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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service (ETS) v. Marketing Total S.A.

Case No. D2007-0450

 

1. The Parties

The Complainant is Educational Testing Service (ETS) of Princeton, New Jersey, United States of America, represented by Dorsey & Whitney, LLP, United States of America.

The Respondent is Marketing Total S.A. of Charlestown, West Indies, Saint Kitts and Nevis.

2. The Domain Names and Registrars

The disputed domain names <asktoefl.com> and <etscanada.com> are registered with Belgium Domains LLC. The disputed domain name <prepraxis.com> is registered with Capitoldomains, LLC.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2007. On March 27, 2007, the Center transmitted by email to Belgium Domains, LLC and Capitoldomains, LLC a request for registrar verification in connection with the domain names at issue. On March 30, 2007, Belgium Domains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name <etscanada.com>. On March 30, 2007, Capitoldomains LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name <prepraxis.com>. On April 3, 2007, Belgium Domains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name <asktoefl.com>. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 16, 2007. 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”), 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”).

3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2007.

3.3 The Center appointed Mary Vitoria, QC as the sole panelist in this matter on May 14, 2007. 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.

3.4 The language of the proceedings is English.

 

4. Factual Background

4.1 The Complainant is the largest private not-for-profit educational research and measurement institution in the world. In December 1947, the American Council on Education, the Carnegie Foundation for the Advancement of Teaching and the College Entrance Examination Board turned over their testing programs, a portion of their assets and some of their employees to form the Complainant – an organization devoted to educational testing, measurement and research.

4.2 Since its formation, the Complainant has been the leader in developing and

administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for Americans and citizens of other countries seeking preparatory school, college and graduate school admission; licences for technical and paraprofessional occupations; and teacher certification, among others. The many well-known tests developed and administered by Complainant or its related companies include: the TOEIC test (Test of English for International Communication); the TOEFL test (Test of English as a Foreign Language); the PRAXIS test (Test of Spoken English); and the GRE tests (Graduate Record Examinations).

4.3 The Complainant develops, administers, and scores more than 24 million tests annually in more than 180 countries at more than 9,000 locations. Many Americans, as well as citizens of other countries throughout the world, have prepared for and taken one or more of Complainant’s tests at some stage in their lives. The TOEFL test is made available worldwide by Complainant and administered by authorized institutions and/or through TOEFL Test Program Representatives under contract with Complainant. Since 1964, nearly 20 million students have taken the TOEFL test in more than 110 countries, and over 6,000 institutions worldwide use scores from the test. Between June 2004 and June 2005 alone, over 650,000 people registered to take the test. In addition to its headquarters in Princeton, New Jersey, the Complainant has regional offices in California, Florida, Texas, Washington, D.C., Puerto Rico, the Netherlands and other countries, as well as an extensive worldwide network of local test representatives and testing centres.

4.4 In connection with the various tests that it develops and administers, the Complainant develops and markets numerous test preparation products and services, including print publications, computer software and training services. These are offered for sale worldwide by the Complainant and its representatives, including on the Complainant’s website at “http://www.ets.org”. The Complainant also provides general information about its tests on this website, as well as registration information for taking the tests anywhere in the world.

4.5 The Complainant has used and is the owner of the trade mark ETS in the United States and around the world for a number of goods and services, including educational testing services, namely, developing and administering various tests related to academic achievement and professional aptitude. Details of the Complainant’s registrations in the United States are set out in the Complaint.

4.6 The Complainant owns the registration for the domain names <ets.org>, <ets.info> and <ets.us>, among others, which incorporate its ETS trade mark. The Complainant actively uses the domain name <ets.org> to host a website that offers information concerning the Complainant’s products and services promoted and sold in the United States and worldwide under the ETS trade mark. The Complainant also actively uses the domain name <ets.org> to operate an online store through which its customers and potential customers can shop for and purchase educational products promoted and sold under the ETS trade mark.

4.7 The Complainant has used and is the owner of the trade mark TOEFL and variations thereof in the United States and around the world for a number of goods and services, including information manuals dealing with educational testing, and educational testing services, namely, administering tests dealing with languages, and computer programs for use in the field of language proficiency testing and test preparation. Details of the Complainant’s registrations in the United States are set out in the Complaint.

