The Complainants are the British Council, United Kingdom (“UK”), The Chancellor, Masters and Scholars of the University of Cambridge, UK, IELTS Australia Pty Limited, Australia, represented by Mills & Reeve LLP, UK.
The Respondent is Domains By Proxy, LLC, United States of America / Nonny Nze, IELTS Medical Ltd, UK.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2021. On September 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2021, 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 Complainants on September 24, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. On September 24, 2021, the Center received an informal communication from the Respondent. The Complainants filed an amendment to the Complaint on September 27, 2021.
The Center verified that the Complaint together with the amendment to 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 September 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2021. The Response was filed with the Center on October 18, 2021.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 14, 2021. 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 BackgroundThe Complainants are (1) the British Council, a company incorporated by Royal Charter and registered as a charity in both England and Wales and in Scotland, (2) The Chancellor, Masters and Scholars of the University of Cambridge (generally known as the University of Cambridge), a common law corporation by prescription, confirmed by the Oxford and Cambridge Act 1571, and (3) IELTS Australia Pty Limited, an Australian company. The Complainants seek consolidation of their Complaint on the basis of a common grievance against the Respondent.
The Complainants provide the International English Language Testing System which was developed in 1980 and is generally known and referred to as “IELTS”. It has been operated jointly by the Complainants since 1989. The results of the tests are accepted by multiple academic institutions worldwide, and by the UK government, as proof of English language ability. The Complainants promote the test at their website “www.ielts.org”.
The second Complainant, the University of Cambridge, is the owner of the UK registered trademark no. 2360300 for the word mark IELTS, registered on March 25, 2005 in class 41 (educational services, including testing of English language skills). It is also the owner of the European Union registered trademark no. 1884253 for the word mark IELTS, registered on November 29, 2001 in class 41 (educational services including electronic publication of training, teaching and examination materials). The Panel notes that on December 31, 2020 said mark was converted into a UK registered trademark, no. 901884253, having the same registration date as the original, as a consequence of the UK leaving the European Union. The Complainants are the joint registered proprietors of the UK registered trademark no. 3517510 for the word mark IELTS, registered on December 25, 2020 in classes 9 (inter alia, educational computer software and downloadable materials) and 16 (printed matter including educational and teaching materials).
The disputed domain name was registered on November 25, 2016. The Respondent is a UK limited company incorporated in England and Wales on September 5, 2016. The Respondent operates a business from a website associated with the domain name
The website associated with the disputed domain name is titled “IELTS MEDICAL MEDICS’ CENTRE” and states “[…] Below you will find content and materials that you can access - for free - to aid your practice and learning. All of the material in the Medics’ Centre is for use in the Academic version of the IELTS exam.” A series of folder images are provided below, the first five of which are titled “IELTS Reading”, “IELTS Listening”, “IELTS Writing”, “IELTS Speaking” and “IELTS Bonus Materials”. The remainder of the folders which have names appear to relate to a different examination or qualification, named the “OET”.
On December 9, 2020, the Respondent filed an application for a UK trademark under no. 3566004 for the word mark IELTS MEDICAL. Said application has been opposed by the Complainants and the opposition is currently pending trial. The Respondent states that within those proceedings, it has submitted a challenge to the second Complainant’s trademark registration no. 2360300 of 2005 on the grounds of lack of use. It asserts that all other trademarks referred to by the Complainants are registrations that took place after the Respondent began trading, and thus appears to have overlooked UK registered trademark no. 901884253 described above.
The Complainants note that they have filed a complaint under the requisite dispute resolution policy regarding
The Complainants contend as follows:
Identical or confusingly similar
The disputed domain name fully incorporates the Complainants’ IELTS mark. The business of the Respondent includes the provision of courses and training of healthcare professionals, including English language testing and relative goods and services. There is no relationship between the Parties.
