Complainant is Educational Testing Service of Princeton, New Jersey, United States of America (the “United States”), represented by Jones Day, United States.
Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / ielts certificate of London, California, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2019. On February 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 19, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 22, 2019.
The Center verified that the Complaint together with the amended 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 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 19, 2019.
The Center appointed Ingrida Karina-Berzina as the sole panelist in this matter on March 25, 2019. 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 service that administers more than 50 million tests per year in 180 countries worldwide. Complainant’s TOEFL test has been used since 1964 to evaluate the English proficiency of persons whose native language is not English. The TOEFL test and an online version called the TOEFL iBT have been taken by over 30 million students for submission to academic institutions, employers and others. Each year, the test is administered in 165 countries at more than 4,500 testing centers.
Complainant is the proprietor of numerous trademark registrations containing the TOEFL mark (the “Mark”) in a number of countries, including the following:
United States trademark No. 1103427 for TOEFL (word mark) in classes 16 and 41, registered on October 3, 1978;
United States trademark No. 2461224 for TOEFL (word mark) in class 9, registered on June 19, 2001;
United States trademark No. 3168050 for TOEFL (word mark) in classes 16, 41 and 42, registered on November 7, 2006;
Indian trademark No. 377189 for TOEFL (word mark) in class 16, registered on June 17, 1981.
Complainant is also the registrant of numerous domains that incorporate the Mark, including , registered on October 24, 1994.
Respondent registered the Domain Name on October 12, 2018. Following a request by Complainant to the hosting provider W, the Domain Name does not currently resolve to an active website. Previously, the Domain Name resolved to a website purporting to offer TOEFL certificates for purchase and Respondent appeared to be operating in India. 5. Parties’ Contentions A. Complainant
Complainant contends that each of the three elements specified in paragraph 4(a) of the UDRP are satisfied in this dispute.
In relation to the first element, Complainant contends that it is the proprietor of the TOEFL trademark, and that the Domain Name is identical and confusingly similar to this trademark. The Domain Name contains the Mark in its entirety and differs from the Mark only by the addition of the generic terms “certificate” and “sale”, and such terms increase the likelihood of confusion because they are related to Complainant’s services.
In relation to the second element, Complainant contends that it has supplied prima facie evidence that Respondent lacks rights or legitimate interests in the Domain Name, and that Respondent has failed to demonstrate such rights. Respondent is not a licensee of or otherwise affiliated with Complainant, nor has Complainant authorized or otherwise condoned or consented to Respondent’s registration of the Domain Name. Respondent is not commonly known by the Domain Name. Respondent’s use of the Domain Name to operate a phishing website is a form of Internet fraud and establishes a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
In relation to the third element, Complainant contends that bad faith registration and use of the Domain Name is established by the following. At the time of registration of the Domain Name, Respondent clearly knew of Complainant’s Mark as evidenced by Respondent’s phishing scheme and offers to sell counterfeit TOEFL certificates. Respondent’s registration and use of the Domain Name was designed to capitalize on the recognition of the TOEFL test. Respondent failed to respond to communications from Complainant; Respondent used privacy protection to shield his identity, and Respondent had provided false identification information when registering the Domain Name. Respondent is holding the Domain Name willfully, in bad faith, and without regard to Complainant’s exclusive rights in the Mark and in the TOEFL iBT trademark. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the reasonable contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) The 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 Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the mark TOEFL, through trademark registrations in at least the United States and India, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name wholly incorporates Complainant’s Mark. The addition of the words “certificate” and “sale” do not prevent a finding of confusing similarity under the first element, and these words may even cause Internet users to believe that the Domain Name is related to Complainant’s services (Educational Testing Service v. Eunho Hwang,WIPO Case No. D2017-0993). It is the consensus view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that the materials in the case file indicate that Respondent is not an agent or an employee of Complainant, nor is Respondent a licensee or a subsidiary thereof. There is no evidence that Respondent is commonly known by the Domain Name. The Domain Name resolves to a hosting provider website and no information is provided on what rights or legitimate interests Respondent may have in the Domain Name. To the contrary, the Domain Name previously resolved to a website offering for sale “Original and Genuine TOEFL Certificate without facing the stress and trauma of the Exam”, which is blatantly fraudulent activity that cannot support a finding of legitimate rights.
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see L’Oreal v. Zhao Jiafei,WIPO Case No. D2015-1458). Respondent has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of fair use of Complainant’s trademark.
The Panel finds that Complainant has established the second element under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith. As previous Panels have found, “the Mark is an unusual acronym. It is inconceivable that the Respondent would stumble willy-nilly on this unique collection of letters that compose the Mark….the most modest level of due diligence before registering [the Domain Name] would have disclosed the Complainant and the Mark.” Educational Testing Service v. John Krzysik,WIPO Case No. D2018-0931 (), citing also Educational Testing Service v. Eunho Hwang,WIPO Case No. D2017-0993 (); Educational Testing Service v. Mohamed Ahmed Aljarwan,WIPO Case No. D2008-1073 ( and ).
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of attracting Internet users seeking information about Complainant’s services. Complainant’s Mark predates the registration of the Domain Name by more than 40 years. There can be no question that Respondent chose the Domain Name in full awareness of this Mark.
Further, the Domain Name previously resolved to an active website that appeared to offer fraudulent TOEFL testing certificates, and even boasted of access to a “backdoor” through which “REAL and REGISTERED TOEFL” testing certificates could be generated, is clear evidence of bad faith use of the Domain Name. Such a website does appear to be a phishing website and such activities manifestly demonstrate bad faith.
Further, Respondent’s concealing of its identity and use of false contact details, and its failure to submit a response or to provide any evidence of actual or contemplated good-faith use, further demonstrate bad faith.
The totality of the circumstances, supported by the abundant evidence supplied by Complainant, demonstrate bad faith wherein Respondent has intentionally attempted to capitalize on Complainant’s trademark rights in pursuit of an illegitimate business enterprise. See WIPO Overview 3.0, section 3.1.
The Panel concludes that Complainant has established the third element under paragraph 4(a)(iii) 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 Complainant.
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: April 8, 2019
Full & Egal Universal Law Academy