of the TOEIC mark, including trademark registration No. 1191669 registered in the United States in Classes 16 and 42 as of March 9, 1982, and trademark registration No. 14847 registered in Classes 9, 16 and 41 in Viet Nam as of December 31, 1994.
The Domain Name was registered on August 26, 2013, and does not resolve to any active website at the moment. The Domain Name previously resolved to a website in English and Vietnamese offering competing services to the Complainant. 5. Parties' Contentions A. Complainant
The Complainant asserts that the Domain Name is confusingly similar to its TOEIC trademark notwithstanding the addition of the generic term "365" and the generic Top-Level Domain ("gTLD") ".com".
The Complainant argues that the Respondent is not a licensee of or affiliated with the Complainant, and the Complainant has never authorized or condoned or consented to the Respondent's registration of the Domain Name. The Respondent thus has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that the Respondent clearly knew of the TOEIC trademark at the time of registering the Domain Name and is trying to attract Internet users to its website in order to profit from sales of its TOEIC test preparation services. The Respondent therefore registered and is using the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
The Complainant requested for English to be the language of the proceeding. Arguments include that the Respondent has the ability to understand English and the Complainant would be unfairly disadvantaged by being forced to translate.
Under paragraph 11(a) of the Rules, the language of the proceeding shall be the language of the registration agreement, unless both parties agree otherwise, or the registration agreement specifies otherwise, or the panel determines otherwise. Paragraph 11(a) of the Rules further allows the Panel to determine the language of the proceeding by taking into account all relevant circumstances.
In the present case, the Panel notices that: 1) the Registrar has confirmed that the registration agreement is in Vietnamese; 2) the Respondent resides in Viet Nam; and 3) the website associated with the Domain Name used to resolve to a website displaying contents in Vietnamese.
The Panel however also notices that the Respondent is offering TOEIC test preparation service through the website associated with the Domain Name, including holding online tests and selling documents related to the TOEIC test. It should be fair inference that the Respondent perfectly understands English so that it is capable of selecting and categorizing these English tests and documents before uploading and selling them online.
Besides, the Respondent has been notified of the proceeding in both Vietnamese and English, and provided with the opportunity to object to the use of English as the language of the proceeding.
Having considered all the circumstances, the Panel finds that the Respondent would not suffer undue prejudice as a result of the language of the proceeding being English. In order not to unduly burden the Parties and unduly delay the proceeding, the Panel determines the language of the proceeding shall be English and the decision will be rendered in English. B. Identical or Confusingly Similar
It is clear on the submitted evidence that the Complainant has rights over the trademark TOEIC throughout the world, including in Viet Nam where the Respondent resides.
The Panel views that the dominant part of the Domain Name is "toeic365". "365" is a term commonly used to refer to 365 days in a year, and such addition cannot avoid the finding of confusing similarity. The Panel further finds that ".com" being the gTLD is not a distinguishing factor and does not affect the domain name under the confusingly similarity test.
Accordingly, the Panel holds the Domain Name is confusingly similar to the Complainant's trademark TOEIC, and the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant contends that the Respondent is not its licensee nor affiliated with it. The Complainant has never authorized or condoned or consented to the Respondent's registration of the Domain Name.
The Domain Name used to resolve to a competing website for TOEIC test preparation services without authorization of the Complainant. The Panel does not consider it legitimate noncommercial or fair use of the Domain Name under the Policy, nor, for the reasons discussed in the following section, a bona fide offering of goods or services. Accordingly, the Panel determines that there is no indication that the Respondent may have rights or legitimate interests in respect of the Domain Name.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy, and the burden of production shifts to the Respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683. The Respondent however chose not to prove its rights or legitimate interests in the Domain Name by responding to this Complaint.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant has trademark registrations of the mark TOEIC worldwide, and developed tremendous goodwill in the trademark TOEIC.
Given the goodwill and fame the Complainant and the trademark TOEIC has gained worldwide, the Panel finds it implausible that the Respondent chose the Domain Name serendipitously and without knowledge of the TOEIC trademark. The Respondent's awareness of the trademark TOEIC when registering the Domain Name could be further evidenced by its offering of TOEIC test preparation services on the website. The Panel thus concludes that the Respondent's obvious awareness of the trademark TOEIC at the time of registering the Domain Name constituted opportunistic bad faith registration. See Deutsche Bank AG v. Diego-Arturo Bruckner,WIPO Case No. D2000-0277.
The Panel agrees that the Respondent intentionally chose the trademark TOEIC to register the Domain Name and later used it to offer TOEIC test related services in a manner which mimics the Complainant and causes confusion as to the source of the services. By using the Domain Name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with the Complainant's trademark TOEIC as to the source, sponsorship, affiliation, or endorsement of its own website or of a product or service on the website.
Finally, the Respondent's failure to respond to this Complaint and the warning letter from the Complainant is further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610, "The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787)".
In light of the above facts and reasons, the Panel therefore determines that the Domain Name was registered and is being used in bad faith pursuant to 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 the Complainant.
Linda Chang
Sole Panelist
Date: June 1, 2018
Full & Egal Universal Law Academy