WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Seung Suk Ha

Case No. D2001-1063

 

1. The Parties

Complainant is Educational Testing Service, a not-for-profit corporation with a principal place of business in Princeton, New Jersey, United States of America ("Complainant"). Respondent is Seung Suk Ha, apparently an individual, with an address in Chicago, Illinois, United States of America ("Respondent").

 

2. The Domain Names and Registrar

The domain names at issue are <toefltests.com>, <toefltests.org>, and <toefltests.net> registered with Dotster, Inc. ("Dotster"), 11807 N.E. 99th Street, Suite 1100, Vancouver, Washington 98682.

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received the Complaint via email on August 24, 2001, and in hard copy form on September 3, 2001. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). Complainant made the required payment to the Center. The formal date of the commencement of this Administrative Proceeding is September 20, 2001.

On September 19, 2001, Dotster confirmed by e-mail to the Center that the domain names <toefltests.com>, <toefltests.org>, and <toefltests.net> are registered with Dotster and that the Respondent is the current Registrant of the domain names.

On September 20, 2001, the Center transmitted to Respondent, who is listed on Dotsterís Registrar Verification as the Registrant and as Technical and Administrative Contact, and to the postmaster of each of the three domain names at issue, the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via email, and transmitted the same to Registrant at both the current and former street addresses Registrant had provided to Dotster. The Center advised, inter alia, that the Response was due by October 10, 2001. The email messages to <postmaster@toefltests.org> and <postmaster@toefltests.net> were not successfully transmitted because those addresses had "permanent fatal errors"; however, the email messages to the other addresses (<ha_seung_suk@hotmail.com> and <postmaster@toefltests.com>) were successfully transmitted, and the courier packages were delivered on September 24, 2001.

On October 11, 2001, having received no Response or other communication from Respondent, using the same contact details as were used for the Commencement Notification, the Center transmitted to the parties a Notification of Respondent Default via email. Again, the <postmaster@toefltests.org> and <postmaster@toefltests.net> addresses had "permanent fatal errors", but the email to the other addresses was successfully transmitted.

On October 17, 2001, pursuant to Complainant's request to have the dispute decided by a single-member panel, the Center appointed Sally M. Abel as Panelist.

Having reviewed the communications records in the case file, the Administrative Panel ("the Panel") finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from Respondent.

 

4. Factual Background

Since 1947, Complainant, the largest private not-for-profit educational research and measurement institution in the world, has developed and administered 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, and the like. Since 1964, Complainant has used the mark TOEFL (the acronym for "Test Of English As A Foreign Language") in developing and administering tests to assess English language proficiency of non-U.S. citizens seeking private or government employment in the United States, immigration to the United States or admission to educational institutions in the United States or in other countries where English is the language of instruction. The TOEFL® test is administered in over 100 countries. Complainant considers the trademark to be famous and recognized in every field of endeavor in the United States, including the professional, occupational, economic, governmental, institutional and industrial sectors.

Complainant owns trademark registrations in the United States for TOEFL and for TOEFL and design for its educational testing services, as well as for related publications and software, including the following:


MARK

REG. NO.

DATE OF REGISTRATION

GOODS/INTíL CLASS

TOEFL and Design

1,103,426

October 3, 1978

Information manuals dealing with educational testing in Intíl Class 16; Educational testing services-namely, administering tests dealing with languages in Intíl class 41.

TOEFL

1,103,427

October 3, 1978

Information manuals dealing with educational testing in Intíl Class 16; Educational testing services-namely, administering tests dealing with languages in Intíl class 41.

TOEFL

2,461,224

June 19, 2001

Computer programs recorded on magnetic disks, tapes, compact disks, CD-ROMs, laser disks, video disks, optical disks, audio cassette tapes and video tapes for use in the field of language proficiency testing and test preparation in Intíl Class 9.

Complainant apparently also has applied to register or has registered TOEFL and/or TOEFL and design as trademarks outside the United States; however Complainant has not submitted any evidence of such applications or registrations.

Complainant actively uses the domain names <toefl.com> and <toefl.org> to link to the official website for Complainantís English language proficiency exam. Content on the website indicates that "approximately 1,200 institutions test more than 250,000 individuals annually" under the TOEFL Institutional Testing Program.

On October 27, 2000, Respondent obtained the domain names <toefltests.com>, <toefltests.org> and <toefltests.net>. There has never been any relationship between Complainant and Respondent; Complainant has not authorized Respondentís registration or use of the domains in question. None of the three domains links to an active website. Respondent has made no active use of any of the domains to date.

 

5. Parties' Contentions

A. Complainant

The Complaint is sufficient to allege that Respondent has registered a domain name which is identical or confusingly similar to Complainant's trademarks and service marks, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

 

6. Discussion and Findings

Respondent has defaulted. Paragraph 14 of the Rules provides that the Panel may draw such inferences from such a default as it considers appropriate. Accordingly, the Panel infers from Respondent's silence that Complainant's allegations are, in fact, correct.

Complainant has therefore satisfied the requirements of Paragraph 4(a) of the Policy. The domain names <toefltests.com>, <toefltests.org> and <toefltests.net> are confusingly similar to Complainant's TOEFL trademarks and service marks. Respondent has simply added the most obvious generic term, "tests", to Complainantís mark used in connection with testing services. Respondent has no rights or legitimate interests in the domain names. Respondentís selection of the domains in question suggests an attempt to capitalize unfairly on Complainantís goodwill in the TOEFL mark; Respondent has done nothing to counter that inference. Such bad faith is not excused by the passive holding of the domain names in question. See Empresa Brasileira de Telecomunicações S.A. Ė Embratel vs. Kevin McCarthy, WIPO Case No. D2000-0164. As the factors establishing bad faith registration and use identified in the Policy are exemplary in nature and nonexhaustive, and Respondent has not responded to Complainantís allegations of the same, the Panel finds that Complainant has established bad faith registration and use with regard to each of the three domain names at issue.

 

7. Decision

Because the undisputed evidence permits a finding in favor of Complainant on each element of its claim, and there is no evidence to the contrary, the Panel decides that Complainant has met its burden of proof with respect to each of the three elements of Paragraph 4(a) of the Policy.

Accordingly, the Panel requires that the registration of each of the domain names at issue be transferred to Complainant.

 


 

Sally M. Abel
Sole Panelist

Dated: October 31, 2001