The Complainant is Educational Testing Service, United States of America (“United States” or “U.S.”), represented by Jones Day, United States.
The Respondent is Guanzhi Wei, China. 2. The Domain Name and Registrar
The disputed domain name <73toefl.com> is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2021. On December 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 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 Complainant on January 4, 2022, 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 amendment to the Complaint on January 4, 2022.
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 January 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2022.
The Center appointed George R. F. Souter as the sole panelist in this matter on February 11, 2022. 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 world’s largest non-profit educational testing and assessment organisation. Since 1964, the Complainant has been evaluating the English proficiency of people whose native language is not English, under its TOEFL trademark. Educational institutions in the U.S., China (where the Respondent is located), and many other countries currently rely on the TOEFL test in connection with the admission of students whose mother language is not English. Since 1964, more than 30 million students in more than 180 countries, and over 10,000 educational institutions have taken the TOEFL test.
Details of extensive registrations of its TOEFL trademark have been supplied to the Panel. These include U.S. trademark registration number 1103427, registered on October 3, 1978; and Chinese trademark registration number 746636, registered on May 21, 1995. Additionally, the Complainant is the proprietor of the trademark TOEFL in Chinese characters “托福”, in Chinese trademark registration number 1136266, registered on December 21, 1997.
The disputed domain name was registered on March 28, 2021, and has resolved to a website which offers explicit obscene content and pornographic material. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its TOEFL trademark, containing the Complainant’s TOEFL trademark in its entirety, with the inconsequential addition of the number “73”.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Complainant has never granted permission to the Respondent to use its TOEFL trademark in connection with the registration of a domain name, or otherwise.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with the website described above. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed 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 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 acknowledges the Complainant’s TOEFL trademark to be well known.
It is well established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) may generally be disregarded when comparing a trademark with a disputed domain name. The Panel considers the gTLD “.com” to be irrelevant in the circumstances of the present case, and finds that it may be disregarded here.
The Complainant’s TOEFL trademark is clearly recognizable in the disputed domain name, rendering the disputed domain name confusingly similar to the TOEFL mark, and the mere addition of the number “73” is inconsequential, and does not prevent a finding of confusing similarity, and the Panel so finds.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in connection with the disputed domain name at issue. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Respondent did not advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Furthermore, the nature of the disputed domain name, incorporating the Complainant’s well known TOEFL trademark, carries a risk of implied affiliation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy, in connection with the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel regards it as self-evident that the Complainant’s TOEFL trademark was deliberately appropriated in the disputed domain name are such that the Panel concludes that a finding of registration in bad faith is justified, in connection with the disputed domain name and so finds.
The use of the Complainant’s trademark in connection with a pornographic website, with the attendant risk of applied affiliation, poses a clear risk of damage to the Complainant’s reputation, and, in the Panel’s opinion, justifies a finding of use in bad faith. In Nokia Corporation v. Nokiagirls.com a.k.a IBCC,WIPO Case No. D2000-0102, the panel wrote that the respondent’s website “can create the impression with the average visitor that the content of the website is adult oriented. In the opinion of the Administrative Panel, this constitutes an aggravating element of the bad faith with which the Domain Name is being used by the Respondent”. The Panel in the present case agrees with the panel in Nokia Corporation v. Nokiagirls.com a.k.a IBCC, and has no difficulty in finding that the disputed domain name is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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, <73toefl.com>, be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: February 25, 2022
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