4.8 The Complainant also owns registrations for the domain names <toefl.com>, <toefl.org>, <toefl.net> and <toefl.us>. The Complainant actively uses these domain names to host the official website for the Test of English as a Foreign Language (TOEFL).

4.9 The Complainant has used and is the owner of the trade marks THE PRAXIS SERIES PROFESSIONAL ASSESSMENTS FOR BEGINNING TEACHERS and variations thereof, PRAXIS I, PRAXIS II AND PRAXIS III in the United States and around the world for a number of goods and services. Details of the Complainant’s registrations in the United States are set out in the Complaint.

4.10 Complainant also owns the registration for the domain name <praxis.org>, which embodies its PRAXIS trade mark. The Complainant actively uses this domain name to host the official website for the PRAXIS tests.

4.11 The Respondent operates three websites “http://www.etscanada.com”, “http://www.asktoefl.com”, “http://www.prepraxis.com” each of which contains a number of sponsored links.

 

5. Parties’ Contentions

A. Complainant

5.1 The Complainant asserts that it generates hundreds of millions of dollars in annual revenue and has spent considerable sums of time, effort and money for the research, development, marketing and promotion of products and services sold under its well-known ETS trade mark. As a result of the Complainant’s long and prominent use of the ETS trade mark in connection with its products and services, the Complainant asserts that this trade mark has acquired worldwide recognition as identifying exclusively the products and services of Complainant and it refers to the fact that the Complainant and its ETS trade marks are regularly mentioned in newspaper and magazine articles in the United States and abroad.

5.2 The Complainant states that continuously since 1964, it has, through its development and administration of the TOEFL test, among other activities, been at the forefront of evaluating the English proficiency of people whose native language is not English. Colleges and universities in the United States and Canada require TOEFL test scores from their international applicants. Academic institutions in other countries, as well as certain independent organizations, agencies and foreign governments, have also found the test scores useful. In addition, several medical certification and licensing agencies require TOEFL test scores. The Complainant states that it has spent considerable sums of time, effort and money for the research and development of its products and services that are promoted, marketed and sold under the TOEFL trade mark and it has also spent considerable time, effort and money extensively promoting its products and services under the TOEFL mark throughout the world.

5.3 The Complainant asserts that as a result of its long and prominent use of its TOEFL trade mark for and in connection with its products and services, the TOEFL trade mark has acquired worldwide recognition as identifying exclusively the products and services of Complainant, and the vast and valuable goodwill symbolized by the TOEFL mark belongs exclusively to Complainant and that this is confirmed by the fact that Complainant and its TOEFL trade marks are regularly mentioned in newspaper and magazine articles in the United States and abroad. The Complainant says that its TOEFL trade mark is well-known and enjoys a worldwide reputation and renown among educational, professional, occupational, economic, governmental, institutional and industrial sectors and that the TOEFL trade mark serves to identify a single source – namely, the Complainant – and its respected products and services.

5.4 The Complainant states that continuously since 1991, through its development and administration of the PRAXIS tests, among other activities, it has been at the forefront of evaluating the academic and teaching skills of individuals seeking teacher certification and that approximately 35 states of the United States require that candidates for teacher licensure take the PRAXIS I, PRAXIS II and PRAXIS III tests to qualify for teacher certification. The PRAXIS tests are made available throughout the United States and administered by authorized institutions under contract with the Complainant. Since 1991, over 10 million candidates have taken the PRAXIS tests, and over 2,000 institutions use scores from the test. In connection with the PRAXIS tests, Complainant has developed numerous test preparation products and services, including print publications, CD-ROMs, and computer software. These products and services provide information on taking the PRAXIS tests and authentic PRAXIS practice test questions, and they are offered for sale in the United States by the Complainant, including on Complainant’s official website for the PRAXIS test at “http://www.praxis.org”. The Complainant also provides general information about the PRAXIS test on this website, as well as registration information for taking the test anywhere in the United States.

