The Complainant is Educational Testing Service, United States of America (“United States”), represented by Jones Day, United States.
The Respondent is Ade Hidayat, Indonesia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2019. On October 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 22, 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 November 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2019. The Center appointed Nick J. Gardner as the sole panelist in this matter on December 9, 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 an educational testing and assessment service. The Complainant was founded in 1947 and is the largest not-for-profit educational research and measurement institution in the world. It specializes in developing and administering tests for measuring skills and aptitude for admission to educational institutions. The Complainant develops, administers and scores more than 50 million tests per year, in more than 180 countries and 10,000 locations worldwide. Among the Complainant’s tests is a “TOEFL” examination designed to measure of the English proficiency of persons whose native language is not English. Continuously since 1964, the Complainant has been administering this test under the TOEFL trademark, which has become well-known worldwide in respect of such tests. Since 1964, more than 35 million students have taken the TOEFL test, and over 10,000 institutions in more than 150 countries worldwide use scores from the test. Globally, the TOEFL test is available for test takers in 165 countries at more than 4,500 testing centers. The Complainant has 44 regional testing locations in Indonesia, where the Respondent is located. The term TOEFL is registered as a trademark by the Complainant in many jurisdictions including for example United States trademark 1103427 registered on October 3,1978 and Indonesian trademark number IDM000159745 registered on April 22, 2008. These trademarks are referred to collectively in this Decision as the TOEFL trademark. The Complainant also owns, operates, and utilizes many domain names that incorporate the term TOEFL including The Respondent registered the Disputed Domain Name on February 19, 2015. The Disputed Domain Name resolves to a website which offers various services and courses to students who are studying in order to undertake one of the Complainant’s TOEFL examinations (the “Respondent’s Website”). Following correspondence from the Complainant a disclaimer was added to the Respondent’s Website which states “Disclaimer: TOEFL® is a registered trademark of Educational Testing Service (ETS). This product is not endorsed or approved by ETS”. 5. Parties’ Contentions A. Complainant The Complainant made the following submissions in the Complaint. The Disputed Domain Name is confusingly similar to the TOEFL trademark. It comprises the TOEFL trademark and the dictionary word “genius”. The Respondent has no rights in respect of the Disputed Domain Name and has not been licensed or authorised by the Complainant to use the TOEFL trademark. The Respondent has registered and used the Disputed Domain Name in bad faith to capitalise on the goodwill in the TOEFL trademark and to intentionally attract users, for commercial gain, to the Respondent’s Website by creating confusion with the TOEFL trademark. The Complainant advances various arguments here, which are discussed below. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Preliminary Matters The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). Substantive Matters To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of the Disputed Domain Name that: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has registered trademark rights in the TOEFL trademark. The addition of the dictionary word “genius” does not avoid a finding of confusing similarity with this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000‑0662). It is established that, where a mark is recognizable in a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694). It is also established that the addition of a descriptive or geographic term (such as here “genius”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006‑0189). It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429. Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the TOEFL trademark. The Complainant has prior rights in the TOEFL trademark which precedes the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith The Respondent has clearly sought to use the Complainant’s TOEFL trademark as part of the Disputed Domain Name in order to attract students and to sell them material. It must have deliberately chosen the TOEFL trademark for this purpose because of its association with the Complainant. It seems likely to the Panel that users will be attracted because the Disputed Domain Name suggests that the website to which it is linked is that of the Complainant or is authorised or approved by the Complainant. The Respondent’s actions are therefore within paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”. The Panel does not consider that the disclaimer on the Respondent’s Website alters this analysis (assuming in the Respondent’s favour that it is the version of the Respondent’s Website with this disclaimer which is to be considered). In this regard the Panel adopts the consensus view set out in section 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states as follows: “3.7 How does a disclaimer on the webpage to which a disputed domain name resolves impact a panel’s assessment of bad faith? In cases where the respondent appears to otherwise have a right or legitimate interest in a disputed domain name, a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith. For example, where a respondent is legitimately providing goods or services related to the complainant’s mark only (see Oki Data and its progeny discussed at 2.8), the presence of a clear and sufficiently prominent disclaimer can support a finding that the respondent has undertaken reasonable steps to avoid unfairly passing itself off as related to the complainant, or to otherwise confuse users. On the other hand, where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.” The Panel considers in the present case the overall circumstances of the case point to the Respondent’s bad faith. In addition, the Respondent has been given an opportunity to provide any reasonable explanation it may have as to its activities. Again, based on the evidence provided by the Complainant, the burden of production in this (third) element is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith registration and use of the Disputed Domain Name. In the light of the Panel’s findings above it does not need to consider further arguments the Complainant advances based on correspondence between the parties. The Panel accordingly finds that the Disputed Domain Name was both registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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, Nick J. Gardner
Sole Panelist
Date: December 30, 2019
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