WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. TOEFL

Case No. D2000-0044

 

1. The Parties

The Complainant is Educational Testing Service, a not-for-profit corporation organized in the State of New York, United States of America (USA), with principal place of business in Princeton, New Jersey, USA.

The Respondent is TOEFL, with address in New York, New York, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is "toefl.com".

The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

a. The Complainant initiated the proceeding by the filing of a complaint by fax of February 7, 2000, received by the WIPO Arbitration and Mediation Center ("WIPO") on February 8, 2000, and by courier mail received by WIPO on February 10, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On February 10, 2000, WIPO completed its formal filing compliance requirements checklist.

b. On February 11, 2000, WIPO transmitted notification of the complaint and initiation of the proceeding to the Respondent via e-mail, fax and courier. The fax notification was retransmitted by WIPO to Respondent on February 15, 2000, after notification by Respondentís administrative contact that its fax machine had run out of paper during the initial fax transmission.

c. On February 11, 2000 WIPO transmitted notification of the complaint to ICANN, Network Solutions and Complainantís authorized representative.

d. On March 2, 2000, WIPO transmitted notification to Respondent of its default in responding (to the complaint transmitted on February 11, 2000) by post, fax and e-mail. WIPOís fax machine report indicates successful transmission of this notification to Respondentís administrative contact.

e. On March 2, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On March 2, 2000 the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

f. On March 3, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. On March 3, 2000, the Panel received an e-mail transmission of the Complaint from WIPO, and WIPO dispatched its file in this matter by courier to the Panel. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by March 16, 2000.

g. The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant has provided a copy (Exhibit B to its complaint) of its U.S. Patent and Trademark Office trademark and service mark registration dated October 3, 1978 for "TOEFL", number 1,103,427, on the Principal Register. Complainant states that the trademark and service mark (hereinafter "trademark") registration remains valid and subsisting. The validity of Complainantís trademark registration for "TOEFL" has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of a valid trademark registration for "TOEFL" in the United States.

Network Solutionsí WHOIS database query response (Complainantís Exhibit A) indicates that TOEFL, with Administrative Contact at "Connections, Web" is the registrant of the domain name "TOEFL.COM". The record of this registration was created on October 24, 1997, and was last updated on October 8, 1999.

As indicated in Complainantís Exhibit F, constituting a download from the "tourdomain.com" website on January 30, 2000, the domain name "toefl.com" is offered for sale by its owner on said website for an asking price of $8,000. Respondent (by its default) has not disputed that it is responsible for such offering for sale.

The Service Agreement in effect between Respondent and Network Solutions as of January 26, 2000 (Complainantís Exhibit C) subjects Respondent to Network Solutionsí dispute settlement policy, which as of that date is the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

 

5. Partiesí Contentions

A. Complainant

Complainant states that it is a "leader in developing and administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for Americans and foreigners seeking preparatory school, college and graduate school admission, licenses for technical and paraprofessional occupations and teacher certification, among others" (Complaint, para. 16). Complainant indicates that its "ĎTest of English as a Foreign Languageí (ĎTOEFLí) is a test used by the U.S. government, U.S. industry and U.S. academic institutions to measure English-language proficiency of non-English speaking students seeking student visas". (Id., para. 17)

Complainant indicates that its registered "TOEFL" trademark is famous among "Americans in every field of endeavor" and that the TOEFL trademark is known to identify a "single source, namely, Complainant Educational Testing Service, and its respected products and services" (Id., para. 19). Complainant indicates that it has expended considerable resources in "promoting its products and services under the TOEFL mark throughout the United States" (Id., para. 21) and that the "goodwill symbolized by the TOEFL mark belongs exclusively to Complainant" (Id., para. 22).

Complainant states that Respondent has not made preparations to use or used the "toefl.com" domain name "in connection with a bona fide offering of goods or services", has no trademark or service mark rights in the "TOEFL" trademark, and is not making a legitimate non-commercial or fair use of the "toefl.com" domain name (Id., para. 23).

Complainant states that respondent registered the domain name "toefl.com" in "a blatant attempt to capitalize unfairly on the goodwill of the TOEFL mark" (Id., para. 24). It alleges that Respondentís bad faith is evidenced by its placing of the domain name for sale on the "tourdomain.com" website at a price ($8,000) that "far exceeds its out-of-pocket costs and thus has violated Paragraph 4(b)(i) of the Policy" (Id., para. 25). Complainant indicates that Respondentís "target audience" for its offer of sale "undoubtedly was and is Complainant" (Id., para. 25). It alleges that Respondent has no bona fide purpose for the domain name, and "has deliberately attempted to extort compensation from Complainant". Complainant argues that an offer to sell the domain name for a price in excess of its costs constitutes bad faith registration of the name (Id., para. 25).

Complainant requests that the domain name "toefl.com" be transferred to it (Id., para. 27).

