WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Erhan Bayram

Case No. D2011-0276

1. The Parties

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

The Respondent Is Erhan Bayram of Istanbul, Turkey.

2. The Domain Names and Registrar

The disputed domain names <online-toefl.com>, <online-toeic.com> and <toeflonline.org> are registered with IHS Telekom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2011. On February 10, 2011, the Center transmitted by email to IHS Telekom, Inc. a request for registrar verification in connection with the disputed domain names. On February 11, 2011, IHS Telekom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

In its email IHS Telekom, Inc. indicated that the language of the registration agreement was in Turkish.

On the February 25, 2011 the Center sent a notification to both Parties stating that according to information provided from the concerned registrar, the language of the registration agreement for each disputed domain name is Turkish, hence the Complainant should i) provide evidence of an agreement between the Complainant and the Respondent in English or, ii) submit the Complaint in Turkish or, iii) submit a request with supporting arguments for English to be the language of the administrative proceedings.

In response to the notification the Complainant emailed the Center and copied the Respondent on February 28, 2011 requesting the language of the proceedings be English as upon information and belief, the Respondent has registered many English-language domain names as evidenced in the attached schedule. The Complainant relied on the fact that as is the case with the disputed domain names many of the registrations in the schedule relate to English-language services and it is clear that the Respondent directs its services at English speakers. The Complainant argued that the foregoing demonstrate that the Respondent has a clear grasp of English and will not be materially prejudiced if the proceeding were conducted in English, whereas requiring Complainant to translate its filings into Turkish would impose substantial additional costs and undue delay. The Respondent sent an email regarding language of the proceedings on March 1, 2011 stating, inter alia, “It is true that I have a good command of English, however, I have never confronted such cases as law suit or official disputes, which made me hesitate to reply”.

The Center has informed the Parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings and that having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel.

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 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2011. The Respondent did not submit any formal Response. However, in its communication of March 1, 2011, the Respondent addressed issues raised in the Complaint.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on April 7, 2011. 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.

4. Factual Background

The Complainant is the largest private not-for-profit educational research and measurement institution in the world. It was founded on December 19, 1947. Since its formation in 1947, Complainant has been the leader in developing and administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for Americans and citizens of other countries seeking preparatory school, college and graduate school admission; licenses for technical and paraprofessional occupations; and teacher certification, among others. The Complainant develops, administers more than 50 million tests annually in more than 180 countries at more than 9,000 locations.

The Complainant has used, registered and applied to register the trademark TOEFL and variations thereof in the United States and around the world for a number of goods and services, including information manuals dealing with educational testing, and educational testing services, namely, administering tests dealing with languages, and computer programs for use in the field of language proficiency testing and test preparation. The earliest registration with the United States Patent and Trademark Office (USPTO) is October 3, 1978 with its earliest use recorded as 1964 as evidenced in Annex 4 of the Complaint. The Complainant also owns numerous registrations for its TOEFL trademark throughout the world as evidenced in Annex 5 of the Complaint. The Complainant registered its trademark TOEFL with the Turkish Patent Institute on June 10, 2009, as evidenced in Annex 6 of the Complaint.

The Complainant registered the domain names <toefl.org>, <toefl.com>, <toefl.net>, <toefl.eu>, <toefl.biz>, <toefl.mobi>, <toelf.us>, <toefl.info> and <toefl.asia> as evidenced in Annex 7 of the Complaint. The Complainant actively uses these domain names to host the official website for the TOEFL test.

The Complainant has used, registered and applied to register the trademark TOEIC and variations thereof in the United States and around the world for a number of goods and services, such as educational testing services, namely, administering tests dealing with language proficiency; informational manuals dealing with educational testing; and computer programs for use in the field of language proficiency testing. The earliest registration with USPTO is March 9, 1982 with its earliest use recorded as 1979 as evidenced in Annex 8 of the Complaint. The Complainant also owns numerous registrations for its TOICL trademark throughout the world as evidenced in Annex 9 of the Complaint. The Complainant registered its trademark TOEIC and variations thereof with the Turkish Patent Institute, the earliest registration is on August 7, 2004, as evidenced in Annex 10 of the Complaint.

The Respondent registered the disputed domain names <online-toefl.com> and <online-toeic.com> on September 1, 2010 and, and <toeflonline.org> on October 5, 2010.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the disputed domain names <online-toefl.com>, <toeflonline.org> and <online-toeic.com> be transferred to the Complainant.

The Complainant submits the grounds for these proceedings are listed in paragraph 4(a) of the Policy.

Identical or Confusingly Similar

The Complainant contends that as a result of its long and prominent use of both its TOEFL and TOEIC trademarks for and in connection with its products and services, the trademark has acquired worldwide recognition as identifying exclusively the products and services of the Complainant.

In addition, the Complainant notes it provides general information about the TOEFL test on this website, as well as registration information for taking the test anywhere in the world as evidenced in Annex 12 of the Complaint.