5.5 The Complainant asserts that as a result of Complainant’s long and prominent use of its PRAXIS trade mark, the mark has acquired substantial recognition as identifying exclusively its products and services and the vast and valuable goodwill symbolized by the PRAXIS trade mark belongs exclusively to Complainant and that this is confirmed by the fact that Complainant and its PRAXIS trade marks are regularly mentioned in newspaper and magazine articles in the United States and abroad.

5.6 The Complainant asserts that its PRAXIS trade mark is well-known and enjoys a prominent reputation and renown in the educational, professional, occupational, governmental and institutional sectors and that the PRAXIS trade marks serves to identify a single source – namely, the Complainant – and its respected products and services. It states that it has spent considerable sums of time, effort and money for the research and development of its products and services that are promoted, marketed and sold under the PRAXIS trade mark and has also spent considerable time, effort and money extensively promoting its products and services under the PRAXIS trade mark.

5.7 The Complainant asserts that the domain names in dispute are essentially identical and/or are confusingly similar to Complainant’s ETS, TOEFL and PRAXIS trade marks, as they incorporate the Complainant’s distinctive trade marks in their entirety and that the primary elements of the domain names <etscanada.com>, <asktoefl.com> and <prepraxis.com> are identical to the Complainant’s ETS, TOEFL and PRAXIS trade marks. It says that the only difference between the domain name <etscanada.com> and its ETS trade mark is the mere addition of the descriptive geographic reference “canada” and that ETS remains the dominant element in the domain name, and that the use of the descriptive geographic reference “canada” by the Respondent in connection with Complainant’s ETS mark creates the impression that the site associated with the domain name is a Canadian subsidiary or branch affiliated with the Complainant. In this connection, the Complainant refers to Educational Testing Service v. Park Jeong Foreign Language Institute, WIPO Case No. D2001-1064, Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., WIPO Case No. D2004-0324 and Scholastic, Inc. v. Sai Tong Ho, WIPO Case No. D2001-1011.

5.8 The Complainant asserts that the only difference between the disputed domain name <asktoefl.com> and its TOEFL trade mark is the mere addition of the generic or descriptive word “ask” and it refers to the fact that prior panels have held that the addition of such indistinctive elements is not sufficient to avoid confusion. See, e.g., Educational Testing Service v. Jong-Cheol Seo, WIPO Case No. D2006-0056, Educational Testing Service v. Seung Suk Ha, WIPO Case No. D2001-1063, Aventis Pharma S.A. v. Valicenti, WIPO Case No. D2005-0037, Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462 and Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870.

5.9 The Complainant asserts that the only difference between the disputed domain name <prepraxis.com> and its PRAXIS trade mark is the mere addition of the prefix “pre-” and it refers to the fact that prior panels have held that the addition of such indistinctive elements is not sufficient to avoid confusion. See, e.g., shopping24 Gesellschaft fьr multimediale Anwendungen mbH v. Christian Rommel, WIPO Case No. D2000-0508 and Inter-IKEA Systems B.V v. Technology Education Center, WIPO Case No. D2000-0522.

5.10 The Complainant asserts that the Respondent cannot demonstrate that it has any rights or legitimate interests in the domain names in dispute and prays in aid that, noting the difficulty of proving a negative, prior panels have found that a Complainant’s burden of proof on this element is light. See, e.g., Croatia Airlines d.d.v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The Complainant says that its registrations for the ETS, TOEFL and PRAXIS trade marks predate the Respondent’s registration of the domain name in dispute and that the Complainant has not authorized Respondent to use any of its trade marks. See, e.g., Croatia Airlines d.d.v. Modern Empire Internet Ltd., WIPO Case No.D2003-0455.

5.11 The Complainant says that the Respondent has not made use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services, nor could the Respondent do so in light of the notoriety of the Complainant’s trade marks and its exclusive rights in such marks. In addition, the Respondent (as an individual, business or organization) has not been commonly known by the domain names in dispute but instead, is commonly known as Marketing Total S.A.

5.12. The Complainant submits that in order for the Respondent to show that it has legitimate rights in the domain names in dispute based upon a claim that it is commonly known by the domain names, the Respondent must provide adequate extrinsic proof that a corresponding group of consumers who are likely to access its websites associates the domain names with the Respondent rather than with the Complainant (see Dell Computer Corp. v. Logo Excellence, WIPO Case No. D2001-0361) and that given the widespread notoriety enjoyed by the Complainant’s ETS, PRAXIS, and TOEFL trade marks, it is impossible for the Respondent to meet that burden.