B. Respondent

Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999) is addressed to resolving disputes concerning allegations of abusive domain name registration. The subject matter scope of the administrative proceedings by which such disputes may be resolved is carefully circumscribed, reflecting a cautious approach to a novel form of dispute resolution that was designed to address a rapidly evolving technological environment. This approach was largely developed through the WIPO Internet Domain Name Process and reflects the balancing and synthesis of a wide range of perspectives regarding governance of the Internet environment 1. Administrative Panels established by authorized dispute resolution service providers should confine themselves to findings of fact that are necessary to rendering decisions within their limited subject matter jurisdiction.

A "domain name" is a human-friendly form of Internet address 2. The domain name shares characteristics with traditional forms of business identifiers, principally trademarks, service marks and trade names. The domain name differs from the trademark (and by analogy, the service mark). The trademark identifies the source of goods in commerce. The domain name does not generally appear on goods as an indication of source 3; rather, it may Ė but does not necessarily Ė identify a producer or supplier of goods by its location on the Internet. The domain name is closely related to a trade name that identifies a particular business. The trade name may be invoked, in appropriate circumstances, to prevent or redress unfair competition.

Because the holding of a valid trademark evidences a link between a sign or symbol on goods in commerce and a particular producer or supplier, the Policy establishes the holding of a valid trademark as a presumptive basis for redressing unfair competition in the registration and use of a domain name. However, the Policy recognizes that parties other than the trademark holder may have legitimate interests in the use of its sign or symbol in a domain name. It distinguishes such legitimate interests from a set of circumstances which are likely to represent abuse of the trademark holderís rights. It is only the "bad faith" registration and use of a domain name that is prohibited by the Policy.

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of courier receipts and fax machine reports that the party designated as the Administrative Contact for the Respondent received the complaint and notice of initiation of the proceedings (see Procedural History, supra).

Because the Respondent, TOEFL, has defaulted in providing a response to the allegations of Complainant, Educational Testing Service ("ETS"), certain factual conclusions may be drawn by the panel on the basis of Complainantís undisputed representations (Rules, para. 14(b)).

The Panel finds that ETS is the owner of the trademark "TOEFL" registered on the principal register of the United States Patent and Trademark Office. The Complainant thus has rights in the "TOEFL" trademark in the sense of Paragraph 4(a)(i) of the Policy.

"TOEFL" is an acronym for "Test of English as a Foreign Language". This acronym may be descriptive, and may thus require the acquisition of secondary meaning in order to be distinctive and constitute a valid trademark. Registration on the Principal Register establishes a presumption of secondary meaning and distinctive character 4. In the absence of a challenge to the distinctive character of the trademark "TOEFL" by the Respondent, the Panel accepts for the purposes of this proceeding that "TOEFL" is a valid trademark.

Complainant has suggested that "TOEFL" is a famous mark. A finding to this affect might have legal implications under U.S. antidilution law 5, or might be relevant to whether "TOEFL" is a well-known mark within the meaning of the Paris Convention 6. There is no need for the Panel to make a determination on this issue.

The domain name registered by Respondent, "toefl.com", is identical to Complainantís registered trademark, "TOEFL", with exception of addition of the generic top-level domain name ".com", and taking note that domain names are employed in lower case format (while Complainantís trademark is comprised of upper case letters). For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondentís domain name is "identical" to Complainantís trademark, since Respondentís domain name "toefl.com" is without doubt confusingly similar to Complainantís trademark "TOEFL".

Complainant has met the burden of proving that Respondent is the registrant of a domain name which is identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name "toefl.com", other than that it has registered and offered to sell the domain name. If mere registration of the domain name were sufficient to establish rights or legitimate interests for the purposes of Paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no Complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of Paragraph 4(a)(ii) of the Policy.

Moreover, the Panel finds that the mere offering of the domain name for sale to any party does not constitute a right or legitimate interest in that name. The offering for sale of a domain name (to the trademark holder or its competitor for a price in excess of out-of-pocket costs) is one avenue for establishing bad faith registration and use pursuant to the Policy (para. 4(b)(i)). If the mere offering for sale were sufficient to constitute a right or legitimate interest, this would mean that a finding of bad faith registration and use under paragraph 4(b)(i) would virtually preclude a finding of lack of right or interest under paragraph 4(a)(ii). Construing paragraph 4(a)(ii) of the policy so as to avoid an illogical result, the Respondentís offering of "toefl.com" for sale at "tourdomain.com" does not, standing alone, establish a right or legitimate interest in that domain name.

In light of Respondentís default, and in the absence of any evidence on the record of Respondentís rights or legitimate interests in the domain name "toefl.com", the Panel finds that the Respondent has no rights or legitimate interests in that domain name. Thus, the Complainant has established the second element necessary to prevail on its claim that respondent has engaged in abusive domain name registration.

The third element that must be proven by Complainant to establish Respondentís abusive domain name registration is that Respondent has registered and is using the domain name in bad faith. The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Most relevant to the current proceedings: circumstances indicating that the domain name has been registered or acquired by a respondent "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 [respondentís] documented out-of-pocket costs directly related to the domain name" (Id., para. 4(b)(i)).

