The Complainant is Educational Testing Service, United States of America (“United States”), represented by Jones Day, United States.
The Respondent is Jinsoo Yoon, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with DropC 689 LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2019. On April 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 18, 2019, 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 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 May 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2019.
The Center appointed Geert Glas as the sole panelist in this matter on June 6, 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 Educational Testing Service, hereafter referred to as the Complainant, is a non-profit company active in the sector of educational testing and assessment on a world-wide basis.
The Complainant holds a large number of trademark and service mark registrations for the word TOEFL on an international and national level (including in the United States and the Republic of Korea). The United States trademark TOEFL, registration No. 1103427, was registered on October 3, 1978 (classes 16 and 41). The Republic of Korea service mark TOEFL, registration No. 41-3625, was registered on February 25, 1983 (class 41), while the Republic of Korea trademark TOEFL, registration No. 40-101036, was registered on May 23, 1984 (classes 9 and 16). The Complainant moreover has registered several domain names incorporating the TOEFL trademark, including the domain name, which was registered on October 10, 1994.
The Registrar has confirmed to the Center on April 18, 2019 that the Domain Name was registered by the Respondent on January 24, 2019.
It appears from the Complaint that the Domain Name connects to a website where Internet users are invited to make an offer to acquire the Domain Name. On the homepage of this website mention is made prominently that “This domain name is FOR SALE”. It is indicated that the minimum price to be offered to purchase the Domain Name is USD 4,950.
On March 14, 2019 the Complainant sent a cease and desist letter to the Respondent, on the email-address which the Respondent had published his WhoIs. However, the Respondent never replied to this cease and desist letter. 5. Parties’ Contentions A. Complainant
The following is a summary of the Complainant’s contentions.
The Complainant requests that the Domain Name be transferred to it on the following grounds:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i); Rules, paragraph 3(b)(viii) and (b)(ix)(1))
The Complainant contends that the Domain Name is identical and confusingly similar to its TOEFL trademark. With regard to said trademark, the Complainant contends that it has become a very valuable asset to the Complainant’s business, as it is well-known within the educational testing industry. The Complainant supports this position by referring to the number of trademarks, service marks and domain names it owns, and to the number of years it has been using the TOEFL trademark (i.e. since 1964).
The Complainant points out that the Domain Name incorporates the word TOEFL in its entirety. The Complainant stresses that the addition of the generic term “testing” does not decrease the confusing similarity arising from the incorporation of the Complainant’s trademark TOEFL in its entirety. It rather increases the likelihood of confusion, as the Complainant’s core activities exist in providing testing services. In the Complainant’s opinion, this will cause users to think that the Domain Name relates to the TOEFL test or the TOEFL testing services provided by the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name since (i) the Respondent is not a licensee of or otherwise affiliated with the Complainant, and the Complainant has never authorized or otherwise condoned or consented to the Respondent’s registration of the Domain Name; (ii) the Respondent is not now, and to the Complainant’s knowledge never was, commonly known by the Domain Name; and (iii) the use of the word TOEFL in the Domain Name is not necessarily 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, the Respondent has maintained the website as a parked page, merely to offer the Domain Name for sale, and this for a minimum bid of USD 4,950.
The Complainant stresses that the offering of a domain name for sale for an exorbitant price does not create a right or legitimate interest in the Domain Name.
The Complainant therefore deems it has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the Domain Name.
(iii) The Respondent has registered and is using the Domain Name in bad faith (Policy, paragraph 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The Complainant contends that the Respondent had clear knowledge of the Complainant’s TOEFL trademark registrations, which predate the Respondent’s registration of the Domain Name by several decades. The Complainant includes reference to prior WIPO cases where it was established that the TOEFL trademark is well-known. The Complainant refers to the fact that a registration of a well-known trademark as a domain name is a clear indication of bad faith itself.
The Complainant also contends that the Respondent registered the Domain Name solely for the purpose of selling the Domain Name for valuable consideration in excess of the Respondent’s out-of-pocket expenses. In support, the Complainant provides a print screen of the website linked to the Domain Name which displays the message “This domain name is FOR SALE”, which demonstrates the Respondent’s attempt to sell the Domain Name to third parties. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
These issues are discussed in turn as follows. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns numerous TOEFL trademarks and service marks throughout the world and that it owns domain names incorporating the TOEFL trademark. This satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case (see section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant’s rights in the TOEFL trademark predate the registration of the Domain Name by several decades.