The only difference between the disputed domain name and the Complainants’ mark is the addition of the word “medical” after the word “ielts” in the disputed domain name. This is a descriptive qualifier, such that the dominant and distinctive element of the disputed domain name is “ielts”. The manner of use of the disputed domain name leads to a likelihood of confusion and association on the part of the public. The Respondent is passing its business and/or services off as those of the Complainants. Misrepresentations by the Respondent associate the Complainants with the Respondent’s business, over which the Complainants have no control.
Rights or legitimate interests
The Complainants have never instructed or authorized any person to register or use the disputed domain name or associated website. The Respondent’s use of the Complainants’ IELTS mark is intended to deceive and cause confusion, and to take unfair advantage of the reputation of said mark by misleading consumers into the belief that the Respondent is a division or closely associated with the Complainants but specializing in the medical field and that the related goods and services are authorized by the Complainants. The disputed domain name is being used for passing off and not in connection with a bona fide offering of goods and services. It is being used for commercial gain to intentionally mislead and divert consumers. It was registered long after the Complainants’ rights first accrued and, in light of the reference to the Complainants’ exam on the related website, was registered in the full knowledge of the Complainants’ rights in the IELTS mark.
Registered and used in bad faith
The Respondent is infringing the Complainants’ intellectual property rights. The Respondent will have been aware of the Complainants’ activities under its mark when it registered the disputed domain name and should have been aware that there were third party rights in such mark. The disputed domain name is being used to take unfair advantage of and free-ride upon the goodwill and reputation attached to the Complainants’ mark. The Respondent is creating a likelihood of confusion between the disputed domain name and the Complainants’ marks as to source, sponsorship, affiliation and/or endorsement of the goods and services offered using the disputed domain name. The disputed domain name has been intentionally used to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainants’ marks as to the source, affiliation, or endorsement of said website.
B. RespondentThe Respondent contends as follows:
General
The Respondent is contesting both the present Complaint and a complaint in another forum related to
Identical or confusingly similar
The disputed domain name is not identical to the Complainants’ mark. Of the two words, the word “medical” is the dominant element and has no counterpart in said mark. There are some two hundred other domain names with the word “ielts” in their name, suggesting scope for co-existence. The Respondent put this point to the Complainants in a pre-action letter of January 18, 2021.
The word “IELTS” is an acronym for an English language examination. It is not in dispute that the Complainants have acquired goodwill and that their test is one of only two accepted by the UK’s medical councils as proof of English language proficiency. The Respondent provides training for healthcare professionals including English language courses. The commercial interests of the Parties are dissimilar. The Respondent’s website is not confusingly similar to that of the Complainants. The header and footer of every page on the Respondent’s site clearly states the Respondent’s name and address, offsetting any risk of confusing similarity and customer diversion. The Complainants would also suggest that many other websites containing “ielts” are likely to mislead consumers and this is unconvincing. The Complainants cannot offer any evidence that the Respondent has published any claim to represent its goods or services as those of the Complainants.
The Respondent uses the disputed domain name as an exact match for its trading name and is a duly registered trading business. To succeed in a claim for passing off, the Complainants must prove misrepresentation and damage to goodwill. The Complainants’ assertions regarding passing off are therefore denied.
Rights and legitimate interests
The Respondent began trading as “IELTS Medical” in 2016, which was available as a domain name and company name. It has traded continuously since its incorporation as evidenced by its published accounts. It has built an extensive catalogue of goods and services. Before any notice of the dispute, there is evidence of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods and services, as found on the related website. The disputed domain name was acquired as a noncommercial use platform for learners to use to train and, since 2016, the Respondent has hosted an entirely bespoke learning platform there. The Respondent has been commonly known by both its name and the disputed domain name has acquired rights through this period.
