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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. ISITE, Inc., Masuo Santo

Case No. D2008-1980

1. The Parties

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

The Respondent is ISITE, Inc., Mauso Santo of Osaka, Japan.

2. The Domain Name and Registrar

The disputed domain name <toeic-jp.net> is registered with Firstserver, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2008. On December 24, 2008, the Center transmitted by email to Firstserver, Inc. a request for registrar verification in connection with the disputed domain name. On December 26, 2008, Firstserver, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Firstserver, Inc. further confirmed on January 9, 2009, that the language of the registration agreement is Japanese.

On January 9, 2009, the Center sent a notification of language of proceeding to the parties. On January 14, 2009, the Complainant submitted its request in English that the language of proceeding be English. On January 16, 2009, the Respondent submitted its request in Japanese that the language of proceeding be Japanese. The Center further notified the Complainant of complaint deficiency on January 20, 2009. The Complainant submitted an amendment to the Complaint on the same day.

The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2009. The Response was filed with the Center on February 13, 2009.

The Center appointed Haig Oghigian as the sole panelist in this matter on February 26, 2009. 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.

A Supplemental filing was submitted on March 10, 2009 by the Complainant.

4. Factual Background

The following facts are taken from the Complaint and generally accepted as true.

The Complainant is a not-for-profit corporation organized and existing under the Education Law of the State of New York, with its principal place of business in Princeton, New Jersey, USA.

The Complainant has used, registered or applied to register the trademark TOEIC and variations thereof in the United States Patent and Trademark Office (“USPTO”) and in jurisdictions around the world for a number of goods and services, such as educational testing services, namely, administering tests dealing with language proficiency; information manuals dealing with educational testing; and computer programs for use in the field of language proficiency testing. E g. Reg. No. 1191669 registered at USPTO in 1982.

The Complainant also owns registrations for various domain names such as <toeic.com>, <toeic.org>, <toeic.net>, <toeicjapan.com> and <toeic.co.jp>.

The Toeic test is made available worldwide by the Complainant and administered by authorized institutions and/or through Toeic test program representatives under contract with Complainant. In Japan, the Toeic test is specifically used by Japanese businesses to evaluate English proficiency.

The disputed domain name was registered on May 29, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the domain name <toeic-jp.net> be transferred from the Respondent to the Complainant.

The Complainant submitted that the Respondent’s domain name is essentially identical and certainly confusingly similar to Complainant’s TOEIC trademark, as it incorporates Complainant’s distinctive TOEIC trademark in its entirety. The only difference between the domain name <toeic-jp.net> and the Complainant’s trademark is the mere addition of the geographic term “jp”, which is the commonly used country code top level domain designation for Japan.

The Respondent cannot demonstrate that he has any rights or legitimate interests in the domain name in dispute. All of the Complainant’s registrations for the TOEIC trademark predate the Respondent’s registration of the domain name. The trademark registration evidences the Complainant’s exclusive rights in the mark in connection with the goods and services covered by that registration, and the Complainant has not authorized the Respondent to use any of its trademarks.

In addition, the Respondent has not made use of, or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Nor has the Respondent been commonly known by TOEIC trademark.

The Complainant submitted that the Respondent’s domain name currently redirects traffic to a commercial website “www.shikaku-jp.com” which sells and offers TOEIC test preparation software. Such use of the TOEIC trademark is commercial and does not constitute fair use. Rather, such use infringes upon the Complainant’s trademark rights.

The Complainant stated that prior UDRP 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 trademark in question. As it is highly unlikely that the Respondent selected the domain name without being aware of the Complainant’s well-known TOEIC trademark, to proceed with registration in the face of such knowledge clearly demonstrates bad faith on the part of the Respondent.

