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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Michael Robert

Case No. D2008-1105

 

1. The Parties

Complainant is Educational Testing Service, New Jersey, United States of America, represented by Dorsey & Whitney, LLP, New York, United States of America (“U.S”).

Respondent is Michael Robert, Georgia, United States of America.

 

2. The Domain Names and Registrars

The disputed domain names <cbttoefl.net>, <cbttoefl.org>, <etskoreaorkr.com>, <etskoreaorkr.net>, <etskoreaorkr.org>, <etskt.com>, <etskt.org>, <etsky.com>, <etsky.net>, <etsky.org>, <etsorg.net>, <etsorg.org>, <etstoefl.net>, <koreatoefl.net>, <koreatoefl.org>, <thomsontoefl.com>, <thomsontoefl.net>, <thomsontoefl.org>, <toefle.net>, <toeflets.net>, <toeflkorea.net>, <toeicexam.net>, <toeicexam.org> and <wwwtoeic.com> (the “Disputed Domain Names”) are registered with OnlineNic, Inc. d/b/a China-Channel.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2008. On July 22, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”) a request for registrar verification in connection with the Disputed Domain Names at issue. On July 23, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 28, 2008, the Center sent an email to the Registrar seeking a clarification to the Registrar’s verification response. On July 29, 2008, the Center received the clarification it sought. In response to a notification by the Center on July 28, 2008, that the Complaint was administratively deficient due to excessive word length, Complainant filed an amended Complaint on July 31, 2008. The Center verified that the Complaint along with the amended Complaint (hereafter referred to simply as 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 Respondent of the Complaint, and the proceedings commenced on August 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2008. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on August 25, 2008.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 29, 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

Complainant states that it was founded in 1947 and is the “largest not-for-profit educational research and measurement institution in the world.” Complainant states that it “develops, administers, and scores more than 24 million tests annually in more than 200 countries at more than 9,000 locations.” Complainant states that it “generates hundreds of millions of dollars in annual revenue.”

Complainant states that it has developed, among other tests, the TOEIC test (Test of English for International Communication) and the TOEFL test (Test of English as Foreign Language). With respect to the TOEFL test, Complainant states that it has administered this test since 1964 to more than 20 million students in more than 110 countries and that it “has developed numerous test preparation products and services, including print publications, CD-ROMs, computer software and online writing exercises.” Complainant states that its official website for the TOEFL test is available through the domain names <toefl.com>, <toefl.net>, <toefl.org> and <toefl.us>. With respect to the TOEIC test, Complainant states that it has administered this test since 1979 to more than 4,5 million people in more than 60 countries and that it “has developed numerous test preparation products and services, including print publications, CD-ROMs, computer software and online writing exercises.” Complainant states that its official website for the TOEIC test is available through the domain names <toeic.com>, <toeic.net> and <toeic.org>.

Complainant states that it is the owner of the trademarks ETS, TOEFL and TOEIC. In support thereof, Complainant cites the following U.S. trademark registrations, supported by copies of certificates of registration:

Mark

Reg. No.

Reg. Date

First Use

ETS & Design

558,879

May 13, 1952

1949

ETS & Design

559,686

June 3, 1952

1950

ETS

1,166,461

August. 25, 1981

1948

ETS

1,592,803

April 24, 1990

1974

ETS & Design

1,548,081

July 18, 1989

1974

ETS & Design

2,363,333

June 27, 2000

1997

TOEFL

1,103,427

October 3, 1978

1964

TOEFL & Design

1,103,426

October 3, 1978

1977

TOEFL

2,461,224

June 19, 2001

1991

TOEFL

3,168,050

November 7, 2006

1991, 2005

TOEIC

1,191,669

March 9, 1982

October 19, 1979

TOEIC

3,180,166

December 5, 2006

November 2000

The ETS, TOEFL and TOEIC trademarks are hereafter referred to as, respectively, the “ETS Trademark”, the “TOEFL Trademark” and the “TOEIC Trademark.”

