WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. TOEFL USA
Case No. D2002-0380
1. The Parties
The Complainant is Educational Testing Service, a not-for-profit corporation organised and existing under the Education Law of the State of New York, United States of America, with its principal place of business located in Princeton, New Jersey, United States of America.
The Complainant is represented by Lile H. Deinard, Esq., of Dorsey & Whitney LLP, 250 Park Avenue, New York, New York, United States of America.
The Respondent is TOEFL USA, of 6241 Lincoln Ave., #3, Buena Park, California, United States of America.
The Respondent is not represented in these proceedings.
2. The Domain Name and Registrar
The domain name at issue is <toeflusa.com>. The Registrar is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint electronically on April 23, 2002, and in hard copy on April 30, 2002. 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is May 1, 2002.
On April 25, 2002, the Center transmitted via email to Network Solutions, Inc. a request for registrar verification in connection with this case. On April 26, 2002, Network Solutions, Inc. transmitted by email to the Center a verification response confirming that the registrant is TOEFL USA, of 6241 Lincoln Ave., #3, Buena Park, California, 90620, United States of America, that the contact for administrative purposes is Jae Lee, TOEFL USA, 6241 Lincoln Ave. #3, Buena Park, California, 90620, United States of America, and that the contact for billing purposes is ValueWeb/Invoice Processing System, 3250 West Commercial Blvd. #200, Ft. Lauderdale, Florida, 33309, United States of America.
On May 1, 2002, the Center notified the Complainant of a formal deficiency and on the same day the Complainant filed an amended Complaint electronically.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center electronically transmitted on May 1, 2002. to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by May 21, 2002. No Response was received from the Respondent by the due date, and on May 27, 2002, Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. No reply by the Respondent to the Notification of the Respondent's Default was received.
Having received on June 19, 2002, Ms. Angela Fox's Declaration of Impartiality and Independence and her Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Ms. Angela Fox was formally appointed as the Sole Panelist. The Projected Decision Date was July 5, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.
4. Factual background
A. The Complainant
The Respondent has not contested the facts as presented by the Complainant. In the absence of any circumstances casting doubt on the Complainantís account, the Panel accepts the Complainantís factual assertions as true.
The Complainant is the largest, not-for-profit educational research and measurement institution in the world. It was formed in 1947 and since then has developed and administered tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for Americans and foreigners seeking inter alia preparatory school, college and graduate school admission, licenses for technical and paraprofessional occupations and teacher certification. The range and scope of the Complainantís testing activities means that, among Americans at least, most individuals will, at some stage in their lives, have prepared for and taken one or more of the Complainantís tests.
Since 1964, the Complainantís testing activities have included the evaluation of the English language proficiency of non-native English speakers. In this capacity, the Complainant developed and administers the "Test of English as a Foreign Language," which is widely used by government agencies, scholarship programs, licensing and certification agencies, and academic institutions in countries where English is the language of instruction. The test is available in computerized and paper-and-pencil form worldwide, including in China and South Korea, and is administered by authorized institutions or representatives under contract with the Complainant. This test has become widely known by the acronym TOEFL.
In addition to setting and administering the TOEFL tests, the Complainant's activities extend to providing TOEFL test preparation products including print publications, CD-ROMS and computer software. These products are marketed by reference to the TOEFL name.
The Complainant regards the TOEFL name as its trade mark and is the proprietor of United States Federal Trade Mark Registration 1103426 for the word TOEFL written across the device of a globe in respect of "information manuals dealing with educational testing" and "educational testing services, namely administering tests dealing with languages," with a filing date of January 13, 1978, and date of first use in commerce of May 1977. It also owns United States Federal Trade Mark Registrations 1103427 TOEFL for the same goods and services with the same filing date and a date of first use in commerce of February 1964 and 2461224 TOEFL for "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" with a filing date of December 15, 1999, and a date of first use in commerce of December 31, 1991.
The TOEFL trade mark is also registered by the Complainant in South Korea under registration numbers 3625 TOEFL for unspecified goods filed on November 26, 1992, 156948 TOEFL and Globe Device for "printed periodical and non-periodical publications, printed forms and tests, paintings and photographs" and "wood carvings" filed on 24 June, 1998, and 20871 TOEFL and Globe Device for "developing, administering and scoring tests to determine English language proficiency; distribution of informational materials about the tests; score disclosure services to examinees and institutions; conducting test-related research for the purpose of advancing testing theory and practice" registered on August 2, 1993.
