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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Mohamed Ahmed Aljarwan

Case No. D2008-1073

 

1. The Parties

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

The Respondent is Mohamed Ahmed Aljarwan, Dubai, United Arab Emirates.

 

2. The Domain Names and Registrar

The disputed domain names <toefladvantage.com> and <toeflstrategies.com> are registered with CSL Computer Service Langenbach GmbH dba Joker.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2008. On July 15, 2008, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain names at issue. On July 16, 2008, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on July 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2008.

The Center appointed Soh Kar Liang as the sole panelist in this matter on August 27, 2008. 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 was founded on December 19, 1947 as a private not-for-profit educational testing, research and measurement institution to take over the testing programs and activities of the American Council on Education, the Carnegie Foundation for the Advancement of Teaching and the College Entrance Examination Board. It has its headquarters is in Princeton, New Jersey and has regional offices in California, Florida, Texas, Washington, D.C. and Puerto Rico, as well as subsidiaries in the Netherlands and other countries.

The Complainant has been developing and administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for Americans and other nationalities seeking preparatory school, college and graduate school admission, licenses for technical and paraprofessional occupations, and teacher certification, among others. The TOEFL test (Test of English as a Foreign Language) has been developed and administered by the Complainant since 1964. Colleges in the United States and Canada require TOEFL test scores from all international applicants. 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. Over 650,000 people registered to take the TOEFL test between June 2004 and June 2005 .

The Complainant also offers commercially various test preparation products and services, including print publications, CD-ROMs, computer software and online writing exercises for taking the TOEFL test and TOEFL practice test questions. The Complainant maintains a website, accessible through the domain names <toefl.org>, <toefl.com>, <toefl.net>, <toefl.biz> and <toefl.us>, for providing these products and also general information about the TOEFL test.

The Complainant owns registrations for trade marks comprising the word TOEFL (the “TOEFL mark”) in the United States and around the world in Classes 9, 16, 41 and 42 covering, inter alia, 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. The registrations in the United States were obtained between 1971 and 2006. The Complainant has also registered the TOEFL mark in the United Arab Emirates (registration nos. 54949, 54948, 54947 all dated September 4, 2005).

The Complainant’s TOEFL mark was the subject matter of earlier panel decisions against other respondents (Educational Testing Service v. International Names Ltd., WIPO Case No. D2007-0449; Educational Testing Service v. Park Jeong Foreign Language Institute, WIPO Case No. D2001-1064).

The disputed domain names were registered by the Respondent on December 10, 2007 and are later than the Complainant’s above United States and United Arab Emirate trade mark registrations for the TOEFL mark. The disputed domain names resolved to identical websites which promoted and offered online sales of penis enlargement products and featured explicit photographs of nude men. There was no reference to the TOEFL mark in the content of the websites and the websites offered no discernible reasons as to the Respondent’s choice of the disputed domain names.

On January 26, 2008, the Complainant protested the registration of the disputed domain names to the Registrar, CSL Computer Services Lagenbach GmbH dba joker.com, of the Registrar. Included in the protest were Google search results on the Respondent’s name and pages from some of these hits describing the individual, “Mohamed Ahmed Aljarwan”, as a notorious spammer under various domains including the disputed domain names. The Registrar agreed to deactivate the disputed domain names on February 27, 2008. Thereafter the disputed domain names stopped resolving to any websites.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that

1) The disputed domain names are essentially identical and confusingly similar to Complainant’s distinctive TOEFL mark. They incorporate the TOEFL mark in their entirety. The addition of the suffixes “strategies” and “advantage” is insufficient to distinguish the disputed domain names from the TOEFL mark;

2) The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is an individual has never been known by the names TOEFL. The Respondent is not authorised by the Complainant to use the TOEFL mark; the disputed domain names resolved to websites which purveyed material unrelated to the TOEFL mark; and

3) The disputed domain names were registered and are being used in bad faith. The TOEFL mark is well known and the Respondent must have known of the same in selecting the disputed domain names. The Respondent registered the disputed domain names to cause consumer confusion, ride on the good will associated with the TOEFL mark and to re-route Internet users to its websites and perform spamming activities.