Registered and used in bad faith
While it is true that the Complainants’ trademark was granted some 12 years before the Respondent began trading in 2016, the Respondent was not aware of the extent of the Complainants’ activities under such name. It is an acronym for a test and the Respondent had thought the testing system was the main purpose of the Complainants’ website. The Respondent denies that it started trading for no reason other than to take unfair advantage or free-ride upon the Complainants’ goodwill and reputation. This is not true of the Respondent or most of the hundreds of other websites featuring “ielts” in their domain names. Part of the Respondent’s trading activities is providing training courses for the Complainants’ exam because it is accepted by the UK medical registrars as proof of English language proficiency. The Respondent offers a full-service training centre in Central London, yet the Complaint suggests its website is dedicated to the Complainants. The nature of the Respondent’s business has been misrepresented to the Panel by the Complainants. The disputed domain name was not registered in connection with any of the circumstances described in paragraph 4(b) of the Policy. During the pandemic, the Respondent has created an innovation to automate distance learning to shield healthcare professionals while they train and sought to register its name as a trademark for this purpose. This is further evidence of bona fide use. The disputed domain name is the Respondent’s name, a fact that at the time of its incorporation would have been a legitimate defence to the Complainants’ allegations of trademark infringement.
Reverse Domain Name Hijacking
This Complaint should be considered as a case of an attempt at Reverse Domain Name Hijacking and harassment by the Complainants. The Respondent has invested significantly in the marketing of its domain names and has achieved first-page ranking on search engines. The Complainants seek to hijack the Respondent’s websites and make use of search engine optimization that they did not earn. The Complainants have threatened the Respondent with proceedings under domain name dispute resolution policies and litigation against the Respondent and its proprietor in her individual capacity. The second Complainant was criticized by the panel for similar conduct in an earlier case under the Policy, namely The Chancellor, Masters and Scholars of the University of Cambridge v. Kirkland Holdings LLC,WIPO Case No. D2015-1278.
6. Discussion and FindingsTo succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(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. Preliminary Issue: Consolidation of ComplainantsThe Complaint has been filed by multiple Complainants. Section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides inter alia as follows:
“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”
The Panel is satisfied that the Complainants share rights in the cited trademarks and that they have been collaborating for a reasonable period to promote the English language examination which forms the basis of said trademark. The Complaint describes the Complainants’ common grievance against the Respondent, who has registered a domain name allegedly incorporating said mark. It appears to the Panel that, given the Complainants’ mutual interests in the IELTS mark, the Respondent’s conduct would affect the Complainants in a similar fashion. Furthermore, given that the present Complaint combines together the Complainants’ individual registered rights in the IELTS mark and their grievance against the Respondent in a single administrative proceeding, the Panel considers that it would be procedurally efficient to permit the consolidation. Likewise, this seems to the panel to be an equitable course of action from the Respondent’s perspective as it means that the Respondent only requires to answer a single Complaint in respect of the Complainants’ combined grievances. The Panel has not identified any prejudice which might be suffered by the Respondent in the event of consolidation.
In all of these circumstances, the Panel considers that it is equitable and procedurally efficient to permit consolidation of the Complainants’ respective complaints in this case.
B. Preliminary Issue: Other Legal ProceedingsParagraph 18(a) of the Rules states that in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. The Respondent has noted that the Parties are engaged in active trademark opposition proceedings, which could be described as legal proceedings within the meaning of paragraph 18(a) of the Rules. However, as far as the Panel can tell, such opposition proceedings do not appear to be “in respect of a domain name dispute that is the subject of the complaint” and, in any event, neither of the Parties has suggested that the Panel should exercise its discretion either to suspend or terminate the administrative proceeding for this reason.
In all of these circumstances, the Panel will not suspend or terminate the administrative proceeding and will proceed to a Decision. Such Decision should not be regarded by either of the Parties as having any influence or bearing on the pending trademark opposition proceedings.
C. Identical or Confusingly SimilarThe first element analysis under the Policy is a two-step process. First, the Complainants must demonstrate that they have UDRP-relevant rights in a trademark. Secondly, the disputed domain name is compared with such trademark, typically on a straightforward side-by-side basis, in which the generic Top-Level Domain (“gTLD”) of the disputed domain name concerned (in this case “.org”) is usually disregarded as being required for technical reasons only. Confusing similarity may be found if the trademark is recognizable within the disputed domain name concerned, whether or not accompanied by other terms.