The Complainant submits that the Respondent’s disputed domain names are essentially identical and certainly confusingly similar to the Complainant’s TOEFL and TOEIC trademarks, as they incorporate the Complainant’s distinctive trademarks in their entirety. The primary elements of the disputed domain names are identical to Complainant’s well-known trademarks and the only difference between disputed domain names and the Complainant’s TOEFL and TOEIC trademarks is the mere addition of the generic or descriptive word “online.”

The Complainant avers the disputed domain names are likely to confuse consumers into believing that the Respondent is affiliated with or endorsed by the Complainant, or that the Respondent’s use of the disputed domain names is authorised by the Complainant.

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names and the Complainant’s registrations for the TOEFL and TOEIC trademarks predate the Respondent’s registration of the disputed domain names. The Complainant submits the trademark registrations evidence its exclusive rights in the trademarks and the Complainant has not authorized the Respondent to use any of its trademarks, nor is the Respondent commonly known by the disputed domain names.

The Complainant submits the Respondent has not made use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, nor could the Respondent do so in light of the notoriety of the Complainant’s trademarks and the Complainant’s exclusive rights in such marks.

The domain names <online-toefl.com> and <toeflonline.org> do not currently resolve to an active website as evidenced at Annex 3 of the Complaint. The Complainant notes the domain name <online-toeic.com> is currently inactive as evidenced at Annex 2 of the Complaint. Thus, there is no evidence that the Respondent is using or has made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

Registered and Used in Bad Faith

The Complainant contends the Respondent has registered the disputed domain names without any bona fide basis for such registration in an attempt to capitalise unfairly on the goodwill of the Complainant’s well-known TOEFL and TOEIC trademarks.

The Complainant submits it is highly unlikely that the Respondent selected the disputed domain names without being aware of the Complainant’s well-known TOEFL and TOEIC, and to proceed with registration in the face of such knowledge clearly demonstrates bad faith on the part of the Respondent.

The Complainant asserts the Respondent is making use of the disputed domain names in bad faith as the domain names are either dormant and any possible use of the disputed domain names to resolve to a website would create a strong likelihood of confusion between the source or sponsorship of the Respondent’s products and those offered by the Complainant would constitute bad faith use.

The Complainant states that by simply using the disputed domain names, the Respondent makes prominent trademark use of the Complainant’s TOEFL and TOEIC trademarks without authorisation from the Complainant and the Complainant has never consented to Respondent’s registration of the trademarks as a domain name, nor has the Complainant ever granted any of its proprietary rights to the Respondent.

The Complainant submits that the Respondent undoubtedly chose to register the disputed domain names in an effort to free-ride on the goodwill associated with the distinctive TOEFL and TOEIC trademarks in which the Complainant enjoys exclusive rights; and/or for the purpose of creating the false impression that the Respondent is an authorized agent, licensee or representative of the Complainant, which the Respondent is not.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Respondent sent email communication on March 1, 2011 in response to notification sent by the Center regarding language of the proceedings. The Respondent admitted that it has a good command of English and explained its hesitation to file a Response. Initially the Respondent accepts the Complainant’s arguments and states that it was ready to transfer the disputed domain names but later changed its mind. The Respondent decided not to transfer the disputed domain names as the Complainant should have registered the disputed domain names if they intended to use them, it intended to use the sites to provide information and to publish a blog for TOEFL and TOIEC exams which cannot be limited to the Complainant, nor can it be deemed infringement of the Complainant’s rights as it had no intention of running TOEFL or TOEIC tests online.

The Respondent also notes that there a number of books published under the names of Prepare TOEFL, Study TOEIC, or Sample TOEFL Tests, etc., and websites at the domains names <onlinetoefl.com>, <studytoefl.com>, <toefladvisor.com>, <toefl.gen.tr>, <toeflnet.com>, should also be an issue.

The Respondent contends it has the right to register the disputed domain names and states the term "online" is too general to restrict, so I have the right to teach TOEFL or advise about TOEFL or TOEIC online as do millions of teachers around the world.

Other than this communication the Respondent did not file a Response to the Complaint. Pursuant to paragraph 5(e) of the Rules, if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.

However, failure to respond in a Policy proceeding does not constitute an admission of any pleaded matter. The Panel will proceed to evaluate the Complainant’s evidence and its own examination of the Respondent’s website against the requirements of paragraph 4(a) of the Policy, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

6. Discussion and Findings

Language of the Proceedings

Pursuant to Rules, paragraph 11, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement, i.e., the default language of the proceedings is Turkish. The Complainant has submitted a motivated request that English be the language of proceedings including on grounds that the Respondent has a clear understanding of English. The Panel has discretion under the Rules, paragraph 11 to consider and rule on that request.

The Panel having considered both the Complainant’s request and the communications received from the parties notes the Respondent in its communication states that it has a good command of English. Furthermore, from the content and language used in its communication the Panel infers that the Respondent has the ability to understand allegations made against him and is capable of both defending himself and communicating in English.