B. Respondent

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

 

6. Discussion and Findings

To succeed, paragraph 4(a) of the Policy requires the Complainant to show that:

1) the disputed domain names are identical or confusingly similar to trade marks in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

3) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant’s own trade mark registrations for the TOEFL mark in various jurisdictions including the United Arab Emirates, the Respondent’s country. All these registrations precede the registration of the disputed domain names. Further, the unchallenged evidence of substantial use of the TOEFL mark certainly points to the TOEFL being a well known trade mark. Well known trade marks are accorded rights in many jurisdictions. It cannot be doubted that the Complainant has prior trade mark rights to the TOEFL mark.

In accordance with established practice, the top level domain portion, “.com”, may be ignored in comparing a domain name with a trade mark (e.g., see Gerling Beteiligungs – GmbH (GBG) v. World Space Corp., WIPO Case No. D2006-0223; DZ Bank AG v. Bentz, WIPO Case No. D2006-0414).

The only difference between the TOEFL mark and the disputed domain names is respective suffixes “advantage” and “strategies”. These words are readily descriptive of the TOEFL tests administered by the Complainant. As such, concatenating such descriptors with the TOEFL mark does not create a domain names distinguishable from the TOEFL mark and remains confusingly similar to the trade mark (see (see L’Oreal , Lancфme Parfums et Beaute & Cie v. InfoChina ltd, WIPO Case No. D2008-0981; Compagnie Gervais Danone v. Joseph Welter, WIPO Case No. D2008-0594; F Hoffmann-La Roche AG v. Drugfaq Canada, WIPO Case No. D2005-1281).

The Panel determines that the disputed domain names are confusingly similar to the TOEFL mark and paragraph 4(a) of the Policy is established.

B. Rights or Legitimate Interests

Based on the Complainant’s submissions which have not been challenged by the Respondent, this Panel accepts prima facie that:

1) The Respondent has not been authorized by the Complainant to use the trade marks the TOEFL mark or register any domain name incorporating the TOEFL mark;

2) The Respondent has never previously been known under the TOEFL mark and/or the dispute domain names;

3) Despite the Complainant’s letter to the Registrar which led to deactivation of the disputed domain names, the Respondent did not take any visible action to clarify and/or restore operation of the disputed domain names, if any;

4) The disputed domain names did serve any discernible purpose other than to serve up identical websites that bear no relation to the disputed domain names; and

5) The Respondent is a notorious spammer.

The Complainant has shown that there is no valid prima facie reason for the choice of the disputed domain names by the Respondent. In the absence of even the minutest explanation from the Respondent, this Panel can only conclude that the Respondent has no rights or legitimate interest in respect of the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 2 of the Policy requires the Respondent to:

“represent and warrant to [the Registrar] that … (b) to [the Respondent’s] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) [the Respondent is] not registering the domain name for an unlawful purpose; and (d) [the Respondent] will not knowingly use the domain name in violation of any applicable laws or regulations …”

The Complainant’s trade marks are well-known worldwide. It is inconceivable in the absence of additional information that the Respondent was unaware of the Complainant’s trade mark rights in the TOEFL mark. The use of a well-known mark as a domain name by a person with no connection to products identified by the well-known mark and the attraction of Internet users to a website for commercial gain are evidence of opportunistic bad faith registration and use (e.g., F Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956; Safoni-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

The Respondent’s selection of the disputed domain names is unauthorized and unjustified and appear solely for the purpose of for directing traffic to its websites which offer products unconnected to the Complainant and the TOEFL mark, points on the face towards opportunistic bad faith use registration and use. The notoriety of the Respondent as a spammer further corroborates this finding.

Further, paragraph 4(b)(iv) of the Policy provides that the following is evidence of bad faith registration and use:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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 website or location.”

The offer of penis enlargement products on the website resolved by the disputed domain names appears calculated to generate financial gain for the Respondent. The deliberate use of various trade marks of the Complainant to attract traffic to the Respondent’s websites created a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website (eg, Dell Computer Corp. v. Logo Excellence, WIPO Case No. D2001-0361).

By reason of the above, the finding of bad faith registration and use on the part of the Respondent is inevitable.

Even though the Respondent has stopped using the disputed domain names, there is no reason for the Respondent to continue to remain as registrant. Moreover, allowing the disputed domain names to remain with the Respondent would prevent other legitimate parties, such as the Complainant, from adopting the disputed domain names.

 

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, <toefladvantage.com> and <toeflstrategies.com>, be transferred to the Complainant.

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Soh Kar Liang
Sole Panelist

Dated: September 10, 2008