WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. Park Jeong Foreign Language Institute
Case No. D2001-1064
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, United States of America.
Represented by Lile H. Deinard, Esq., of Dorsey & Whitney LLP, 250 Park Avenue, New York, New York 10177, United States of America.
The Respondent is Park Jeong Foreign Language Institute, Shin-Gu Bldg., 620-2 Shinsa-dong, Seoul, 135-120, Korea.
Respondent is not represented.
2. The Domain Name and Registrar
The domain names with which this dispute is concerned are:
("the domain names").
The Registrar with which the domain names are currently registered is Network Solutions Inc., of 505 Huntmar Drive, Herndon, Virginia 20170, United States of America.
3. Procedural History
3.1 The Complaint was first filed electronically on August 24, 2001, and in hard copy on September 3, 2001, at the WIPO Arbitration and Mediation Center (the "WIPO Center"). On September 20, 2001, pursuant to Paragraph 4(b) of the Rules and paragraph 5 of the Supplemental Rules, WIPO Center notified Complainant of a deficiency in the Complaint in that it had wrongly identified the Registrar as Dotster, Inc. Following receipt of the notification, Complainant, on the same day, filed an amended Complaint electronically, followed by a hard copy on September 25, 2001.
3.2 On September 21, 2001, the WIPO Center requested verification of the domain name details from the Registrar and on September 24, 2001, the Registrar verified:
(i) that a copy of the Complaint had been served on it by Complainant;
(ii) that the domain names are registered with it;
(iii) that the current registrant of the domain names is Respondent;
(iv) that the domain names are currently in "Active" status;
(v) that the Registrar's Service Agreement Version 5 (English) is in effect;
And verified the contact details for the Billing Contacts, the Administrative Contacts and the Technical Contact for the domain names.
3.3 On September 26, 2001, all formal requirements for the establishment of the Complaint were found by the WIPO Center to be in compliance with the applicable ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules").
3.4 On September 26, 2001, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding by courier, facsimile and by e-mail to Respondent, the Administrative Contact, the Billing Contact and the Technical Contact and by e-mail to the postmaster at each of the domain names.
It appears from the record that the e-mail transmissions to the postmaster at each of the domain names were undelivered. The facsimile transmission to Respondent (at whose address the Administrative and Billing Contacts are located) was delivered and the courier delivery was released by customs in Seoul but there is no evidence that it was signed for by Respondent.
Paragraph 2(a) of the Rules provides that it is the provider's responsibility to employ reasonably available means calculated to achieve actual notice to the Respondent. The paragraph further provides that this responsibility is discharged by sending the Complaint to each of the addresses shown in the Registrar's WHOIS database for the domain name holder and the Technical and Administrative Contact, and the address supplied for the Billing Contact and by sending the Complaint in electronic form to the respective e-mail addresses, to the postmaster at the domain name and to any address on an active web page to which the domain name resolves and to any other address notified to the sender by Respondent or provided by Complainant. The Panel is of the opinion that in the light of the information available to it, WIPO has employed all means reasonably available to it to achieve notice to Respondent and that Respondent received at least the facsimile delivery of the Complaint.
3.5 The Administrative Proceeding commenced on September 26, 2001, and under paragraph 5(a) of the Rules, the Response was due on October 16, 2001. Due to an administrative or clerical error, the date for response notified to Respondent was October 26, 2001.
3.6 No Response was filed, and on October 29, 2001, WIPO Center sent Notification of Respondent Default to Respondent and to the Administrative, Billing and Technical Contacts.
3.7 On November 1, 2001, WIPO Center noted that a copy of the Notification of Commencement of Administrative Proceeding had been sent not to the Registrar (Network Solutions, Inc.) but to Dotster, Inc. (specified as the Registrar in the Complaint originally filed). There was therefore, technically a breach of Paragraph 4(d) of the Rules which provides that: "The Provider shall immediately notify the …….. the concerned Registrar(s) ……… of the date of commencement of the administrative proceeding." The Registrar was notified forthwith when the error was discovered. This, and the matter referred to in paragraph 3.5 is dealt with below as a Preliminary Issue.
4. Preliminary Issues
4.1 The procedural errors referred to in paragraphs 3.5 and 3.7 above have not had a prejudicial effect on the position of Respondent nor have they seriously affected the disposition of the proceeding. Nevertheless, they are matters which need to be dealt with by the Panel.
4.2 Paragraph 10 of the Rules sets out the powers and duties of the Panel and provides that the Panel shall:
(a) conduct the proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules;
(b) ensure that the parties are treated with equality and ensure that each Party is given a fair opportunity to present its case;
(c) ensure that the proceeding takes place with due expedition.
