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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Caribbean Online International Ltd., Keyword Marketing, Inc., Maison Tropicale S.A. and Wan-Fu China, Ltd.

Case No. D2007-0500

 

1. The Parties

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

Respondents are Caribbean Online International Ltd., of Nassau, Bahamas; Keyword Marketing, Inc., of Charlestown, West Indies, Saint Kitts; Maison Tropicale S.A., of The Valley, British West Indies, Anguilla; and Wan-Fu China, Ltd, of Nassau, Bahamas.

2. The Domain Names and Registrars

The disputed domain name <ets-toefl.org> is registered with CapitolDomains, LLC.

The disputed domain name <greandtoefl.com> is registered with BelgiumDomains, LLC. and he disputed domain name <toeflstart.com> is registered with DomainDoorman, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2007. On April 3, 2007, the Center transmitted by email to CapitolDomains, LLC, BelgiumDomains, LLC and DomainDoorman, LLC a request for registrar verification in connection with the domain names at issue. On April 4, 2007, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that the Respondent Keyword Marketing, Inc. is listed as the registrant of the domain name <greandtoefl.com> and providing the contact details for such Registrant. On April 4, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent Keyword Marketing, Inc. is listed as the registrant of the domain name <toeflstart.com> and providing the contact details for such Respondent. On April 4, 2007, CapitolDomains, LLC transmitted by email to the Center its verification response confirming that the Respondent Keyword Marketing, Inc. is listed as the registrant of the domain name <ets-toefl.org> and providing the contact details for such Registrant. The Center also obtained from a whois service the contact details for the administrative and technical contacts for the Respondent Keyword Marketing, Inc. in connection with the registration of the domain names <toeflstart.com> and <greandtoefl.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 25, 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2007. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 25, 2007.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on June 6, 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.

 

4. Factual Background

The marks upon which the Complaint is based are ETS, TOEFL, and GRE. According to the documentary evidence and contentions submitted, Complainant owns a large number of registrations around the world for the (i) ETS mark and variations thereof, including five United States Trademark Registrations which date back to the period of 1952 to 1990, (ii) TOEFL mark and variations thereof, including three United States Trademark Registrations which date back to the period of 1978 to 2001, and (iii) GRE mark and variations thereof, including three U.S. Trademark Registrations which date back to the period of 1981 to 1995 (Reference is made to Annexes 4, 6 and 8 of the Complaint).

According to the contentions submitted, Complainant owns a large number of domain name registrations that incorporate the words ETS, TOEFL and GRE, including <ets.org>, <ets.info>, <ets.us>, <toefl.com>, <toefl.org>, <toefl.net>, <toefl.us>, <gre.com>, <gre.org>, and <gre.us>. Reference is made to Annexes 5, 7 and 9 of the Complaint.

According to the contentions submitted, Complainant is the largest not-for-profit educational research and measurement institution in the world, and is 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. Among the tests developed and administered by Complainant and its related companies are: the TOEIC test (Test for 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). Reference is made to Annexes 11, 13, 14, 15 and 16 of the Complaint.

According to the documentary evidence and contentions submitted, the disputed domain names were registered at different times with the registrars CapitolDomains, LLC, BelgiumDomains, LLC and DomainDoorman, LLC by the Respondents Caribbean Online International Ltd., Keyword Marketing, Inc., Maison Tropicale S.A., and Wan-Fu China, Ltd. Reference is made to Annex 1 of the Complaint. At the time of the registrar verification, the disputed domain names were all registered in the name of Keyword Marketing, Inc., each of which in a different registrar.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain names are essentially identical and confusingly similar to Complainant’s ETS, TOEFL and GRE trademarks because they incorporate those trademarks in their entirety. Complainant argues that the combination of two or more trademarks owned by Complainant and the mere addition of a hyphen to join two trademarks does not eliminate confusing similarity between the domain name and the mark. Finally, Complainant argues that the addition of the generic or descriptive word “start” is not sufficient to avoid confusion.

Complainant further contends that Respondents have no rights or legitimate interests in the disputed domain names because (i) Complainant’s registrations for the ETS, TOEFL and GRE trademarks pre-date Respondents’ registrations, (ii) Respondents have not used or made any preparations to use the disputed domain names in connection with a bona fide offering of goods or services, (iii) Respondents are not commonly known by the disputed domain names, and (iv) Respondents are not making a legitimate non-commercial or fair use of the disputed domain names, but are rather using the disputed domain names for commercial gain to divert consumers misleadingly to their websites.