The Disputed Domain Names were registered on the dates set forth below:

- <cbttoefl.net>: April 12, 2007

- <cbttoefl.org>: April 12, 2007

- <etskoreaorkr.com>: April 12, 2007

- <etskoreaorkr.net>: April 12, 2007

- <etskoreaorkr.org>: April 12, 2007

- <etskt.com>: December 19, 2001

- <etskt.org>: October 17, 2006

- <etsky.com>: June 21, 2001

- <etsky.net>: February 13, 2006

- <etsky.org>: October 17, 2006

- <etsorg.net>: April 12, 2006

- <etsorg.org>: September 28, 2005

- <etstoefl.net>: April 12, 2007

- <koreatoefl.net>: April 12, 2007

- <koreatoefl.org>: April 12, 2007

- <thomsontoefl.com>: April 12, 2007

- <thomsontoefl.net>: April 12, 2007

- <thomsontoefl.org>: April 12, 2007

- <toefle.net>: April 12, 2007

- <toeflets.net>: April 12, 2007

- <toeflkorea.net>: April 12, 2007

- <toeicexam.net>: April 12, 2007

- <toeicexam.org>: April 12, 2007

- <wwwtoeic.com>: April 12, 2007

 

5. Parties’ Contentions

A. Complainant

In addition to the factual background set forth above, Complaint contends, inter alia, as follows:

- Each of the Disputed Domain Names is identical or confusingly similar to the ETS Trademark, the TOEFL Trademark or the TOEIC Trademark because “[t]he primary elements” of each of the Disputed Domain Names “are identical to” one of these trademarks and because the addition of geographic or generic words, a third party’s trademark or other letters to the Disputed Domain Names are insufficient to avoid confusion.

- Respondent has no rights or legitimate interests in respect of any of the Disputed Domain Names because the ETS Trademark, the TOEFL Trademark and the TOEIC Trademark predate Respondent’s registration of each of the Disputed Domain Names; Respondent has not used or made demonstrable preparations to use any of the Disputed Domain Names in connection with a bona fide offering of goods or services; Respondent is “Michael Robert,” and not commonly known by any of the Disputed Domain Names; Respondent is using the Disputed Domain Names for commercial gain to divert consumers misleadingly to its pay-per-click websites; Respondent is not an authorized reseller of Complainant’s services and, even if he were, “panels have consistently held that resellers of trademarked goods and services have no right to register and use domain names containing the trademark at issue”; and Respondent “promotes goods and services of Complainant’s competitors on the websites to which the Domain Names resolve.”

- Each of the Disputed Domain Names has been registered and is being used in bad faith because it is highly unlikely that Respondent selected the Disputed Domain Names without being aware of Complainant’s well-known ETS, TOEFL and TOEIC trademarks, given that Respondent uses the Disputed Domain Names to operate pay-per-click websites that depend upon the notoriety of the ETS, TOEFL and TOEIC trademarks to generate traffic; Respondent’s online directories feature links to third parties who provide goods and services related to tests developed and administered by Complainant; Many of the links on the pay-per-click sites that Respondent operates under the Disputed Domain Names lead to sites of Complainant’s competitors; and Respondent’s use of the Disputed Domain Names suggests a false designation of origin or sponsorship for Respondent’s goods and services and those of the businesses listed in its online directories.

B. Respondent

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

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the ETS Trademark, the TOEFL Trademark and the TOEIC Trademark.

As to whether the Disputed Domain Names are identical or confusingly similar to the ETS Trademark, the TOEFL Trademark and the TOEIC Trademark, the relevant comparison to be made is with the second-level portion of each of the twenty-four disputed Domain Names only (i.e., “cbttoefl”, “cbttoefl”, “etskoreaorkr”, “etskoreaorkr”, “etskoreaorkr”, “etskt”, “etskt”, “etsky”,”etsky”, “etsky”, “etsorg”, “etsorg”, “etstoefl”, “koreatoefl”, “koreatoefl”, “thomsontoefl”, “thomsontoefl”, “thomsontoefl”, “toefle”, “toeflets”, “toeflkorea”, “toeicexam”, “toeicexam” and “wwwtoeic”), as it is well-established that each top-level domain name (i.e., “.com”, “.net” and “.org”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Case No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”).

