Complainant is Educational Testing Service of Princeton, New Jersey, United States of America ("United States"), represented by Jones Day, United States.
Respondent is Virus Terminator of Beirut, Lebanon. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2018. On July 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 11, 2018, 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 July 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 13, 2018.
The Center appointed Roberto Bianchi as the sole panelist in this matter on August 20, 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
Complainant is a private non-profit educational testing and assessment organization. Complainant develops and administers more than 50 million tests per year for measuring skills, academic aptitude and achievement, and occupational and professional competency, including the well-known TOEFL test. Complainant is active in more than 180 countries and 9,000 locations worldwide. In addition to its headquarters and offices in the United States, Complainant has an extensive worldwide network of local test administrators and authorized testing centers.
Since 1964, Complainant has been evaluating English proficiency by using TOEFL test scores from their international applicants, to assist in determining the admission of foreign students.
Complainant's TOEFL test is made available worldwide by Complainant and administered by authorized institutions under contract with Complainant. Since 1964, over 30 million students have taken the TOEFL test and over 9,000 institutions in more than 130 countries worldwide use scores from the test. The TOEFL test is available for test takers in 165 countries at more than 4,500 testing centers. In Lebanon, there are two testing centers.
Complainant owns numerous trademark registrations for the TOEFL mark, including the following:
JURISDICTION
TRADEMARK
REG. NO.
REG. DATE
INTERNATIONAL CLASSES
UNITED STATES
TOEFL
1,103,427
October 3, 1978
16, 41
UNITED STATES
TOEFL
2,461,224
June 19, 2001
9
UNITED STATES
TOEFL
3,168,050
November 7, 2006
16, 41, 42
UNITED STATES
TOEFL
4,595,363
September 2, 2014
9
UNITED STATES
TOEFL
5,059,810
October 11, 2016
9
LEBANON
TOEFL
101,724
April 7, 2005
9, 16, 41, 42
According to the relevant WhoIs database, the record for the Disputed Domain Name was created on November 20, 2009, and previously resolved to a website promoting the "Score Training Center" in Lebanon, offering competing testing services and incorporating a modified version of Complainant's stylized trademark.
Presently, the Disputed Domain Name does not resolve into any active website. 5. Parties' Contentions A. Complainant
Complainant contends as follows:
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Disputed Domain Name incorporates Complainant's TOEFLmark in its entirety. It has been well established by previous UDRP panel decisions that a disputed domain name incorporating a distinctive trademark in its entirety creates a sufficient similarity between the mark and the disputed domain name to render it confusingly similar, regardless of the presence of other terms in the disputed domain name. The addition of a generic term such as "score" to the TOEFL mark does not decrease the confusing similarity arising from the incorporation of the mark in its entirety, but rather increasesthe likelihood of confusion, as it is a term related to Complainant's services.
Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. First, 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 Disputed Domain Name. Moreover, Respondent is not now, and to Complainant's knowledge never was, commonly known by the Disputed Domain Name. 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, Respondent registered and operated the Disputed Domain Name in an attempt to deceive Internet users into thinking that Respondent was affiliated with Complainant.
Respondent registered and is using the Disputed Domain Name willfully, in bad faith, and in complete disregard of Complainant's exclusive rights to use the TOEFL mark. Respondent clearly knew of the well-known TOEFL mark at the time it registered and used the Disputed Domain Name, more than 50 years after Complainant began using the TOEFL mark. As noted by previous panels, registration of a well-known trademark as a domain name is a clear indication of bad faith itself, especially where the mark is particularly unique. Moreover, Respondent has demonstrated bad faith by intentionally attempting to attract, for commercial gain, Internet users to the website associated with the Disputed Domain Name by creating a likelihood of confusion with Complainant's TOEFL mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on the website associated with the Disputed Domain Name. Respondent has registered the Disputed Domain Name to attract Internet users to his website under the belief that Respondent's website is authorized by or associated with Complainant, and to profit from sales of test preparation services through that website. Such use amounts to clear and blatant bad faith registration of the Disputed Domain Name for commercial gain.
Respondent's failure to answer Complainant`s cease and desist letters sent in 2017 and 2018 requesting the transfer of the Disputed Domain Name lends additional support to a finding of bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
By submitting several printouts taken from the databases of the official trademark offices of the United States and Lebanon, Complainant has proved to the satisfaction of the Panel that it has rights in the TOEFL trademark. See section 4 above.
