WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Fahri Aydos

Case No. D2010-1035

1. The Parties

Complainant is Educational Testing Service of Princeton, New Jersey, United States of America, represented by Dorsey & Whitney, LLP, United States of America.

Respondent is Fahri Aydos of Ankara, Turkey.

2. The Domain Name and Registrar

The disputed domain name <freetoefl.net> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2010. On June 23, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 23, 2010, GoDaddy.com, Inc. 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 July 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2010. On July 7, 2010 Respondent submitted an email communication to the Center. On July 14, 2010 the Center acknowledged receipt of the Respondent’s communication and informed Respondent the due date to submit the Response was July 22, 2010, and requested the Respondent to confirm whether its communication of July 7, 2010 should be regarded as its Response. The Center also informed Respondent in such email that if it would not receive any confirmation by Respondent by the Response due date, the communication would be regarded as its Response and provided to the Panel on its appointment. The Respondent did not submit any further communications.

The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on July 30, 2010. 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 Panel notes the Complainant’s proposed reply dated July 15, 2010 which has been brought to its attention by the Center. Having regard to the Panel’s discretion under the Rules, the Panel notes that it was able to render the instant decision with regard to the Complaint and Respondent communication noted above.

4. Factual Background

The trademark upon which the Complaint is based is TOEFL. According to the documentary evidence and contentions submitted, the trademark was registered in the United States of America under Nos. 1103427 as of October 3, 1978; 2461224 as of June 6, 2001; 3168050 as of November 7, 2006; and 3478244 as of July 29, 2008, as well as in other countries throughout the world, including in Turkey under No. 882054 as of June 10, 2009.

According to the documentary evidence and contentions submitted, Complainant owns the registrations of the domain names <toefl.org>, <toefl.eu>, <toeflmiddleeast.org>, <toeflibt.org>, <toefl-ibt.net>, <toefl-ibt.net>, <toeflgoanywhere.org>, and <toefl-test.mobi>.

According to the documentary evidence and contentions submitted, Complainant has been the leader since 1947 in developing and administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency, and Complainant’s tests are offered in more than 180 countries.

The domain name <freetoefl.net> was registered on March 1, 2007. According to the documentary evidence and contentions submitted, the disputed domain name resolves to a website offering test preparation guides and materials that are similar to and compete directly with Complainant’s goods and services.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name <freetoefl.net> is essentially identical and certainly confusingly similar to Complainant’s trademark because it incorporates the TOEFL trademark in its entirety with the addition of the generic or descriptive word “free”, thus suggesting an association with Complainant so that users might be led to believe that Respondent’s website is affiliated with or endorsed by Complainant or that Respondent’s use of the disputed domain name has been authorized by Complainant.

Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because: (i) Respondent is not authorized by Complainant to use the TOEFL trademark; (ii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; (iii) Respondent is not commonly known as TOEFL; (iv) Respondent’s use of the TOEFL trademark to “bait” customers to its own test taking products and services is commercial and does not constitute fair use; and (v) although Respondent offers test preparation goods, even resellers of trademarked goods and services have no absolute right to register and use domain names containing the trademark at issue.

Complainant also contends that Respondent registered the disputed domain name in bad faith because: (i) Respondent was certainly aware of the TOEFL trademark since this is well known, and registration of a domain name containing a well-known trademark constitutes bad faith per se; and (ii) Respondent had actual and constructive notice of Complainant’s trademark because Respondent offers for sale materials that assist test takers preparing for the TOEFL test.

Finally, Complainant contends that Respondent is using the disputed domain name in bad faith because: (i) Respondent aims to capitalize and free-ride on the fame and reputation of Complainant’s mark; (ii) other providers of preparation services for Complainant’s tests carry on their businesses successfully without incorporating Complainant’s trademarks in the domain name for their websites; and (iii) Respondent’s use of the domain name suggests a false designation of origin or sponsorship for any goods or services that Respondent may offer in its website.

B. Respondent

Upon receipt of the Center’s Notification of Complaint and Commencement of Administrative Proceeding, Respondent sent an email to the Center stating inter alia that “I do not persist to keep the domain freetoefl.net”. However, Respondent states that “it is diffucult to make a site with page rank 6, and users will have confusions, so I
couldn’t move.”

Respondent also argues that “[t]here are no confusion with ETS’s services and freetoefl.net’s. My applications are very simple and anyone can see that they do what they tend to do. There are no statement that mention they are similar
to ETS’s.”

Finally, Respondent asserts that at least one site user stated that the site helps
improve language skills and that, as a useful site, it should not disappear. Respondent’s communication was concluded with the following statement: “These are all as my argument.”