Each of the Disputed Domain Names contains one or more of the ETS Trademark, the TOEFL Trademark or the TOEIC Trademark, and the Panel here agrees with Complainant that the additional characters in each of the Disputed Domain Names do nothing to alleviate confusing similarity. Specifically, with respect to those of the Disputed Domain Names that contain a geographic identifier,1 the Panel agrees with a prior decision involving the same Complainant as in this case, in which the panel there found the domain names <chinatoefl.com> and <chinatoefl.net> confusingly similar to the TOEFL Trademark. Educational Testing Service v. Park Jeong Foreign Language Institute, WIPO Case No. D2001-1064. With respect to those of the Disputed Domain Names that contain a well-known Internet extension such as “.org” or “www.”2 the Panel agrees that such additions do nothing to avoid confusing similarity. See, e.g., F. Hoffmann-La Roche AG v. Metropharm International, WIPO Case No. D2006-0052 (finding the domain name <xenicalnet.com> confusingly similar to the trademark XENICAL); and MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS, WIPO Case No. D2008-0009 (finding the domain name <wwwmaaco.com> confusingly similar to the trademark MAACO). With respect to those of the Disputed Domain Names that contain a generic term,3 the Panel agrees with a prior decision involving the same Complainant as in this case, in which the panel there found the domain names <toefltests.com>, <toefltests.net> and <toefltests.org> confusingly similar to the TOEFL Trademark. Educational Testing Service v. Seung Suk Ha, WIPO Case No. D2001-1063. With respect to those of the Disputed Domain Names that contain a third party’s trademark,4 the Panel agrees that [a] domain name containing two trade marks of different entities does not mean its owner has created a new name but rather it means the domain name is confusingly similar to both of the trade marks.” MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325. Finally, with respect to those of the Disputed Domain Names that contain miscellaneous characters,5 the Panel agrees that these character do nothing to alleviate confusing similarity. See, e.g., F. Hoffmann-La Roche AG v. Marketing Total S.A., WIPO Case No. D2008-0085 (finding confusing similarity “where the infringing domain name is one letter different from the Complainant’s mark”); and Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant”).

Accordingly, each of the Disputed Domain Names is identical or confusingly similar to the one of the ETS Trademark, the TOEFL Trademark or the TOEIC Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges, inter alia, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the ETS Trademark, the TOEFL Trademark and the TOEIC Trademark predate Respondent’s registration of each of the Disputed Domain Names; Respondent has not used or made demonstrable preparations to use any of the Disputed Domain Names in connection with a bona fide offering of goods or services; Respondent is “Michael Robert,” not commonly known by any of the Disputed Domain Names; “Respondent is using the [Disputed] Domain Names for commercial gain to divert consumers misleadingly to its [pay-per-click] websites”; Respondent is not an authorized reseller of Complainant’s services and, even if he were, “panels have consistently held that resellers of trademarked goods and services have no right to register and use domain names containing the trademark at issue”; and Respondent “promotes goods and services of Complainant’s competitors on the websites to which the Domain Names resolve.”

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent 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 UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in any of the Disputed Domain Names, the Panel is satisfied that the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy;

(i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or

(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or

(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant does not allege with specificity which, if any, of the factors set forth above exist in the current case to create bad faith. However, Complainant appears to allege that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. The Panel here observes, after reviewing printouts provided by Complainant of the websites associated with each of the Disputed Domain Names, that the websites contain links to services that appear to be competitive with the services offered by Complainant under the ETS Trademark, the TOEFL Trademark and the TOEIC Trademark. Accordingly, Complainant has established the presence of bad faith. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (“where… the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).

Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.

 

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 following domain names be transferred to the Complainant: <cbttoefl.net>, <cbttoefl.org>, <etskoreaorkr.com>, <etskoreaorkr.net>, <etskoreaorkr.org>, <etskt.com>, <etskt.org>, <etsky.com>, <etsky.net>, <etsky.org>, <etsorg.net>, <etsorg.org>, <etstoefl.net>, <koreatoefl.net>, <koreatoefl.org>, <thomsontoefl.com>, <thomsontoefl.net>, <thomsontoefl.org>, <toefle.net>, <toeflets.net>, <toeflkorea.net>, <toeicexam.net>, <toeicexam.org> and <wwwtoeic.com>.


Douglas M. Isenberg
Sole Panelist

Date: September 12, 2008


1 <etskoreaorkr.com>, <etskoreaorkr.net>, <etskoreaorkr.org>, <etsky.com>, <etsky.net>, <etsky.org>, <koreatoefl.net>, <koreatoefl.org> and <toeflkorea.net>. Complainant states that “kr” is the top-level domain for Korea and that “ky” is the top-level domain for the Cayman Islands.

2 <etsorg.net>, <etsorg.org> and <wwwtoeic.com>.

3 <cbttoefl.net>, <cbttoefl.org>, <toeicexam.net> and <toeicexam.org>. Complainant states that “cbt” is an abbreviation for computer-based testing.

4 <thomsontoefl.com>, <thomsontoefl.net> and <thomsontoefl.org>.

5 <etskt.com>, <etskt.org> and <toefle.net>.

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-1105.html

 

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