The Panel notes that in the Disputed Domain Name the mark TOEFL is incorporated in its entirety as a relevant element, with the only addition of the descriptive term "score" and the generic Top-Level Domain ".net". It is well established that such additions generally are inapt to distinguish the domain name from the mark it incorporates. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8 ("Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements"). For these reasons, the Panel concludes that the Disputed Domain Name is confusingly similar to Complainant's mark TOEFL. B. Rights or Legitimate Interests
Complainant says that Respondent is not a licensee of or otherwise affiliated with Complainant, and that it never authorized, condoned or consented to Respondent's registration of the Disputed Domain Name. Complainant further denies that Respondent is commonly known by the Disputed Domain Name. Lastly, Complainant contends that rather than using the Disputed Domain Name in connection with a bona fide offering of goods or services, or otherwise using it for any legitimate purpose, Respondent registered and operated the Disputed Domain Name in an attempt to deceive Internet users into thinking that Respondent was affiliated with Complainant.
In the view of the Panel, the available evidence supports Complainant's contentions. First, according to the relevant WhoIs data, the registrant of the Disputed Domain Name is "Virus Terminator", and there is no evidence suggesting otherwise. Thus, the application of Policy paragraph 4(c)(ii) must be discarded. Second, as shown by Complainant in Annex 10 to the Complaint, the website at the Disputed Domain Name in essence contains an offering to students by the Score Training Center, a language training school in Beirut, Lebanon, to study and prepare for taking the TOEFL and TOEFL IBT tests. At the top of each page of the website, a stylized TOEFL mark - as currently registered by Complainant in China and Colombia - is displayed. On the website, Score Training Center presents itself as an official agent of Complainant in Lebanon. See Annexes 10 and 11 to the Complaint.
In this regard, Complainant states that Respondent is not a licensee of or otherwise affiliated with Complainant, and that it never authorized, condoned or consented to Respondent's registration of the Disputed Domain Name. The Panel also notes that on the website at the Disputed Domain Name there is no disclaimer stating that the Score Training Center is not related in any manner to Complainant, and that Respondent failed to reply to Complainant's cease and desist letter of July 20, 2017, its reminder of July 27, 2017 and a new cease and desist letter delivered to Respondent's employee on April 19, 2018. Respondent also failed to provide in this proceeding any explanation whatsoever for its registration and use of the Disputed Domain Name.
The Panel further notes that presently there is no active website corresponding to the Disputed Domain Name. In other words, Respondent is not making a use of the Disputed Domain Name in connection with a bona fide offering of goods or services, pursuant to Policy paragraph 4(c)(i), or a legitimate noncommercial or fair use, without intent for commercial gain misleadingly to divert consumers, pursuant to Policy paragraph 4(c)(iii). In the Panel's view, Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name.
Respondent's silence suggests that it lacks any authorization or license for using Complainant's mark TOEFL either in the Disputed Domain Name or on its associated website, or profiting from the confusion created among Internet users presumably looking for Complainant's mark, products and services.
For the above reasons, the Panel finds that Respondent lacks any rights or legitimate interests in the Disputed Domain Name. See WIPO Overview 3.0, section 2.1. C. Registered and Used in Bad Faith
Complainant has shown that several of its trademark registrations for TOEFL predate the registration of the Disputed Domain Name by decades. See section 4 above. In particular, the Panel notes that in Complainant's United States Registration No. 1,103,427 for the TOEFL mark (covering educational testing services - namely, administering tests dealing with languages) was registered on October 3, 1978.
In addition, several previous panels have considered that the TOEFL mark is well known. See e.g., Educational Testing Service v. Ahmed Hasan Ali, Dr. Haider,WIPO Case No. D2017-0689 ("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 (ETS) v. International Names Ltd.,WIPO Case No. D2007-0449; Educational Testing Service v. Park Jeong Foreign Language Institute,WIPO Case No. D2001-1064)"). The Panel shares this view. Lastly, the very content of the website previously displayed at the Disputed Domain Name is mainly dedicated to the TOEFL test. On several of its pages, a stylized version of the TOEFL mark is quite visibly displayed. In the Panel's opinion, these facts and circumstances indicate that Respondent knew of Complainant, its TOEFL mark, and goods and services, and that it targeted them, at the time of registering the Disputed Domain Name.
As shown above, until recently on the website at the Disputed Domain Name, Respondent depicted itself as an official agent of Complainant, while profusely displaying the stylized TOEFL mark and offering training and other services. This means that, by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. This is a circumstance of registration and use in bad faith of the Disputed Domain Name, pursuant to Policy paragraph 4(b)(iv).
Lastly, the Panel notes that presently, the Disputed Domain Name does not resolve into any active website. This strongly suggests that Respondent does not contemplate any use of the Disputed Domain Name other than as shown, i.e., in bad faith.
The Panel concludes that the Disputed Domain Name was registered and is being used in bad faith. 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.
Roberto Bianchi
Sole Panelist
Date: August 31, 2018
Full & Egal Universal Law Academy