Before proceeding with the analysis, the Panel notes that both of the Parties’ submissions were concerned with the type of confusing similarity test more commonly seen in relation to trademark applications and oppositions, incorporating, for example, considerations of the Parties’ respective goods and services, and also containing allegations and counter-allegations regarding passing off. The analysis under the Policy is not typically addressed in a similar way to that proposed by the Parties’ submissions. The test here is a relatively low threshold intended to establish the Complainants’ standing, and whether the Complainants have a bona fide basis for the Complaint (see The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743).
The Panel is satisfied that the Complainants have UDRP-relevant rights in their various IELTS registered marks. It does not matter that one of these might be subject to challenge in the pending trademark opposition proceedings. For present purposes, the mark concerned is ex facie valid and, in any event, even if the opposition proceedings led to a revocation of such mark, the Complainants still have other registered IELTS marks on which they rely for the purposes of the administrative proceeding. It is not necessary for the first element analysis that any such mark pre-date the registration date of the disputed domain name.
Comparing the Second-Level of the disputed domain name to the IELTS mark on the basis described above, it may be seen that the first five letters are alphabetically identical to such mark and have been coupled with the term “medical”. The Panel is satisfied that this additional term is of no particular distinguishing value and that the Complainants’ mark remains fully recognizable in the disputed domain name (see section 1.8 of the WIPO Overview 3.0 on the topic of the addition of other terms to a trademark within the domain name under consideration). On this basis, the Respondent’s submission that the term “medical” is dominant in the disputed domain name and therefore that the disputed domain name is not confusingly similar to the Complainant’s mark falls to be rejected generally (the term “medical” obviously modifying that which precedes it) and in particular for the purposes of the first element analysis.
In all of the above circumstances, the Panel finds that the Complainants have carried their burden with regard to paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainants have established the requisite prima facie case based on their submissions that the Complainants have given no permission for the use of the IELTS mark in the disputed domain name, that the disputed domain name is being used to pass off the Respondent’s goods and services as those of the Complainants, and that the reference to the Complainants’ examination on the website associated with the disputed domain name indicates that the disputed domain name was registered in the full knowledge of the Complainants’ rights.
In the above circumstances, the burden of production shifts to the Respondent to bring forward evidence of any rights or legitimate interests which it might have in the disputed domain name. The bulk of the Respondent’s case on this topic relates to paragraph 4(c)(i) of the Policy, namely that before any notice to the Respondent of the dispute, it has prepared to use, and has used, the disputed domain name in connection with a bona fide offering of goods and services. Secondly, the Respondent asserts that it has been commonly known as the disputed domain name in terms of paragraph 4(c)(ii) of the Policy. Thirdly, the Respondent appears to suggest that in effect, to the extent that it is using the Complainant’s mark, this constitutes fair use within the meaning of paragraph 4(c)(iii) the Policy.
In the context of paragraph 4(c)(i) of the Policy, whether the Respondent’s offering of goods and services may be considered bona fide depends largely upon whether the Respondent had prior knowledge of the Complainants and/or their rights and intended to free-ride upon the goodwill generated in the Complainants’ mark or whether the Respondent came by its name independently of such mark and without any such intent. The facts and circumstances of this case clearly indicate that the Respondent had prior knowledge of the Complainants and their rights in the IELTS trademark. The Respondent did not select the term “IELTS” in the disputed domain name for any alternative reason or, at least, it has advanced no such explanation. The mentions of the Complainants’ examination on the website associated with the disputed domain name, such as, for example, “for use in the Academic version of the IELTS exam” indicate that the Respondent is aware of the Complainants’ mark. The reproduction of such mark in the disputed domain name goes beyond mere descriptive or referential use in the Panel’s opinion. The choice of the Complainant’s mark as the first element in the disputed domain name either impersonates or suggests sponsorship or endorsement by the Complainant (see section 2.5.1 of the WIPO Overview 3.0: “Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”) The fact that the word “medical” is included merely serves to qualify the Complainants’ mark only to a limited extent, and in fact creates an association that this is a subset of courses offered under the main (“house”) mark. It does not change the meaning or appearance of the Complainants’ mark. It is plainly not the dominant term, as the Respondent asserts. In the Panel’s opinion, the additional word suggests not that the Respondent is an unrelated entity but rather that the Complainants have moved into medical training or have provided a specific medical resource relative to their IELTS examination.