Relying on previous UDRP Panel decisions, Complainant argues resellers of trademarked goods and services have no right to register and use domain names containing the trademarks at issue, particularly where reseller uses the domain name in connection with the sale or offer for sale of goods or services other than those of the complainant. Complainant contends that Respondents promote goods and services of Complainant’s competitors on the websites to which the disputed domain name resolve.

Finally, Complainant argues that Respondents have registered the disputed domain names without any bona fide basis for such registrations in an attempt to capitalize unfairly on the goodwill of Complainant’s well-known trademarks and with the specific intent to cause consumer confusion. Complainant further contends that Respondents are using the disputed domain names in bad faith because they operate pay-per-click websites from which they derive substantial revenue through Internet advertising, and therefore are free riding on the vast goodwill associated with Complainant’s ETS, TOEFL and GRE trademarks and the traffic intended for Complainants website.

Complainant also argues that Respondents’ online directories feature links to third parties who provide goods and services related to tests developed and administered by Complainant. Reference is made to Annexes 17, 18 and 19 of the Complaint. Complainant also contends that Respondents’ registration and use of the disputed domain names disrupt Complainant’s business.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Multiple Respondents

Pursuant to paragraph 3(c) of the Rules, the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In this case the registrar verification indicated that the disputed domain names are all registered in the name of Keyword Marketing, Inc., each of which in a different registrar. The issue which arises is whether this is the case of a partial dismissal of action in respect of Respondents Caribbean Online International Ltd., Maison Tropicale S.A., and Wan-Fu China, Ltd.

Complainant argues that Respondents engaged in a pattern of collusion whereby they rotated the names of the registrant listed for their domain names and, relying on previous WIPO UDRP decisions, argue that such acts of collusion justify bringing the Complaint against multiple respondents. The Panel notes that, at the time the Complaint was filed, each of the Respondents had registered at least one of the domain names which are now in the name of Keyword Marketing, Inc, as evidenced by Annex 1 of the Complaint.

As decided in Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc., WIPO Case No. D2003-0283, “situations may arise in which multiple domain name holders should be equated with one domain name holder for the purpose of this provision [Article 3(c) of the Rules], so that a complaint against more than one domain holder should be allowed”.

The Panel finds that this is the situation here and, therefore, finds that all Respondents should be equated with one domain name holder operating under a variety of aliases and that the Complaint should be allowed in relation to all Respondents.

B. Effect of the Default

The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel finds that there are no exceptional circumstances for the failure of the Respondents to submit a Response. As a result, the Panel infers that the Respondents do not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084. Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondents will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.

The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.

C. Identical or Confusingly Similar

This Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. That is particularly true when the registered mark is entitled to a high level of protection due to its notoriety, as is the case of the ETS, TOEFL and GRE trademarks.

WIPO UDRP Panels have also decided that the mere combination of two or more trademarks owned by a complainant does not serve to distinguish the domain name from complainant’s trademarks. See, e.g., Educational Testing Service (ETS) v. International Names Ltd., WIPO Case No. D2007-0449; Danisco A/S and Genencor International, Inc. v. Bong-Gyu Jeong, WIPO Case No. D2005-0973; Sociйtй des Produits Nestlй SA v. Stuart Cook, WIPO Case No. D2002-0118, ABB Asea Brown Boveri Ltd. v. Mark Maddison, WIPO Case No. D2001-0538.

It is further well established that the use of a generic word or of a hyphen in a domain name may not avoid the finding confusing similarity. See e.g., Sanofi-Aventis v. Direct Response Marketing aka DRM, WIPO Case No. D2005-0661; Sanofi-Aventis v. Elizabeth Riegel and Andrew Riegel, WIPO Case No. D2005-1045; Educational Testing Service v. ESL Pro Systems, Ltd., WIPO Case No. D2006-0245; Sociйtй des Produits Nestlй SA v. Stuart Cook, supra; ABB Asea Brown Boveri Ltd. v. Mark Maddison, supra.

Therefore, the Panel finds that Complainant’s contentions are warranted and that the requirement of paragraph 4(a)(i) of the Policy is met.

D. Rights or Legitimate Interests

Complainant further contends that Respondents have no rights or legitimate interests in respect of the disputed domain names.