5.13 The Complainant asserts that the Respondent is also not making a legitimate non-commercial or fair use of the domain names in dispute without intent (1) for commercial gain to divert consumers misleadingly or (2) to tarnish the trade marks at issue. The Complainant states that, upon information and belief, the Respondent currently operates pay-per-click websites at <http://www.etscanada.com>, <http://www.asktoelf.com> and http://www.prepraxis.com/>, from which it derives revenue based upon the number of times visitors click on links on the web pages associated with those websites. Such use of the ETS, TOEFL and PRAXIS marks is commercial and does not constitute fair use but instead infringes upon the Complainant’s trade mark rights and is not a legitimate use of the disputed domain names under the Policy, see Chanel v. Estco, WIPO Case No. D2000-0413 and Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446.

5.14 The Complainant asserts that, in fact, the Respondent is using the disputed domain names for commercial gain to divert consumers misleadingly to its websites. The domain names are identical and confusingly similar to the Complainant’s ETS, TOEFL and PRAXIS trade marks and domain names, and the Respondent capitalizes on that confusing similarity to re-route to its websites Internet traffic likely destined for the Complainant’s website, which is improper, if not illegal.

5.15 The Complainant submits that such use of the domain names in dispute by the Respondent constitutes a breach of the Registration Agreements, as well as the Policy, under which the Respondent warranted that, to the best of its knowledge and belief, neither the registration of the disputed domain names nor the manner in which it intended to use those names would directly or indirectly infringe the legal rights of a third party. See Section 12 of Registration Agreements and that the Respondent’s breach of that warranty divested it of any rights or interests in the disputed domain names that it may have had. See Milwaukee Radio Alliance, L.L.C. v. WLZR-FM Lazer 103, WIPO Case No. D2000-0209.

5.16 The Complainant says that the Respondent may attempt to argue that it has legitimate rights to use the domain names in dispute because it uses them in a bona fide offering of goods and services related to the Complainant’s TOEFL and PRAXIS tests. The Complainant submits that even if the Respondent were a licensed reseller of the Complainant’s products and services, which it is not, it would not be entitled to use the Complainant’s trade marks as domain names and that Panels have consistently held that resellers of trade marked goods and services have no right to register and use domain names containing the trade mark in issue. See Hoffman-La Roche Inc. v. Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290, Rada Mfg. Co. v. J. Mark Press, WIPO Case No. D2004-1060, Easy Heat, Inc. v. Shelter Products, WIPO Case No. D2001-0344 and Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946.

15.17 The Complainant asserts that the Respondent promotes goods and services of the Complainant’s competitors on the websites to which the domain names in dispute resolve. In addition, a pay-per-click website by its nature offers a hodgepodge of goods and services, almost none of which are goods or services of the Complainant. As such, the Respondent’s use of the disputed domain names is not a legitimate use.

15.18 The Complainant asserts that the Respondent has registered the domain names in dispute without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of the Complainant’s well- known trade marks and that prior panels have held that bad faith is found if it is unlikely that the registrant would have selected the domain name without knowing of the reputation of the trade mark in question. Such a finding is particularly apt where the complainant’s trade mark is well-known, as is the case with Complainant’s trade marks. See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Northwest Airlines, Inc. v. Mario Koch, NAF Case No. FA9000095688.

15.19 The Complainant states that the present facts parallel those in Educational Testing Service v. Park Jeong Foreign Language Institute, WIPO Case No. D2001-1064, where the panel found that the respondent, which had registered several domain names incorporating the TOEFL mark, “must clearly have been aware of the rights and reputation of the Complainant in the TOEFL trade mark. To proceed with registration in the face of such knowledge clearly demonstrates bad faith on the part of the respondent”. The Complainant states that in the present proceeding, it is highly unlikely that the Respondent selected the domain names in dispute without being aware of the Complainant’s well-known ETS, TOEFL and PRAXIS trade marks, given that the Respondent uses the disputed domain names to operate pay-per-click websites that depend upon the notoriety of the ETS, TOEFL and PRAXIS trade marks. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.