The Respondent places some emphasis on the fact that the disputed domain name matches its duly registered company name and that it has traded as such for some five years. This is relevant not only to its case under paragraph 4(c)(i) of the Policy but also to its suggestion that it has been commonly known by the disputed domain name in terms of paragraph 4(c)(ii) of the Policy. However, the mere existence of a registered company name is not generally considered to confer rights and legitimate interests upon a respondent under the Policy. Furthermore, for paragraph 4(c)(ii) of the Policy to apply, the Respondent must have been commonly known by the disputed domain name as at the date of its registration, and there is no evidence of this on the present record (on both of these topics, see the discussion relating to company names and paragraph 4(c)(ii) of the Policy in Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672). Importantly, there is no suggestion on the present record that the Respondent has been known as “IELTS” prior to its awareness of the Complainants’ rights (or, at least, its knowledge of the Complainants’ IELTS examination). Nor does the fact that the Respondent’s company name might have avoided detection by the Complainants for the first years of its trading automatically confer any rights and legitimate interests upon the Respondent. There is no suggestion of any acquiescence on the Complainants’ part to the Respondent trading under the Complainants’ mark by its use of the disputed domain name, neither does the Respondent make any such assertion in the Response.
What really matters on this topic, in the Panel’s opinion, is not the fact that the Respondent’s company name is in the terms described but rather why, and with what intent, the Respondent selected this particular name for use in association with a business concerned with training medical professionals. The Response is largely silent on that point, noting only that the name was available when the Respondent came to register it as a company and domain name. The Respondent does not suggest, for example, that the “IELTS” in its name and the disputed domain name stands for any particular acronym, nor, even if it had done, would this have been particularly credible bearing in mind the Respondent’s evident prior knowledge of the Complainants’ usage of the term as demonstrated by the direct references to the IELTS examination on the Respondent’s website.
Turning to the circumstances beyond the disputed domain name itself (see section 2.5.2 and 2.5.3 of the WIPO Overview 3.0) the Panel notes that the Respondent’s website offers its own free training materials for both the IELTS examination and for an alternative test, the OET. It is not clear from said site that it is not operated by or on behalf of the Complainants and no links are provided to the Complainants’ site. There is no explanatory text as to the Parties’ lack of affiliation (albeit that a disclaimer does appear within the text of the “English Department” section of the Respondent’s other website (using the domain name
As noted above, the Respondent also appears to suggest that it is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers (within the meaning of paragraph 4(c)(iii) of the Policy). The Respondent focuses on the fact that it provides complimentary training resources on the website associated with the disputed domain name. However, the site states that it is “Brought to you by www.ieltsmedical.co.uk” and bears further hyperlinks to the Respondent’s social media presence. In other words, the website associated with the disputed domain name is clearly being used to promote the Respondent’s other website, which could not be described as non-commercial on any view. It is evident from the Respondent’s use of the disputed domain name that its ultimate intent is for commercial gain and it cannot avail itself of this paragraph of the Policy.
The Panel notes in passing that the Respondent does not directly claim to be making nominative fair use of the Complainant’s mark (see section 2.8 of the WIPO Overview 3.0), as would, for example, a service provider using a domain name containing a complainant’s trademark in order to offer sales or repairs related to the complainant’s goods and services. On the contrary, the Respondent is at pains to assert that its goods and services are, for the most part, entirely unrelated to and distinguishable from those in respect of which the Complainant’s mark is registered. It is not therefore necessary for the Panel to examine the Respondent’s activities in line with the “Oki Data test” (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 and section 2.8.1 of the WIPO Overview 3.0).