4.3 Paragraph 15(a) of the Rules requires the Panel to decide a Complaint, "in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 10(a) of the Rules, empowering the Panel to conduct the proceeding in such manner as it considers appropriate, gives the Panel the power to deal with procedural issues such as this in a way conducive to the effective disposal of the matter, provided it does not offend the Policy or the Rules. It is not unlike the so-called "slip rule" found in the Rules of Court in many jurisdictions. See for example Order 1, Rule 8 of the Rules of the Federal Court of Australia, which provides that the Court may dispense with compliance with any of the Rules of the Court.
4.4 Having regard to the fact that:
(a) the errors were purely procedural
(b) the Respondent suffered no prejudice from non-compliance with paragraph 5(a) and indeed benefited from the extra time afforded
(c) the error in the despatch of the Notice of Commencement was duly rectified immediately it was discovered and the delay did not materially affect the disposition of the matter
the Panel, in the exercise of its discretion, excuses the errors and proceeds to determine the matter.
5. Factual Background
5.1 Complainant is a United States not-for profit-corporation incorporated under the Education Law of the State of New York. It carries on business as an educational research and measurement institution. It was formed in 1947 and claims to be the largest such organization in the world. Its principal business is in the development and administration of tests for measuring skills, aptitudes, achievement and competency for persons, both American and foreign, seeking entry to educational institutions and occupational licences and certification. Since 1964 it has developed an English language test which it calls the "Test of English as a Foreign Language", from which the acronym and trademark TOEFL is derived. The test is used for evaluating the English language ability of persons seeking employment in the United States or immigration to the United States, or admission to educational institutions in the United States and other English language countries. Complainant produces and distributes a wide range of printed and electronic publications under its TOEFL trademark throughout the world including China and South Korea. Complainant claims that as a consequence, its name and trademark and the services which it provides are world famous.
5.2 Complainant is the registered owner of several US trademark registrations consisting of, or including the word TOEFL, and claiming first use in commerce dating from 1964. These registrations date from as early as 1978, and cover, inter alia, educational testing services, information manuals, computer programs, disks, tapes, CD Roms and like media for use in the field of language proficiency testing and test preparation. Complainant has corresponding trademark registrations in South Korea dating from 1983, Taiwan dating from 1994 and China dating from 1986 (Complaint Exhibit B).
5.3 Complainant is also the registrant of the domain names <toefl.com>, <toefl.net> and <toefl.org>. The WHOIS database of Network Solutions Inc., indicates that these records were created on April 4, 2000, July 21, 2000, and October 24, 1994, respectively.
5.4 As no Response has been filed, no information is available with respect to Respondent, other than that provided by Complainant. Complainant asserts that at some time in the year 2000, Complainant filed suit against Respondent for infringement of copyright in certain of its TOEFL materials. The action was withdrawn, pursuant to a Settlement Agreement dated March 30, 2001, a copy of which is annexed to Complainant as Exhibit G. Under that Settlement Agreement, Respondent acknowledges infringement of the TOEFL materials, agrees to use its best efforts to retrieve and destroy infringing materials which it had distributed, undertakes not to commit further infringements and agrees to pay 50 million Korean Won to Complainant by way of compensation for damages.
5.5 None of the disputed domain names resolves to an active website. Each resolves to a page stating that the site is "Under Construction" and showing a hyperlink to the website of the Technical Contact, Affinity Internet Inc.
6. Parties' Contentions
6.1 Complainant's contentions may be briefly summarised as follows:
(i) Each of the domain names is evocative of, and confusingly similar to Complainant's famous TOEFL trademark, and the commercial impression conveyed by the domain names is that any associated goods or services are sponsored, endorsed or affiliated with Complainant and/or its TOEFL test. Complainant asserts that it has no association with Respondent and has not granted any permission, authority or consent to Respondent to register or use the domain names. Complainant further contends that the domain names would falsely suggest an origin or sponsorship by Complainant for any associated goods or services offered by Respondent on or in association with any website to which the names might resolve.
(ii) Respondent cannot demonstrate any legitimate right or interest in the domain name, has not used or made any demonstrable preparations to use the names or a name corresponding to them in connection with any bona fide offering of goods or services, nor is it making any legitimate non-commercial or fair use of the domain names and is merely "squatting" on the names.
(iii) Respondent has registered the domain names without any bona fide basis for such registration, in an attempt to capitalise unfairly on the goodwill of the TOEFL mark. Complainant submits, consistently with previous Panel decisions, that the showing of bad faith is not limited to the circumstances enumerated in paragraph 4(b) of the Policy and cites in support a number of prior Panel decisions including Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, Empresa Brasileira de Telecomunicações S.A. – Embratel v. Kevin McCarthy, WIPO Case No. D2000-0164, Educational Testing Service v. NetKorea Co., WIPO Case No. D2000-0087 and others. These cases are cited to support Complainant's submission that bad faith is to be found where Respondent selected the domain name knowing of the reputation of the mark in question and that bad faith use of the name may be demonstrated by mere passive holding of the domain name.