15.20 The Complainant submits that the Respondent registered the domain names in dispute with the specific intent to cause consumer confusion and to free ride on the vast goodwill associated with the Complainant’s trade marks. Upon information and belief, the Complainant says that the Respondent registered the disputed domain names with full knowledge that they are identical or confusingly similar to the Complainant’s trade marks in order to re-route to the Respondent’s website Internet traffic likely destined for the websites operated by the Complainant and that, accordingly, the Respondent registered the domain names in dispute in bad faith.

15.21 The Complainant submits that not only has the Respondent registered the disputed domain names in bad faith, it is also using them in bad faith. Upon information and belief, the Complainant states that the Respondent uses the disputed domain names to operate pay-per-click websites from which it derives substantial revenue through Internet advertising and that the Respondent has created online directories at the websites at “http://www.etscanada.com”, “http://www.asktoefl.com” and “http://www.prepraxis.com” that, on the surface, resemble Internet portal sites such as Yahoo. However, in contrast to Yahoo’s listings, each of the listings in the Respondent’s directories is an advertiser-supported listing from which the Respondent derives income based upon the number of times visitors to the sites click on the listing. The Respondent’s chances for increased revenues rise in direct proportion to the amount of Internet traffic that the Respondent attracts to its online directories. The Complainant submits that such is the primary reason the Respondent registered and uses the domain names in dispute – to free ride on the vast goodwill associated with the Complainant’s well-known ETS, TOEFL and PRAXIS trade marks and the Internet traffic intended for the Complainant’s website. Such use constitutes bad faith use and registration on the part of the Respondent. See, e.g., Dollar Rent A Car Inc. v. Albert Jackson, NAF Case No. FA187421, Credit Industriel et Commercial S.A. v. Richar J., WIPO Case No. D2005-0569, Sociйtй Air France v. Bing G Glu, WIPO Case No. D2006-0834, Sociйtй Air France v. WWW Enterprise, Inc., WIPO Case No. D2005-1160, WPT Enterprises, Inc. v. Kaneoka Senuchi, WIPO Case No. D2005-1144, Dr. Ing h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311, The Black and Decker Corporation v. Clinical Evaluations, NAF Case No. FA0205000112629, Yahoo! Inc. v. Web Master a/k/a MedGo, NAF Case No. FA0210000127717 and Lowermybills.com v. Michele Dinoia, NAF Case No. FA0308000183728.

15.22 The Complainant further submits that the Respondent’s online directories feature links to third parties who provide goods and services related to tests developed and administered by the Complainant. Given the notoriety of Complainant’s ETS, TOEFL and PRAXIS trade marks, use of the disputed domain names in the manner discussed above is likely to confuse consumers into believing that the Respondent and the businesses listed in its online directories are affiliated with or endorsed by the Complainant, or that the Respondent’s use of the domain names in dispute is authorized by the Complainant. See, e.g., SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, NAF Case No. FA94956, Miller Brewing Co. v. The Miller Family, NAF Case No. FA104177, Sociйtй Air France v. WWW Enterprise, Inc., WIPO Case No. D2005-1160, Dell Computer Corp. v. Logo Excellence, WIPO Case No. D2001-0361 and Dollar Rent A Car Inc. v. Albert Jackson, NAF Case No. FA187421. Furthermore, the Complaint submits many of the links on the pay-per-click sites that the Respondent operates under the disputed domain names lead to sites of the Complainant’s competitors. For example, the sites feature links to third parties that offer test preparation products and services, which compete with those offered by the Complainant.

15.23 The Complainant asserts that the Respondent’s use and registration of the disputed domain names disrupt the Complainant’s business by depriving it of the right to host websites at “http://www.etscanada.com/”, “http://www.asktoefl.com” and “http://www.prepraxis.com/” to provide information concerning its products and services to test candidates. Such acts of the Respondent constitute bad faith use and registration of the domain names in dispute, as illustrated by the examples set forth in paragraph 4(b) of the UDRP. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

15.24 The Complainant asserts that the Respondent has also demonstrated a history of engaging in bad faith registration and use of domain names that violate the rights of others. See HBH, Limited Partnership v. Marketing Total S.A., WIPO Case No. D2006-1452 (finding that Marketing Total S.A. had registered and used <honeybakedstore.com> in bad faith because it incorporated the complainant’s registered HONEYBAKED trade mark into the domain name at issue for the purpose of diverting Internet users seeking information about the complainant’s products to a portal site offering sponsored links so that it could share in revenues obtained from the diverted traffic).

