The Complainant is Educational Testing Service, United States of America (“United States”), represented by Jones Day, United States.
The Respondent is Mohanad Amin Salhab, Syrian Arab Republic. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Ascio Technologies Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2019. On April 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 18, 2019, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 18, 2019. The Center received an email communication from the Respondent on April 23, 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 the Respondent of the Complaint and the proceedings commenced on April 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2019. Pursuant to paragraph 6 of the Rules, the Center informed the Parties of the commencement of the panel appointment process on May 16, 2019.
The Center appointed Michael D. Cover as the sole panelist in this matter on May 27, 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
The Complainant is a large private non-profit educational testing and assessment organization. The Complainant develops tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for individuals seeking college and graduate school admission, licenses for technical occupations, and teacher certification. The Complainant was formed in 1947.
The Complainant administers and scores more than 50 million tests per year throughout the world. The Complainant is headquartered in Princeton, New Jersey, United States, and has regional offices elsewhere in the United States and subsidiaries in the Netherlands and other countries and maintains a network of local test administrators and testing centres throughout the world.
The tests developed and administered by the Complainant include the TOEFL test, the TOEIC test and the PRAXIS test. The Complainant has developed products and services that support, for example, the TOEFL test, including publications, software, and online writing exercises, which are sold through the Complainant’s website and the websites of the Complainant’s authorized business partner.
The Complainant is the proprietor of registered trademarks for ETS in the United States and many countries throughout the world, the earliest of which in the United States goes back to 1951 and claims use since 1949. The Complainant and its business partners provide goods and services through a number of websites, including those at , , and .
All that is known about the Respondent is that it is described as “Unknown”, organization “abjadyat”, with a country code address as “SY”, which was later updated to Mohanad Amin Salhab, following the receipt of further information by the Center from the Registrar. The Complainant had submitted a complaint to the registrar of the Disputed Domain Name on March 18, 2019, which resulted in what it describes as the infringing website being suspended. The Complainant was unable at that time to obtain contact information for the Respondent from the registrar. The communication from the Respondent of April 23, 2019, to the Center was to the effect that “I decide to cancel my complaint for this case”.
The Disputed Domain Name was registered on April 18, 2018, and a website was operated therefrom which was identical to that operated by the Complainant at . Screenshots of the relevant website is at Annex 9 to the Complaint. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Complainant states that its ETS trademark is unique and proprietary to the Complainant and represents the high quality of goods and services provided by the Complainant. The Complainant states that the ETS trademark has become a very valuable asset of the Complainant and that the Complainant has spent decades and a considerable amount of effort and money developing and promoting the goods and services that are marketed and sold under the ETS trademark. The Complainant submits that the ETS trademark has become a unique identifier of the goods and services emanating from the Complainant and indeed
well-known.
The Complainant notes that previous panels have consistently remarked on the fame and distinctiveness of the ETS trademark and have also found that it was a unlikely that a respondent could have selected the relevant domain names without knowing of the reputation of the ETS trademarks.
The Complainant submits that the use of the website connected with the Disputed Domain Name indicates that this website was intended for phishing purposes. The Complainant also notes that this website asked the users of that website to provide login information, such as their name, address, and email.
The Complainant notes that the Disputed Domain Name incorporates the Complainant’s ETS trademark in its entirety and submits that it has been well-established by previous panel decisions that a domain name incorporating a distinctive trademark in its entirety creates sufficient similarity between the trademark and the domain name so as to render it confusingly similar. The Complainant submits that, given the fame of the ETS trademark and the fact that Disputed Domain Name incorporates the ETS trademark in its entirety, consumers are likely to believe that that Disputed Domain Name is affiliated with, authorized or endorsed by the Complainant.
The Complainant continues that the addition of a word, such as “contact”, to the ETS trademark does not decrease the confusing similarity arising from the incorporation of the ETS trademark in its entirety into the Disputed Domain Name. The Complainant also noted that the Respondent operated the phishing website through the Disputed Domain Name and submits that the registration of the Disputed Domain Name was clearly intended to and did actually cause confusion regarding whether the Disputed Domain Name was the Complainant’s official website.