The Complainant further argued that the Respondent is making use of the domain name in bad faith. The domain name currently redirects traffic to a commercial website <shikaku-jp.com>, which sells an assortment of goods and services covered by the Complainant’s registrations for its TOEIC trademark, namely, preparation software for the TOEIC test, which is developed and administered by the Complainant. This constitutes a bad faith attempt to capitalize on the fame of the TOEIC mark by confusing consumers to attract Internet traffic for commercial gain. Furthermore, the Respondent’s use and registration of the domain name disrupts the Complainant’s business by depriving it of the right to host a website at “www.toeic-jp.net” to provide information concerning the Toeic test to test candidates in Japan. Such acts constitute bad faith use and registration of the domain name.

B. Respondent

The Respondent stated that it has obtained the domain name <toeic-jp.net> in May 2007. Thereafter, it has used the website mainly for the marketing of educational materials for Toeic test hosted by Newton Co. Ltd. It has invested a huge amount of expenses in relation to such marketing activities.

The Respondent asserted that it has ceased using the domain name. It also submitted that its business will be prejudiced as a result of a transfer of the domain name. Finally, it submitted that Educational Testing Service should pay for the value it has invested on the business and compensate for the losses it will suffer due to lost business opportunities.

6. Discussion and Findings

6.1 Language of the proceeding

As the Registration Agreement of <toeic-jp.net> is in Japanese, in accordance with paragraph 11(a) of the Rules, the default language of the proceeding should be in Japanese. Be that as it may, paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to the circumstances. The Panel notes in this regard that the website at the domain name contains contents in both Japanese and English, that the Respondent has submitted a Response which it attempted to make arguments concerning matters raised in the Complaint, and that the Respondent has had an opportunity to submit its opinions in Japanese. The Panel is satisfied that the Respondent has not on balance suffered undue prejudice as a result of the language of these proceedings being English. Having considered the circumstances, in particular, that the language requirement should not unduly burden the Parties or unduly delay proceedings (eg. Whirlpool Corporation, Whirlpool Properties, Inc. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293), the Panel determines that English shall be the language of the proceeding.

6.2 Supplemental Filing

The Panel notes that supplemental filing was submitted by the Complainant on March 10, 2009. No express provision is made for supplemental filing, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. The Panel therefore has sole discretion to determine the admissibility of supplemental filing received from either Party. The Panel has reviewed the supplemental filing submitted by the Complainant and has given due consideration to the claims made by the Complainant.

6.3 The Panel’s decision in relation to the disputed domain name

Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:

(i) The domain name is identical or confusingly similar to the trade mark; 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.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which a Complainant has rights. In line with such provision, the Complainant must prove that it enjoys the trademark right, and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.

It is established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

It is clear on the given evidence that the Complainant has a longstanding use of the name “Toeic” and that it has registered trademarks that incorporate that term in many parts of the world, especially in Japan where the Respondent resides, and the reputation of TOEIC in Japan is recognized by the Respondent.

The subject domain name differs from the Complainant’s name and mark only by the addition of the country code top level domain “jp”. The Panel is satisfied that this clearly is identical or confusingly similar to the Complainant’s name and mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances can be:

- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

- legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

The Panel is of the opinion that the Complainant has established on the balance of probabilities that the Respondent has no rights or legitimate interests in the domain name at issue.

The Complainant has no relationship with the Respondent and has not authorized the Respondent to use the domain name <toeic-jp.net>, which wholly incorporates the Complainant’s TOEIC mark. See e.g., General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645. There is no indication in the case file that the Respondent is known under the disputed domain name.

Further, the Respondent is using the domain name exactly for the purposes of attracting customers to its site. This clearly demonstrates that the Respondent has no rights or legitimate interests. The Panel is therefore satisfied that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It is clear from its Response that the Respondent is well aware of the Complainant’s reputation, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential Complainant rights. The Panel is therefore convinced that the domain name has been registered and used in bad faith. The Panel is therefore satisfied that the Complainant has satisfied the requirement of paragraph 4(a)(iii) 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 domain name <toeic-jp.net> be transferred to the Complainant.

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Haig Oghigian
Sole Panelist

Dated: March 30, 2009