15.25 The Complainant states that it has never consented to the Respondent’s registration of the ETS, PRAXIS and TOEFL marks as domain names and that given the renown of those distinctive marks, the Respondent could not have registered the domain names in issue without knowledge of the Complainant’s rights in the marks, and no use of those domain names by the Respondent can constitute a bona fide business or commercial use. The Complainant says that it has never authorized the Respondent to use the marks for any business or commercial purpose, and any use of the domain names in dispute for such purposes would constitute infringing use. See Citigroup, Inc. v. Ghinwa et al., WIPO Case No. D2003-0494. Accordingly, the Complainant submits that the Respondent’s use of the disputed domain names suggests a false designation of origin or sponsorship for the Respondent’s goods and services and those of the businesses listed in its online directories.

15.26 The Complainant submits that the Respondent undoubtedly chose the domain

names in dispute: (1) in an effort to free ride on the goodwill associated with the distinctive ETS, TOEFL and PRAXIS trade marks in which the Complainant enjoys exclusive rights; and/or (2) for the purpose of creating the false impression that Respondent is an authorized agent, licensee or representative of the Complainant, which the Respondent is not.

15.27 The Complainant requests that the contested domain names be transferred to the Complainant.

B. Respondent

15.28 The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

6.1 According to Paragraph 15(a) of the Rules, the Panel must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

6.2 In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

(i) The domain name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.

6.3 Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies on the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel may draw such inferences therefrom, as it considers appropriate.

6.4 Since the Respondent failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds the following:

A. Identical or Confusingly Similar

The ETS Trade Mark

6.5 The disputed domain name <etscanada.com> is confusingly similar to the ETS trade mark in which the Complainant has rights. The Complainant has rights in the ETS trade mark in the form of the three-letter combination simpliciter and in variations of it in the form of the letters ETS written in the form of a device. The distinctive feature of the device marks is the three-letter combination “ETS”. Orally those device marks are likely to be referred to as ETS marks.

6.6 The addition of the geographic signifier “canada” does not serve sufficiently to distinguish or differentiate the disputed domain name <etscanada.com> from the ETS trade marks. It has been determined by UDRP panels in numerous precedents that the mere addition of a geographical name to a trade mark does not exclude confusing similarity. See, for example, Accor v. Everlasting FriendshipTrust, WIPO Case No. D2005-0626 and Wal-Mart Stores Inc v. Walmarket Canada, WIPO Case No. D2000-0150. Equally the addition of a ccTLD or gTLD to the mark does not avoid confusing similarity. See, for example, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corp Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific service provider or enterprise as a source of goods or services.

6.7 In the present case, the addition of the geographic signifier “canada” is likely to confuse and mislead those persons familiar with the Complainant or its ETS trade marks into the belief that the website “www.etscanada.com” is one which is operated by the Complainant or is connected with it either as being a branch or subsidiary. The practice of adding a geographic signifier to a name or trade mark either as a prefix or suffix to indicate a localised connection is well known. See, for example, Educational Testing Service v. Park Jeong Foreign Language Institute, WIPO Case No. D2001-1064, Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., WIPO Case No. D2004-0324 and Scholastic, Inc. v. Sai Tong Ho, WIPO Case No. D2001-1011.

6.8 The Panel accepts the Complainant’s submissions in relation to the disputed domain name <etscanada.com> and finds for the Complainant on the first element.

The TOEFL Trade Mark

6.9 The disputed domain name <asktoefl.com> is confusingly similar to the TOEFL trade mark in which the Complainant has rights. The Complainant has rights in the TOEFL trade mark in the form of the five-letter combination simpliciter and in variations of it with the letters TOFEL with a device of a globe set inside a square. The distinctive feature of the device mark is the five-letter combination “TOEFL”. Orally the device mark is likely to be referred to as the TOEFL mark.