In reaching its conclusion the Panel considered the Respondent’s stated and demonstrated ability to understand and communicate in English, the fact that translation would cause considerable delay and expense and finally that no injustice would be caused to either party. In accordance with the overriding requirements of paragraphs 10 (b) and 10 (c) of the Rules, the Panel is of the view that the language of the proceedings should be English.

The Panel turns to the merits of the case, paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain names be transferred to the Complainant:

Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain names be transferred to the Complainant:

(a) the domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the domain names; and

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant is the registered owner of several TOEFL and TOEIC trademarks with USPTO and in other countries, including, trademark registrations with the Turkish Patent Institute as evidenced in Annex 4 to 10 of the Complaint. The Panel finds that the disputed domain names are virtually the same as the Complainant’s trademark as the disputed domain names wholly incorporate the Complainant’s trademark which is sufficient to establish identity or confusing similarity. Following Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903, a domain name that reproduces the trademark in its entirety is confusingly similar to the mark. It has been stated in several decisions by other UDRP panels that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark.

The Panel finds that the addition of the generic word “online” does not distinguish the disputed domain names from the Complainant’s trademarks, Veuve Clicquot Ponsardin Maison Fondée en 1772 v. Net-Promotion, Inc., WIPO Case No. D2000-0347.

Although the Respondent suggests, if interested in the domain names, the Complainant should have registered the domain names prior to its registration, the Complainant is not required to create “libraries” of domain names in order to protect its trademark and goodwill, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.

The Panel recognises the Complainant’s rights and concludes that the disputed domain names are identical and confusingly similar with the Complainant’s trademarks.

The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled, consequently, the Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(a)(ii), the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative and it has therefore generally accepted under the Policy that, once a Complainant has presented a prima facie case of a Respondent’s lack of rights or legitimate interests in a domain name, the burden shifts to the Respondent.

The Complainant contends that the Respondent has no right or legitimate interest in the disputed domain names and is not commonly known by disputed domain names. This has not been contested by the Respondent and the Panel finds no evidence to suggest the Respondent is commonly known by the disputed domain names or that there are any grounds to establish a legitimate interest to justify choosing the disputed domain names which incorporate the Complainant’s trademarks.

Furthermore, the Respondent is not making use of the disputed domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services and the domain names resolve in inactive websites. The Respondent claims that it is developing a website for the disputed domain names and intends to use the website as a blog however it has failed to provide any evidence of preparations for intended use. The Respondent has failed to provide evidence of “demonstrable preparations” to use the disputed domain names for a bona fide offering of goods or services, which suggests there is no such intention, Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000. Aside from the Respondent’s statement there is no evidence of such intended use and the Panel does not accept that this alone provides sufficient evidence to draw the conclusion that the disputed domain names will in fact be used for a bona fide offering of goods or services as the Respondent claims.

The Complainant contends that the Respondent was fully aware of the Complainant’s established reputation and intends to “free ride” of the Complainant’s good will. As discussed in the paragraph above of this decision, there is no evidence that the Respondent has made any effort or has any intention to use the disputed domain names for any purpose or legitimate activity consistent with having rights or legitimate interests. Therefore the Panel infers that there is no intention of legitimate noncommercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert consumers.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain names. The Complainant has established a prima facie case that the Respondent lacks a legitimate right or interest in the disputed domain names. The Respondent was unable to demonstrate a legitimate interest or right in the disputed domain names. The Panel therefore concludes that the Respondent has not satisfied paragraph 4(c) of the Policy and concludes that the Respondent has no rights or legitimate interests in all three disputed domain names.

The requirements of 4 (a)(ii) are fulfilled and consequently the Panel finds in favour of the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain names have been registered and are being used in bad faith.

The Respondent has not denied knowledge of the Complainant’s trademarks and has openly stated that it intended to use the disputed domain names in connection to the Toefl and Toeic test, which suggests that the Respondent was aware of the Complainant’s trademarks and services offered under such trademarks. Therefore, the Panel is of the opinion that the Respondent had knowledge of the Complainant’s trademarks at the time of registration and draws an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

Despite the fact that the Respondent has stated it had intentions to use the disputed domain names as a blog, there is no evidence to support its contentions. Furthermore, the Panel visited disputed domain names, on April 19, 2011 and all three resolved in an inactive website. The Complainant contends that an inactive website is evidence of bad faith use and registration and there is no evidence or suggestion that the Respondent has any intention of using the disputed domain names for any purpose or legitimate activity consistent with good faith use.

Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states the lack of active use of the domain name does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether respondent is acting in bad faith. The Complainant having a well-known trademark and the impossibility of conceiving a good faith use of the domain name are indicative of bad faith. Following, paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the Panel infers bad faith use considering the circumstances surrounding registration.

There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a connection to the disputed domain names or that there is conceivable good faith use for the disputed domain names.

After examining all circumstances surrounding the registration and use of the disputed domain names, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith. Accordingly the Panel finds in favour of the Complainant on the third element of the Policy.

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 names <online-toefl.com>, <online-toeic.com> and <toeflonline.org> be transferred to the Complainant.

Gökhan Gökçe
Sole Panelist
Dated: April 21, 2011