Complainant is Educational Testing Service, United States of America (“United States”), represented by Jones Day, United States.
Respondent is Mark Roser, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2020. On January 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2020, 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 January 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 21, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 27, 2020. 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 company organized under the laws of the United States that is active worldwide in the educational testing and assessment business. - Word Mark TOEFL, India trademark, registration number 377189 dated June 17, 1981 in class 16. Moreover, Complainant has demonstrated to own various domain names including its brand TOEFL, e.g., the domain name Respondent, according to the WhoIs information for the disputed domain name, is a resident of India who registered the disputed domain name on August 29, 2019. By the time of the rendering of this decision, the disputed domain name does not resolve to any active website on the Internet. Complainant, however, has evidenced that, at some point before the filing of the Complaint, the disputed domain name redirected to a website pretending to derive from Complainant and bearing Complainant’s official “ETS TOEFL iBT” logo, while offering to sell “real valid and registered TOEFL certificate […] without exam”. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends to be the world’s largest private non-profit educational testing and assessment organization, and the leader in developing and administering tests for measuring skills, academic aptitude and achievement, among other services; colleges and universities in the United States and other countries worldwide rely on the so-called “TOEFL” (abbreviation for “Test of English as a Foreign Language”) and related test scores from international applicants to assist in determining the admission of foreign students. The TOEFL trademark, therefore, is extremely well-known within the educational testing industry in the United States and throughout the world. Complainant submits that the disputed domain name is confusingly similar to Complainant’s TOEFL trademark as it incorporates the latter in its entirety with the addition of the generic or descriptive terms “certificate” and “online” not decreasing such confusing similarity, especially given that a prominent feature of Complainant’s business is its online language proficiency testing service and certification process. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name, since (1) Respondent is not a licensee of or otherwise affiliated with Complainant who has never authorized or otherwise condoned or consented to Respondent’s registration of the disputed domain name, and (2) operating a website which purports to sell similar TOEFL products and services does not create rights or legitimate interests in the disputed domain name. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith, since (1) it must be assumed that Respondent, by the time of the registration and initial use of the disputed domain name, clearly knew of Complainant’s well-known TOEFL trademark which has been in use for more than 50 years, and (2) Respondent flagrantly used the TOEFL trademark to attract consumers to its website for commercial profit. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name is confusingly similar to the TOEFL trademark in which Complainant has rights. The disputed domain name incorporates Complainant’s TOEFL trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of another term (whether, e.g.,descriptive, meaningless, or otherwise) to a trademark in a domain name is normally insufficient, by itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive terms “certificate” and “online” does not dispel the confusing similarity arising from the incorporation of Complainant’s TOEFL trademark in the disputed domain name. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has not been authorized to use Complainant’s TOEFL trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name, and Respondent does not appear to have any trademark rights associated with the term “TOEFL” (being the abbreviation for “Test of English as a Foreign Language”) on its own. To the contrary, Respondent apparently set up a website pretending to derive from Complainant and bearing Complainant’s official “ETS TOEFL iBT” logo, while offering to sell “real valid and registered TOEFL certificate […] without exam”. Making such use of the disputed domain name neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of the Policy. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has not submitted a Response, it has not met that burden. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. Redirecting the disputed domain name, which is confusingly similar to Complainant’s TOEFL trademark, to a website that pretends to derive from Complainant, and which bears Complainant’s official “ETS TOEFL iBT” logo, while offering to sell “real valid and registered TOEFL certificate […] without exam” without any permission or other authorization by Complainant to do so, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s TOEFL trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In connection with this finding, it also carries weight in the eyes of the Panel that Respondent provided false or incomplete contact information in the WhoIs register for the disputed domain name as supported by email correspondence between the Center and the postal courier DHL indicating that the Written Notice of the Notification of Complaint dated January 30, 2020, could not be delivered. These facts at least throw a light on Respondent’s behavior which supports the Panel’s bad faith finding (see WIPO Overview 3.0, section 3.2.1). 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 Stephanie G. Hartung
Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its brand TOEFL, inter alia, the following with protection for the territory of India:
Sole Panelist
Date: March 12, 2020
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