6.10 The disputed domain name <asktoefl.com> is a combination of the ordinary English word “ask” together with five apparently meaningless letters “toefl”. The addition of the ordinary non-distinctive word “ask” to the letters “toefl” is not sufficient to avoid a finding of confusing similarity. The Complainant’s TOEFL mark has been appropriated in its entirety. It is also likely that persons familiar with the Complainant’s TOEFL marks would be confused or misled into thinking that the website <www.asktoefl.com> was an authorized site operated by the Complainant to provide answers to questions about its TOEFL services. For the reasons given above the addition of the gTLD “.com” to the mark does not avoid a finding of confusing similarity.

6.11 The Panel accepts the Complainant’s submissions in relation to the disputed domain name <asktoefl.com> and finds for the Complainant on the first element.

The PRAXIS Trade Mark

6.12 The Complainant has rights in the trade mark THE PRAXIS SERIES PROFESSIONAL ASSESSMENTS FOR BEGINNING TEACHERS written in normal roman upper case script and also in the form of a device mark. The distinctive element of these marks is the word PRAXIS. The Complainant also has rights in the trade marks PRAXIS I, PRAXIS II and PRAXIS III. In each case, it is the word “PRAXIS” which forms the distinctive and essential feature of the mark. The disputed domain name is confusingly similar to each of these PRAXIS marks in which the Complainant has rights.

6.13 The disputed domain name <prepraxis.com> uses the entirety of the distinctive element of the Complainant’s PRAXIS marks. The addition of the suffix “pre” which, in ordinary speech and use, has the meaning “before”, as in pre-school”, for example, is not sufficient to avoid confusion. It is likely that persons familiar with the Complainant’s mark THE PRAXIS SERIES PROFESSIONAL ASSESSMENTS FOR BEGINNING TEACHERS or the PRAXIS I, PRAXIS II or PRAXIS III marks will be confused or misled into thinking that any goods or services being made available via the “www.prepraxis.com” website are those operated by the Complainant as part of its PRAXIS series and that the particular goods or services are those which come before or precede the main series. For the reasons given above the addition of the gTLD “.com” to the mark does not avoid a finding of confusing similarity.

6.14 The Panel accepts the Complainant’s submissions in relation to the disputed domain name <prepraxis.com> and finds for the Complainant on the first element.

B. Rights or Legitimate Interests

6.15 There is no evidence of any rights or legitimate interest of the Respondent in any of the disputed domain names. The Complainant states that it has not licensed or otherwise permitted the Respondent to use the trade marks ETS, TOEFL or PRAXIS or to apply for any domain name including these trade marks. The Complainant has prior rights in the trade marks ETS, TOEFL and PRAXIS which precede for many years the Respondent’s registration of the domain names in dispute.

6.16 The Respondent currently operates websites at “www.etscanada.com”, “www.asktoefl.com” and “www.prepraxis.com”. These websites contain a number of sponsored links to a number of sites including some associated legitimately with the Complainant while others belong to the Complainant’s competitors. The Respondent’s websites also include a list of ‘related categories’, which resolve in some cases to yet further sponsored links. The Complainant has alleged, on information and belief, that the Respondent derives revenue based on the number of times visitors to the sites click on the links. The Respondent has not denied this allegation. The Panel has visited the sites in question. The Respondent does not appear to offer any goods or services of its own and the Panel is, therefore, prepared to infer that, as alleged by the Complainant, the Respondent is using the websites themselves as a source of revenue for itself. The use of the names of the Respondent’s websites, being names which are confusingly similar to the Complainant’s marks is not fair use.

