The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America, represented by Dorsey & Whitney LLP, United States of America.
The Respondent is ETS ETS of Seoul, Republic of Korea.
The disputed domain name <ets-test.org> is registered with Directi Internet Solutions Pvt. Ltd. doing business as PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on March 18, 2009, and in hardcopy on March 23, 2009. On March 20, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. doing business as PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On March 23, 2009, the registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 March 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 15, 2009.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on April 23, 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.
The Complainant, Educational Testing Service, is a nonprofit corporation with its principal place of business in Princeton, New Jersey. It develops and administers various achievement and admissions tests, many of them used for the higher education setting. On May 13, 1952, the Complainant obtained registration for “ETS” plus design from the United States Patent and Trademark Office, for “testing service-namely, developing[,] constructing, and administering tests and testing programs for specialized educational purposes; conducting research for the purpose of advancing test theory and practice; and providing advisory testing services to schools, colleges, and other educational institutions.” The registration indicates first use of the mark in 1949. In subsequent years, the Complainant registered a number of other marks that include the ETS phrase, for various products and services related to testing.
The Complainant has also registered the ETS mark in many other countries. In the Republic of Korea (“Korea”), where the Respondent is based, the Complainant received registration for the first of its ETS marks on September 8, 1994. The Complainant registered the domain name <ets.org> on October 10, 1994.
The Respondent, identified as “ETS ETS,” registered the disputed domain name on February 5, 2009.
The Complainant contends that: (i) the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights; (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.
With respect to the bad faith element, the Complainant contends that the Respondent: provided false information in registering the domain name, and fraudulently claimed to be ETS; and used the domain name to create a counterfeit website that mirrored the Complainant's own website at “www.ets.org,” copying some of the Complainant's copyrighted material. The Complainant states that the Respondent operated a “phising” scam to seek disclosure of ETS-assigned usernames and passwords.
The Respondent did not reply to the Complainant's contentions.
Under paragraphs 5(e) and 14(a) of the Rules, the Panel may decide the dispute based on the Complaint. The Panel may also draw appropriate inferences from such default, according to paragraph 14(b) of the Rules.
“ETS,” the initials for Educational Testing Service, is a well-recognized mark, associated with the Complainant's testing products and services. The Complainant has easily established rights in the mark. The disputed domain name incorporates the Complainant's mark, and is followed by a hyphen, the generic “test” (not coincidentally, the root word for “testing,” which represents the second letter of ETS), and then the top level domain. The domain name is nevertheless confusingly similar to the Complainant's mark. Previous UDRP panels, in decisions involving the Complainant's other marks, have reached the same conclusion. E.g., Educational Testing Service v. Seung Suk Ha, WIPO Case No. D2001-1063 (domain names <toefltests.com>, <toefltests.org>, and <toefltests.net>, held confusingly similar to the Complainant's TOEFL mark); Educational Testing Service v. Jong-Cheol Seo, WIPO Case No. D2006-0056 (domain name <realtoeic.com>, held confusingly similar to the Complainant's TOEIC mark).
The Complainant has established the first element.
The Complainant has met its initial burden of making a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The burden shifts to the Respondent to demonstrate any such right or legitimate interest. The Respondent has defaulted. The Panel is unable to identify any circumstances that would demonstrate the Respondent's rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is established.
In order to prevail, the Complainant must also show that the disputed domain name “has been registered and is being used in bad faith,” as set forth in paragraph 4(a)(iii) of the Policy.
Korea is a test-oriented culture, with many students preparing for study abroad. The TOEFL (Test of English as a Foreign Language) and TOEIC (Test of English for International Communication) tests, developed and administered by the Complainant, are well known in Korea. It is fair to say that the Complainant's products and services affect a significant number of Korean students.
The Complainant provided as an attachment to the Complaint, copies of the contents of the Respondent's website resulting from the disputed domain name, as they appeared before the commencement of this proceeding. At the top of the Respondent's website was a stylized version of “ETS,” and next to it, the slogan “Listening. Learning. Leading.” These are identical to what is seen in the Complainant's website for its domain name <ets.org>. The Respondent's website also prominently displayed the Complainant's domain name in conspicuously large letters “ETS.org” (even though the Respondent's own domain name is different). At the bottom of the website appeared the text, “Copyright © 2007 by Educational Testing Service. All rights reserved.” (The Respondent had not registered the disputed domain name until February 5, 2009.)
In brief, the Respondent's activities as a whole indicate a rather blatant attempt to mislead and deceive Internet users into thinking that the Respondent is the Complainant, i.e., Educational Testing Service. The Panel determines such activities to be in bad faith.
Under the Policy, paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of bad faith in the registration and use of a domain name. The Panel independently determines that bad faith is shown here under paragraph 4(b)(iv), in that “by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site.”
The third element is established.
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 <ets-test.org> be transferred to the Complainant.
Dated: May 7, 2009