Moreover, the Domain Name incorporates the Complainant’s TOEFL trademark in its entirety, which should normally be sufficient as part of a straightforward comparison between a Complainant’s trademark and a disputed domain name to ascertain confusing similarity (see section 1.7 of the WIPO Overview 3.0), and differs from the TOEFL trademark only in that the generic word “testing” has been added. The Panel considers that, in the case at hand, the addition of the generic word “testing” does not prevent a finding of confusing similarity. Also, where the relevant trademark is recognizable within the disputed domain name, as is the case here, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under this first element of paragraph 4(a) of the Policy (see section 1.8 of the WIPO Overview 3.0). Following such comparison of the second level portion of the Domain Name and the Complainant’s trademarks, the Domain Name is confusingly similar to the trademarks of the Complainant.
Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been established. B. Rights or Legitimate Interests
Although the complainant bears the general burden of proof with regard to establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is then generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see e.g. Accor v. Eren Atesmen,WIPO Case No. D2009‑0701; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; Dow Jones & Company, Inc., (First Complainant) and Down Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent),WIPO Case No. D2000-0704; and section 2.1 of the WIPO Overview 3.0).
The Complainant confirms that the Respondent is neither a licensee nor an authorized agent of the Complainant. It appears from the evidence provided by the Complainant that the website to which the Domain Name connects invites Internet users to make an offer to acquire the Domain Name with a minimum bid of USD 4,950. The Panel is of the opinion that those circumstances do indeed constitute a prima facie indication that the Respondent is using the Domain Name in a non bona fide nature.
Finally, the Respondent has failed to respond to the Complaint and has therefore failed to provide any evidence of any rights or legitimate interests it would have in the Domain Name (see, e.g., The Great Eastern Life Assurance Company Limited v. Unasi Inc.,WIPO Case No. D2005-1218; and Stanworth Development Limited v. Mike Morgan (290436),WIPO Case No. D2006-0230).
Given that the Respondent did not reply to the Complainant’s contentions and did not offer any explanation for its use of the Domain Name, the Panel considers that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and has satisfied its burden of proof under the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel then turns to the question of whether the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of a domain name in bad faith. They are presented in the alternative and consist of a non-exhaustive list of indicia of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Previous UDRP panels have ruled that in appropriate circumstances, bad faith is established where a complainant’s trademark has been shown to be well-known or in wide use at the time of registering a domain name (see e.g., Caesars World, Inc. v. Forum LLC.,WIPO Case No. D2005-0517; The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005‑0556).
In line with previous UDRP decisions (see e.g., Educational Testing Service v. Registration Private, Domains By Proxy, LLC / Hikmet Sahiner, Avrimpex,WIPO Case No. D2018-2434 (“The Complainant[’s] language testing services are known with the TOEFL trademark throughout the world . . . The Complainant’s TOEFL trademark has been recognized as a well-known trademark in previous UDRP decisions.”), the Panel finds that the TOEFL trademark has acquired an extensive and worldwide reputation and is to be regarded as being well known. As a result, the Panel finds it highly improbable that the Respondent was not aware of the registered trademarks at the time of the registration of the Domain Name. This conclusion is even strengthened by the Respondent’s addition of the generic word “testing” to the Domain Name. It is highly improbable that the Respondent would combine the word TOEFL with the word “testing”, without knowing that the Complainant provides language testing services.
Furthermore, it must be noted that, even though the Domain Name has only been registered in January 2019, it already was for sale for USD 4,950 prior to March 14, 2019 (i.e. the date of the cease and desist letter of the Complainant). The Panel is of the opinion that this constitutes an additional indication that the Respondent registered the Domain Name for the mere reason of selling the Domain Name for a fee in excess of the Respondent’s out-of-pocket expenses.
These circumstances are demonstrative that the Domain Name was registered in bad faith.
The mere fact that the Domain Name is being offered for sale at a value above the cost of registration is not per se sufficient to ground a finding of bad faith. However, considered together with the facts that (i) the Respondent did not demonstrate or reveal any plans for an intended genuine legitimate use for the Domain Name when contacted by the Complainant, that (ii) the current use of the Domain Name is for pay-per-click links and that (iii) this website prominently displays that the Domain Name is for sale in such way that no one can access the website without noticing this offer, the Panel considers that the Respondent’s use of the Domain name is in bad faith (see e.g., European Broadcasting Union v. Domain 4 sale,WIPO Case No. D2000-0737; The Chase Manhattan Corporation and Robert Fleming Holdings Limited v. Paul Jones,WIPO Case No. D2000-0731).
In addition, the Panel finds that the Domain Name bears no relationship whatsoever to the Respondent’s name or business and in fact has no other meaning except for incorporating the trademark of the Complainant. In this regard, previous UDRP panels have found that where a domain name is so obviously connected with a complainant, its very use by someone with no connection with said complainant suggests opportunistic bad faith (see e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708).
For these reasons the Panel concludes that the Respondent has registered and used the Domain Name in bad faith.
Accordingly, the Panel finds that the third element under paragraph 4(a) of the Policy has been established. 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.
Geert Glas
Sole Panelist
Date: June 20, 2019
Full & Egal Universal Law Academy