6.17 In so far as the links on the Respondent’s websites lead to sites associated with the Complainant, the use by the Respondent of the Complainant’s marks for the purpose of indicating the goods and services of the Complainant is lawful provided such use does not extend beyond that necessary to advertise or promote the Complainant’s goods and services. The use of names which are confusingly similar to the Complainant’s marks as domain names clearly extends beyond what is required to indicate the goods and services of the Complainant. Previous UDRP Panels have consistently held that persons who use marks in connection with what may be the genuine goods and services of the trade mark owner are not entitled on that basis alone to register and use domain names containing the trade mark, and particularly not where the domain name is used in connection with the promotion of goods or services other than those of the Complainant. See, for example: Hoffman-La Roche Inc. v. Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793 Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290 and Oki Data Americas, Inc v ASD Inc., WIPO Case No D2001-0903,

6.18 The Panel accepts the Complainant’s submissions that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Panel finds for the Complainant on the second element.

C. Registered and Used in Bad Faith

6.19 The Complainant submits that the Respondent registered the domain names in dispute in bad faith, knowing of the reputation of the trade marks in question, in an attempt to capitalize unfairly on the goodwill of the Complainant’s trade marks.

6.20 The disputed domain names were each created in 2006, many years after the creation of the Complainant’s ETS, TOEFL and PRAXIS trade marks. It is highly unlikely that the Respondent could, coincidentally and independently of the Complainant, have devised domain names incorporating those three marks. The Panel finds that it is unlikely that the Respondent would have selected each of the domain names in dispute without knowing of the reputation of the trade marks in question and that, accordingly, the disputed domain names were registered in bad faith.

6.21 According to Paragraph 4(b)(iv) of the Policy, the use of a domain name, with the intention to attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of the disputed web site or location or of a product or service on said web site or location is regarded as evidence of bad faith.

6.22 The Panel is satisfied on the evidence that the Respondent knew of the ETS, TOEFL and PRAXIS marks of the Complainant when it registered and used the disputed domain names. There is no natural connection between any of those marks and the Respondent. The Panel draws the conclusion that the most likely reason the Respondent chose the domain name was to associate itself and its business with that of the Complainant and to profit from the reputation of the Complainant’s trade marks and thereby to attract Internet users to its websites.

6.23 The Panel concludes that by registering and using the disputed domain names, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s ETS, TOEFL and PRAXIS trade marks as to the source, sponsorship, affiliation, or endorsement of the business through the use of the disputed domain names <etscanada.com>, <asktoefl.com> and <prepraxis.com>. The Panel concludes that the Respondent registered and has used the disputed domain name in bad faith.

6.24 According to paragraph 4(b)(ii) of the Policy the registration of a domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name constitutes bad faith provided the registrant has engaged in a pattern of such conduct. " A "pattern of conduct" as required in Paragraph 4.b.(ii) typically involves multiple domain names directed against multiple complainants, but may involve multiple domain names directed against a single complainant. See, for example, Smoky Mountain Knife Works v. Deon Carpenter, eResolution Case Nos. AF-230ab; Gruner + Jahr Printing & Publishing Co., G + J McCall’s LLC, Rosie O’Donnell and Lucky Charms Entertainment, Inc. v. Savior Baby, WIPO Case No. D2000-1741 and Telstra Corporation Ltd v Ozurls, WIPO Case No. D2001-0046.

6.25 The Complainant has alleged that the conduct of the Respondent has deprived it of the right to host websites at www.etscanada.com, <www.asktoefl.com> and “www.prepraxis.com” and, relying on HBH, Limited Partnership v Marketing Total SA, WIPO Case No D2006-1452, states that the Respondent has demonstrated a history of engaging in bad faith registration and use of domain names that violate the rights of others. In the HBH case, the Respondent had set up a website “www.honeybackedstore.com” incorporating the Complainant’s HONEYBAKED trade mark. The website operated as a portal site offering sponsored links.

6.26 Given the fact that the Respondent has used three separate trade marks of the Complainant to register the three domain names in dispute and has used them in portal websites, thereby preventing the Complainant from hosting websites under the disputed domain names, and has in the past used another person’s trade mark for the self-same purpose, the Panel finds that the Respondent has engaged in a pattern of conduct and that bad faith under paragraph 4(b)(ii) of the Policy is made out.

6.27 The Panel accepts the Complainant’s submissions and finds that the third element has been established.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <etscanada.com>, <asktoefl.com> and <prepraxis.com> be transferred to the Complainant.


Mary Vitoria, QC
Sole Panelist

Dated: June1, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0450.html

 

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