The consensus view in the WIPO UDRP panel decisions has been that once a complainant makes out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).

The Panel is convinced that the Complainant has established a prima facie case. In fact, Respondents are not commonly known by the disputed domain names, the principal element of the disputed domain names are the Complainant’s widely known trademarks, and it is evident that Complainant has not authorized the Respondents to use its marks in the domain names.

Complainant further contends that Respondents are not making a legitimate noncommercial or fair use of the disputed domain names because Respondents are using the domain names <ets-toefl.org>, <greandtoefl.com.> and <toeflstart.com> for commercial gain to divert consumers misleadingly to their websites.

The majority view in WIPO UDRP decisions has been that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Para. 2.3).

Respondents’ websites contained online directories featuring sponsored links to third parties who provide goods and services related to tests developed and administered by Complainant, as evidenced in Annexes 17, 18 and 19 of the Complaint.

The critical issue here is whether use of a domain name for purposes of offering “sponsored links” to competitors of a complainant creates a legitimate right to a domain name. In Deutsche Telekom AG v. Dong Wong, WIPO Case No. D2005-0819, the panel held that respondent’s use of the domain name for a commercial website with links to competitors of the complainant cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy. That panel relied on Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, where the panel held that bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.

The Panel concurs with such understanding and also finds that the use of the disputed domain names infringes on Complainant’s legitimate rights. The question of bad faith use will be further discussed below, but the foregoing finding is sufficient to dispose of the matter at this point.

In short, the Complainant has satisfied its burden of providing evidence to make a prima facie case showing that Respondents lack rights to or legitimate interests in the disputed domain names, and the Respondents have failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondents have any rights or legitimate interests in the disputed domain names. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

E. Registered and Used in Bad Faith

The fact that the Respondents have chosen as domain names previously registered and widely known trademarks (ETS, TOEFL and GRE) is per se an indication that registration of the disputed domain names was made in bad faith. In fact, Respondents could not have ignored the existence or the reputation of the ETS, TOEFL and GRE marks. The Panel accepts Complainant’s contention that the facts in the subject case are parallel to those in Educational Testing Service v. Park Jeong Foreign Language Institute, WIPO Case No. D2001-1064.

The Panel takes further the view that in this case the content of the websites is relevant in the finding of bad faith use. As indicated before, the Respondents’ websites contained online directories featuring sponsored links to third parties who provide goods and services related to tests developed and administered by Complainant. The Panel visited the websites to which the disputed domain names resolved on June 16, 2007 and found out that (i) the website at “www.ets-toefl.org” still displays sponsored links to third parties who provide goods and services related to tests developed and administered by Complainant while (ii) the websites at “www.greandtoefl.com” and ”www.toeflstart.com” now display sponsored links to categories of goods and services which are unrelated to Complainant’s business activities.

Accordingly, the Panel is convinced by all the evidence produced in this case and by the lack of rebuttal by Respondent that Respondents intended to free ride on Complainant’s reputation and goodwill by diverting Internet users and customers to a website for commercial gain. Firstly, because neither the original nor the modified use of the disputed domain names constitute a bona fide business or commercial use. Secondly, because the change of the content of two of the websites to which the disputed domain names resolve was arguably intended to avoid a finding of bad faith in the present proceeding.

There is a further element which is relevant in the resolution of this dispute. Complainant contends that Respondents have demonstrated a pattern of engaging in bad faith registration and use of domain names which violate third party’s rights. See HBH, Limited Partnership v. Carribbean Online International Ltd., WIPO Case No. D2006-1454; New Chapter Inc. v. Caribbean Online International Ltd., WIPO Case No. 2006-1251; La Sociйtй des Autoroutes Paris Rhin Rhфne v. Keyword Marketing, Inc., WIPO Case No. D2006-1270; Confйdйration Nationale du Crйdit Mutuel v. Wan-Fu China Ltd, WIPO Case No. D2006-1635. The Panel finds that Complainant’s contention is warranted.

In short, the manner in which Respondents have used and are using the disputed domain names demonstrates that the disputed domain names were registered, were used and still are being used in bad faith.

Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

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 <ets-toefl.org>, <greandtoefl.com> and <toeflstart.com> be transferred to the Complainant.

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Manoel J. Pereira dos Santos
Sole Panelist

Dated: June 18, 2007