Finally, in China, the TOEFL trade mark is registered under numbers 649697 TOEFL for "magnetic media in the form of audio tapes and audio cassettes for use in testing and evaluating English-language proficiency" registered on August 16, 1994, and 746636 TOEFL for "phonograph records, audio cassettes and reel-to-reel tapes, video cassette tapes, magnetic computer disks and computer programs" registered as of May 21, 1995.
The Complainant also owns registrations for the domain names <toefl.com> and <toefl.org> registered on April 11, 2002, and <toefl.net>, registered on July 21, 2000. The Complainant actively uses the first two domain names to host its official website for the TOEFL test.
B. The Respondent
The Complaint indicates that the Respondent registered the domain name at issue on December 28, 1998. It is in use for what appears to be a Korean-language website featuring prominent banners reading "Welcome to TOEFLUSA!," "TOEFLUSA" and "TOEFL USA." The website offers for sale publications entitled TOEFL A, TOEFL G, TOEFL K and TOEFL Q which, in the light of other content on the site, appear to be TOEFL test preparation materials. The TOEFL word trade mark also appears elsewhere in the text on the site, including as the English phrases "TOEFL Vocabulary" and "Computer-based TOEFL." The Complainant has no connection with the Respondent and has not authorized the Respondentís use of the TOEFL trade mark.
The Respondent did not file a Response.
5. Partiesí Contentions
A. The Complainant
The Complainant contends that the domain name at issue is confusingly similar to the TOEFL trade mark. It argues that the additional letters "usa" will be seen as the abbreviation for the United States of America and therefore as denoting status as a U.S. subsidiary or branch affiliated with, or sponsored by, the Complainant. The Respondent has no rights or legitimate interests in the domain name, because the Complainant owns exclusive rights in the TOEFL trade mark and has not authorized its use by the Respondent. The Respondent registered the domain name in bad faith in an effort to capitalize on the goodwill of the Complainantís TOEFL mark and is using it in bad faith to create the false impression that the Respondent is an authorized agent, licensee or representative of the Complainant.
The Complainant seeks the transfer of the subject domain name.
B. The Respondent
The Respondent did not file a Response.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, in order to succeed in an administrative proceeding the Complainant must prove all three of the following: (1) that the domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; (2) that the Respondent has no rights or legitimate interests in the domain name; and (3) that the Respondent has registered and is using the domain name in bad faith. Unless each element is proved to the satisfaction of the Panel, no relief can be granted.
A. The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Panel accepts that the Complainant has rights in the trade mark TOEFL acquired through registration and use. The Panel further finds that the disputed domain name is confusingly similar to the Complainantís trade mark.
TOEFL is an acronym which corresponds to no word in the English language. It appears in its entirety in the disputed domain name. The suffix "usa" does perhaps give rise to the possibility that some might view the domain name as the entirely different invented word, "toeflusa," but this possibility breaks down under closer scrutiny. The determination of confusing similarity need not be conducted in a vacuum, and uncontested evidence has been filed that the Respondent actually uses TOEFL USA at least once on its website as two distinct acronyms and uses TOEFL repeatedly on that site as an independent acronym. The absence of a space or other punctuation in the domain name itself is characteristic of Internet domain names. The Panel finds that the Respondent's domain name is intended to be read as TOEFL USA.
In the Panel's view, the addition of the suffix "usa" is apt to suggest the Complainantís goods and services, provided in a particular location. The TOEFL test is administered worldwide through authorized persons, and the TOEFL mark is one which might be expected, therefore, to be used in conjunction with geographical indicators. The fact that the Complainantís trade mark is the first and therefore most emphasized element within the domain name increases this tendency, and those encountering the domain name who are familiar with the Complainant's mark (and the Complainant's long-standing and widespread use suggests that there will be many such persons) are likely to be confused into believing that there is a connection with the Complainant's TOEFL brand.
The Panel notes that other Panels have reached the same conclusion in similar circumstances (Educational Testing Service v Park Jeong Educational Institute, WIPO Case No. D2001-1064, and Scholastic Inc. v Sai Tong Ho, WIPO Case No. D2001-1011).
B. The Respondent has no rights or legitimate interests in respect of the domain name
The Panel finds that the Respondent has no rights or legitimate interests in the domain name.