(iv) Complainant further submits that Respondent is guilty of a pattern of bad faith conduct by reference to Respondent's admission of copyright infringement in the TOEFL materials and agreement to settle and pay damages.
6.2 No Response has been filed.
7. Applicable Dispute
7.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution Policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.
7.2 To succeed in its Complaint, Complainant must show that each of the conditions of Paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
8. Discussion and Findings
Identical or Confusingly Similar Trademarks
8.1 Each of the domain names incorporates as its principal distinguishing feature Complainant's TOEFL trademark. In the case of the "china" domain names, the TOEFL component is preceded by the geographic name "China", and although the fact that this constitutes the first component of the name, and therefore must be given due weight, the fact of the matter is that the distinguishing part of the name is TOEFL. It is well recognised common practice to add to a name or trademark a geographic designator either as a prefix or as a suffix to indicate a localised origin or branch or subsidiary of the main designator. Thus the likely reaction of Internet users seeing the "china" domain names would be that the name designated a site operated by, or on behalf of, Complainant or a subsidiary or associate of Complainant and they would therefore be confused. The position here is on all fours with that discussed by the three member Panel in the "Chinascholastic" Case (Scholastic Inc., v. Sai Tong Ho, D2001-1011) and the cases cited therein. The Panel therefore finds that the "china" domain names are confusingly similar to Complainant's trademarks.
Similar, though slightly different considerations apply in the case of the "cbt" domain names. Whilst the letters "cbt" do not appear to act as a geographic designator, nor do they have any readily apparent other meaning, the dominant and distinctive part of the domain name is Complainant's mark TOEFL. The likelihood is therefore, again, that Internet users would assume some connection or association between the domain name and Complainant. Accordingly, the Panel also finds the "cbt" domain names to be confusingly similar to Complainant's trademark.
With respect to the "rc" domain names, it is again likely that users would be most influenced by the word TOEFL and assume that the letters "rc" indicated a sub-set of the TOEFL enterprise. They may see the letters "rc" as indicating the Republic of China, and therefore assume the domain name indicated some connection between Complainant and a subsidiary or affiliate in, or activity directed to, Taiwan. Whatever the case may be, confusion is likely, and the likelihood of confusion is further heightened by the fact that Complainant's trademark comprises the first and dominant part of the domain name.
The Panel therefore finds that each of the domain names is confusingly similar to a trademark in which Complainant has rights.
Legitimate Right or Interest
8.2 The burden of proof in showing that each of the elements required by paragraph 4(a) of the Policy are present rests with Complainant. The burden of proof is, however, a shifting one and Complainant has established, on the facts, a clear prima facie case of Respondent's absence of such legitimate right or interest. Respondent has failed to rebut that prima facie showing.
The Panel therefore finds that Complainant has discharged the burden of establishing that Respondent has no legitimate right or interest in the domain names.
Use and Registration in Bad Faith
8.3. Complainant has established that it has an extensive reputation in the TOEFL trademark and that its rights in that mark were known to Respondent. Complainant's registrations of the trademark are such that any use thereof by Respondent in Korea would be in infringement of Complainant's rights. Complainant has further established that Respondent has been guilty of infringement of Complainant's other intellectual property rights in its copyright materials which it promotes under its TOEFL trademark. The domain names were registered in May 2000, at which time, Respondent must clearly have been aware of the rights and reputation of Complainant in the TOEFL trademark. To proceed with registration in the face of such knowledge clearly demonstrates bad faith on the part of Respondent.
Respondent does not appear to have made use of the domain names in the sense of using them to lead to an active website. However, as has been pointed out in many Panel decisions, including those cited by Complainant, mere inactive or passive holding of a domain name may constitute evidence of bad faith where Respondent can demonstrate no legitimate right or interest in the domain name, and the domain name is confusingly similar to the trademark of another. In such circumstances, it is difficult to ascribe any reason to the registration of the domain names other than one arising out of one or other of the circumstances enumerated in paragraph 4(b) of the Policy. Those circumstances are not, in any event, exhaustive of the categories of bad faith. It would be a strange distortion of the Policy if passive "squatting" on a domain name derived from the property of another could not be brought within provisions designed to combat cybersquatting.
The Panel therefore finds that each of the domain names were registered and are being used in bad faith.
9.1 The Panel decides and orders that:
(i) The domain names are confusingly similar to a trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in the domain names;
(iii) The domain names were registered and are being used in bad faith;
(iv) The domain names shall be transferred to Complainant.
D. J. Ryan
Dated: November 15, 2001