The Respondent notes that part of its trading activities are to provide training courses for the Complainants’ examination because this is accepted by UK medical registrars as proof of English language proficiency. While this might certainly justify descriptive references to the Complainants’ examination within the content of the website associated with the disputed domain name, as noted above, it does not permit the Respondent to style itself as “IELTS” in the disputed domain name itself, whether or not qualified by a term such as “medical” (which as said above, would tend to have the opposite effect and would create a misimpression of affiliation). The Panel considers that in doing so, the Respondent is intentionally deploying the Complainants’ trademark as a source identifier, and is thereby making a representation that it is somehow authorized or endorsed by the Complainants, or indeed that it is a division of one or other of the Complainants specializing in the medical education field. In the Panel’s opinion this takes unfair advantage of the Complainants’ mark and risks substantial confusion. It could not be regarded as nominative fair use of said mark.
In all of these circumstances, the Panel finds that the Respondent has failed to rebut the Complainants’ prima facie case and that the Complainants have carried their burden in terms of paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
As a general rule, for registration and use in bad faith to be made out, a complainant must show that a respondent registered the domain name concerned in the knowledge of the complainant and/or its rights and with intent to target these. In the present matter, the Panel has found that the Respondent more probably than not registered the disputed domain name in the knowledge of the Complainants’ rights in the IELTS mark. The Respondent has been unable to offer any alternative explanation for its adoption of the initials “IELTS” in its name and in the disputed domain name, nor, for the reasons set out above, would any such explanation be sufficiently credible for the Panel to accept it. The Respondent suggests that third parties are using the term in similar domain names. Other than listing several such domain names in the Response and showing that these appear in a “Google” search, the Respondent does not provide anything in the way of evidence of their use. In any event, the existence of third party domain names, whether or not they or their use infringe the Complainants’ rights, would not excuse the Respondent’s registration and use of the disputed domain name, and it is only the disputed domain name itself with which the present proceeding is concerned.
As far as the Panel can determine based upon all of the evidence before it, and on the balance of probabilities, the Respondent selected the Complainants’ mark in the disputed domain name with a view to benefitting from an association with said mark, via a likelihood of confusion with such mark as to sponsorship, affiliation, or endorsement of its website. No alternative indication or explanation for its selection of the term “IELTS” has been put forward by the Respondent which could have been accepted by the Panel. As far as the Panel is concerned, therefore, the Respondent’s registration and use of the disputed domain name falls foul of paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
To the extent that the Respondent considers that it has a wider trademark dispute with the Complainants, this proceeding under the Policy does not prevent the Respondent from seeking redress in a court of competent jurisdiction (see paragraph 4(k) of the Policy) or trademark-administrative body. In that context, the Panel entertains no notion of what may be done with this Decision after the Panel is functus officio and does not address it to the attention of any other forum.
E. Reverse Domain Name HijackingThe Respondent has requested a finding of Reverse Domain Name Hijacking (“RDNH”). However, in this particular case, the Complainants have been successful in the administrative proceeding. The Panel has found that the Respondent knowingly adopted the Complainants’ mark in the disputed domain name and used this for a business which offered educational services, whereby the use of the Complainants’ mark was likely to cause confusion as to source, sponsorship or endorsement of the Respondent’s website.
The Respondent suggests that the Complainants were less than forthcoming about the use of the Respondent’s website but the Panel does not find this to be the case based on the present record. The Respondent also focuses on a finding of RDNH as regards the second Complainant in The Chancellor, Masters and Scholars of the University of Cambridge v. Kirkland Holdings LLC, supra. Having reviewed that case, the Panel notes that the facts and circumstances were very different. The domain name concerned was
Accordingly, the Respondent’s request that the Panel make a finding of RDNH is denied.
7. DecisionFor 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
Andrew D. S. Lothian
Sole Panelist
Date: November 28, 2021