This point gave rise to some hesitation initially, because it is evident upon the Complainantís own evidence that, apparently before notice to it of any dispute, the Respondent was using the domain name and, on its website, a name corresponding to the domain name (TOEFL USA) in connection with an offering of goods, namely what appear to be preparation materials for the Complainantís TOEFL test. Provided such activities were bona fide, which this Panel takes to mean "in good faith," they would suffice to demonstrate a right or legitimate interest in the domain name on the part of the Respondent under Paragraph 4 (c) (i) of the Policy, even though they may constitute trade mark infringement and thus entitle the Complainant to a civil injunction.
The Complainant recognizes this danger and therefore seeks to impugn the Respondent's good faith. The Complainant argues that it has such an overwhelming reputation in the TOEFL mark in the United States where the Respondent is based and in the Republic of Korea, to which the language of the website suggests that it is addressed, that it is inconceivable that the Respondent could have adopted the domain name without intending to free-ride on the Complainant's goodwill, mislead the public and take unfair advantage of the trust which TOEFL test candidates may put into officially connected products. Such intent would not be compatible with good faith in commercial activities.
Had the Respondent put forward an alternative explanation for its use of the TOEFL USA name, the Panel might have been persuaded that good faith commercial use could not be ruled out. The TOEFL acronym is a registered trade mark, but it is also in practice an attractive and common shorthand for the full test name, "Test of English as a Foreign Language." As such, the use of this acronym plus a geographical indicator which together refer to TOEFL test materials for those wishing, for example, to take the test in the United States might not necessarily be in bad faith. This is so even though the use might well amount to trade mark infringement. An infringement need not be a deliberate act of bad faith.
This Panel accepts as a general rule, however, that in light of the logical impossibility of proving a negative, the burden of proof of rights or legitimate interests in a domain name shifts to the Respondent once a Complainant has put forward an arguable case [Clerical Medical Investment Group Limited v Clericalmedical.com (Clerical Medical Services Agency) WIPO Case No. D2000-1228]. In this case, the Complainant put forward an arguable case that the Respondent had no rights or legitimate interests in the domain name, and that what commercial activities the Respondent did carry out by reference to the domain name were in bad faith because they were inherently misleading about a connection between the Respondent and the Complainantís official products. The Respondent did not reply to the allegations and in the light of the Complainant's rights and reputation, and in the absence of any English-language statements that would assist in proving the Respondentís good faith in the website evidence filed by the Complainant, the Panel cannot find that the Respondent was, before notice to it of this dispute, using the domain name or a name corresponding to it in connection with a bona fide offering of goods or services.
There is no evidence that the Respondent was commonly known by the domain name, and in the light of the commercial nature of the Respondent's activities and the uncontested capacity of the domain name to mislead there is no basis for finding a legitimate non-commercial or fair use of the domain name in accordance with Paragraph 4 (c )(ii) and (iii) of the Policy.
On the evidence before it, therefore, the Panel finds that the Respondent has no rights or legitimate interests in the subject domain name.
C. The domain name has been registered and is being used in bad faith
Taking into account all the facts and information provided by the Complainant, the Panel finds that the subject domain name has been registered and is being used in bad faith.
Paragraph 4 (b) (iv) of the Policy provides that it shall be evidence of registration and use of a domain name in bad faith if the Panel finds that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on it.
The Complainant has argued plausibly that the Respondent adopted the domain name in an effort to capitalize unfairly on the Complainantís international reputation and goodwill in the TOEFL trade mark. What English-language content there is on the Respondentís website makes it evident that the Respondent knew about the Complainantís TOEFL test and was in fact steered by this knowledge in choosing its domain name. There is no English-language content on the site that distinguishes the Respondent from the Complainant, and the Respondent has failed to identify any Korean-language content that would do this for the intended visitors to the site. The choice of a domain name with the potential to mislead visitors into presuming a geographical affiliation with the Complainant was coupled in this case with an apparent failure to correct this presumption by the manner in which the domain name was actually used. There is nothing to refute the Complainantís assertion that the Respondent was intentionally seeking to create confusion or a misleading association with the Complainant as the author of official TOEFL test preparation materials and to profit from that confusion and false association.
For the reasons given above, the Panel decides that:
(i) The domain name registered by the Respondent is confusingly similar to a trade mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in the domain name; and
(iii) The Respondentís domain name was registered and has been used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel directs that the domain name <toeflusa.com> be transferred to the Complainant.
Angela Fox, Esq.
Dated: July 11, 2002