As there is no evidence on the record that Respondent has undertaken any act regarding the disputed domain name other than to offer it for sale, the Panel infers that the offering for sale was Respondentís purpose for the registration. If the Respondentís offer for sale is determined to be in bad faith, then the registration will also be deemed to be in bad faith.

Complainant alleges that Respondentís offer to sell "toefl.com" on the "tourdomain.com" website was specifically intended as an offer for sale to Complainant. It characterizes Respondentís act as a deliberate attempt to extort compensation from Complainant.

The panel is unwilling to draw such an inference from Respondentís offer of the domain name for sale on a website that is open to any party with access to the Internet. Complainant alleges that "TOEFL" is a test widely used by various institutions in the United States. This suggests that there might well be parties other than Complainant that would find a "toefl.com" website commercially useful, such as parties offering to train individuals preparing for "TOEFL" tests in the United States, or offering to train such individuals in foreign countries.

Furthermore, while parties offering services related to "TOEFL" tests might be competitors of Complainant Ė thereby bringing them within another class of parties to whom offering the domain name for sale would constitute bad faith use Ė they might not be competitors of Complainant. On the basis of the Complaint, the Panel cannot conclude that Complainant is the only party that may legitimately train individuals in preparation for TOEFL tests, nor that Complainant would necessarily have persuasive grounds for complaint if another party used the "TOEFL" trademark in a domain name that directed Internet users to its own test preparation services.

If in fact the Respondent considered the Complainant its sole "target audience" for sale of "toefl.com", it might have more efficiently sent an offer letter directly to Complainant, rather than pursuing the circuitous route of posting its offer for sale on a publicly accessible website.

The panel is thus unwilling to draw the inference that offering the "toefl.com" domain name for sale on a publicly accessible website to any party willing to pay its price constitutes an offer to sell the domain name to the Complainant or to a competitor of the Complainant. Certainly the Complainant and its competitors are potential purchasers. However, if the drafters of paragraph 4(b)(i) of the Policy had intended to broadly cover offers to any and all potential purchasers as evidence of bad faith, it would have been a simple matter to refer to all offers to sell the domain name, and not offers to sell to specific parties or classes of parties.

This does not, however, end our inquiry regarding the element of bad faith, since the Policy indicates that its listing of bad faith factors is without limitation. Thus we must still ask whether a general offer for sale in the circumstances of this case constitutes bad faith use of the domain name.

The value which Respondent seeks to secure from sale of the domain name is based on the underlying value of Complainantís trademark. This value is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services. Respondent has failed to establish any legitimate domain name-related use for Complainantís trademark, in a context in which such legitimization might be possible. The Respondent having failed to present any such justification, the Panel may reasonably infer that Respondent neither intended to make nor has made any legitimate use of Complainantís trademark in connection with the "toefl.com" domain name.

In light of the undisputed record in this proceeding, the Panel concludes that the Respondent did in fact register and use the "toefl.com" domain name in bad faith. It has made no use of the domain name other than to offer it for sale at a price that is likely to substantially exceed its out-of-pocket costs of registration, and the price that the domain name commands would largely be based on the trademark of the Complainant. Although a supplemental, as opposed to competitive, user of the domain name might be willing to pay the price sought by Respondent, there is no reason based on the record to award this price to Respondent. The Respondent was the first-to-register, and in circumstances of legitimate registration and use this may secure its right to the domain name. However, because Respondent is contributing no value-added to the Internet Ė it is merely attempting to exploit a general rule of registration Ė the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it.

The Panel finds that the Respondent has registered and used the domain name "toefl.com" in bad faith, and that the Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

By requesting transfer of the domain name to itself, Complainant has effectively requested registration of the "toefl.com" domain name. Although there might be other legitimate users of the domain name that would seek registration subsequent to a cancellation of Respondentís registration, Complainantís request for registration should reasonably take precedence under a general first-in-time principle applicable to legitimate requests for registration.

The Panel will therefore direct the registrar to transfer the domain name "toefl.com" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, TOEFL, has engaged in an abusive registration of the domain name "toefl.com" within the meaning of paragraph 4(a) of the Policy, the Panel directs the registrar to transfer the domain name to the Complainant, Educational Testing Service.

 


 

Frederick M. Abbott
Sole Panelist

Dated: March 16, 2000


Footnotes:

1. WIPO, The Management of Internet Names and Addresses: Intellectual Property Issues, Report of the WIPO Internet Domain Name Process, http://wipo2.wipo.int, Apr. 30, 1999, WIPO Pub. No. 439 (E)[hereinafter WIPO Report], at paras. 163-77.

2. Id., at page (v).

3. When a domain name is used on goods, it takes on the characteristics of a trademark.

4. See, e.g., Avery Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. LEXIS 19954.

5. Id.

6. Paris Convention for the Protection of Industrial Property (1883, as revised at Stockholm, 1967, and amended 1979), art. 6bis .