The Complainant concludes that the Disputed Domain Name is clearly identical and confusingly similar to the Complainant’s ETS trademark.
Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant submits that, as noted in previous panel decisions, the Complainant only needs to establish a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in order to shift the burden of proof on to the Respondent.
The Complainant continues that the Respondent is not a licensee of or otherwise affiliated with the Complainant and that the Complainant has not authorized or consented to or condoned the Respondent’s registration of the Disputed Domain Name. The Complainant submits that this alone is sufficient for a finding that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant further states that the Respondent was not and, to the Complainant’s knowledge, never was commonly-known by the Disputed Domain Name, which supports a finding that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant also states that the use of the ETS trademark in the Disputed Domain Name is not necessary for any legitimate noncommercial or fair use purpose. The Complainant also notes that, rather than using the Disputed Domain Name in connection with a bona fide offering of goods or services, the Respondent has used to the Disputed Domain Name to create a website that is an exact copy of the Complainant’s official website and sets this out in Annexes 9 and 10 to the Complaint.
The Complainant concludes that it has made a prima facie case to have satisfied paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
The Complainant states that the Respondent registered, used, and is holding the Disputed Domain Name willfully, in bad faith, and in complete disregard of the Complainant’s exclusive rights to use the Complainant’s ETS trademark.
The Complainant submits that the Respondent clearly knew of the Complainant’s well-known ETS trademark at the time the Respondent registered and used the Disputed Domain Name. The Complainant also notes that the Respondent’s registration and use of the Disputed Domain Name is clearly designed to misdirect consumers in search of the Complainant’s official website and mentions again the phishing website and concludes that the Respondent is clearly holding the Disputed Domain Name willfully, in bad faith, and in complete disregard of the Complainant’s exclusive rights to use its the ETS trademark.
The Remedy requested by the Complainant
The Complainant requests that the Panel decide that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not respond to the Complaint apart from the inconclusive message to the Center of April 23, 2019. 6. Discussion and Findings
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established registered in it ETS trademark. The ETS trademark has been registered since at least as early as 1951 and extensive use of the ETS trademark has been made by the Complainant since at least as early as 1949.
The Panel also accepts that the Disputed Domain Name is confusingly similar to the Complainant’s ETS trademark, in which it has rights. It is well established that the addition of the generic Top-Level Domain “.org” does not avoid a finding that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, in this case the Complainant’s ETS trademark. The Disputed Domain Name reproduces the Complainant’s ETS trademark in full. It is also well-established that the addition of non-distinctive terms, such as “contact”, as in this case, does not avoid a finding of confusing similarity.
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ETS trademark, in which it has rights, and that paragraph 4(a)(i) of the Policy has been met. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel accepts that the Complainant has not authorized or licensed the Respondent to use the ETS trademark and the Complainant has made out a prima facie case to this effect, which then places the burden on the Respondent, which it has failed to satisfy or indeed meet in any way.
The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of good or services, that it has been commonly-known by the Disputed Domain Name, or that it has been making legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the ETS trademark of the Complainant. In fact, such use as has been made of the Disputed Domain Name has been in relation to a website that mimics the official website of the Complainant and constitutes what is sometimes called a phishing exercise.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy has been met. C. Registered and Used in Bad Faith
The Panel accepts that the Disputed Domain Name has been registered and used in bad faith. The use of the Disputed Domain Name in connection with a phishing website that imitates the official website of the Complainant further supports a finding of bad faith registration and use.
The Policy, paragraph 4(b), sets out a non-limiting list of circumstances which shall be evidence of the registration and use of domain name in bad faith. In this instance, it is a reasonable inference that the Respondent was aware of the Complainant’s rights in its ETS trademark. The use of the phishing website constitutes the intention of attempting to attract, for commercial gain, Internet users to an online location, by creating a likelihood of confusion with the Complainant’s ETS trademark as to the source or affiliation of a service on the Respondent’s website.
The Panel therefore finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) has been met. 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 the Complainant.
Michael D. Cover
Sole Panelist
Date: June 4, 2019
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