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied from the evidence that the TOEFL mark is distinctive and has acquired substantial reputation in the Complainant’s line of business. The addition of the word “free” does not in anyway detract from the similarly of the TOEFL mark. The Panel notes that another panel has reached the same conclusion in a similar circumstance (Educational Testing Service v. ESL Pro Systems, Ltd., WIPO Case No. D2006-0245):

“The Panel finds that the Disputed Domain Names <free-toefl> and <free-toeic> are nearly identical, or if not identical, are confusingly similar to the Complainant’s Marks. The addition of the words “free” and “pratice-test” in these Disputed Domain Names is not sufficient to escape the finding of similarity. Indeed, it is well established that the addition of generic words to a mark does nothing to change an otherwise identical or confusingly similar domain name. PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity).”

Respondent argues that there is no confusion with Complainant’s services and trademark, and that there is no statement indicating that Respondent’s goods are similar to Complainant’s. However, the fact is that persons familiar with the Complainant’s TOEFL mark would be confused or misled into thinking that the domain name <freetoefl.net> is somehow connected or associated with Complainant. The likelihood is, therefore, that Internet users would assume that Respondent’s website is either authorized or endorsed by Complainant.

Finally, the addition of the suffix “.net” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

There is evidence in the record that Respondent is in no way associated with the Complainant, that Respondent is not known by the TOEFL name, and that Respondent has no other authority or permission to use the Complainant’s trademark.

Respondent argued that an Internet user would not be confused as to what is offered in Respondent’s website because Respondent’s goods and materials are not similar to Complainant’s. However, Respondent was offering for sale through Respondent’s website vocabulary tests, reading exercises, and other materials for planning and test preparation. Therefore, the evidence strongly indicates that Respondent was using the disputed domain name for commercial gain by directing Complainant’s potential or actual consumers to a website offering similar and competitive products.

Such use constitutes a prima facie showing for purposes of Policy paragraph 4(a)(ii) that Respondent lacks rights or legitimate interests in the disputed domain name. Also, Respondent’s infringing use of the disputed domain name can not constitute fair use. Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., WIPO Case No. D2004-0324. As pointed out by other panels in similar circumstances, it seems that the TOEFL mark is being used as “bait” to lead consumers to Respondent’s own test taking products and services. Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., supra; Amphenol Corporation v. Applied Interconnect, Inc. WIPO Case No. D2001-0296. Therefore, the Panel concludes that Respondent is using the disputed domain name to divert consumers searching for the Complainant’s website to its own website by capitalizing on the fame and goodwill of the Complainant.

Finally, Respondent cannot be treated as a reseller with a legitimate interest in the disputed domain name because Respondent sells products that are similar to or in direct competition with those of the original trademark owner. A respondent that uses a site to sell products which are different from the trademarked goods and that does not accurately disclose the registrant’s relationship with the trademark owner is not entitled to such defense. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.3.

In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

(i) Bad faith registration because of the fame of the TOEFL trademark

The Panel has found that the TOEFL trademark has acquired extensive and worldwide reputation. In light of the reputation of such trademark, it is clear that Respondent in all likelihood knew of the existence of Complainant’s TOEFL trademark.

As one panel held before, “given the Complainant’s worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name.” Caesar World, Inc. v. Forum LLC., WIPO Case No. D2005-0517.

In addition, the Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name can be an indication of bad faith. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. “null”, aka Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.

(ii) Bad faith use by attempting to capitalize and free-ride on the reputation of Complainant’s mark

As pointed out earlier, the Panel is convinced by all evidence produced in this case that Respondent intended to free-ride on Complainant’s reputation and goodwill by diverting Internet users and customers to a website for commercial gain.

The Panel takes the view that the content of the website here (whether it is similar or different to the business of a trademark owner) is relevant in the finding of bad faith use. This is so because where a potential visitor, after typing in a confusingly similar domain name, reaches the website site offering for sale goods or services that are similar to or in direct competition with those of the original trademark owner, there is a clear evidence of divertion of internet traffic.

In addition, an independent survey was conducted by the Panel on the website of Respondent on August 12, 2010. The Panel found out that the disputed domain name now redirects Internet users to Respondent’s website at “www.aydos.org”, which displays the same content as originally appearing on Respondent’s website at “www.freetoefl.net”. The Panel finds that this change is irrelevant for the resolution of the case.

In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name was registered and is being used in bad faith.

In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.

7. Decision

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 <freetoefl.net> be transferred to the Complainant.

Manoel J. Pereira dos Santos
Sole Panelist
Dated: August 13, 2010