WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. hangzhou xiachengquhuanqiuwaiyupeixunxuexiao

Case No. D2010-1754

1. The Parties

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 hangzhou xiachengquhuanqiuwaiyupeixunxuexiao of Hangzhou, Zhejiang, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <ieltstoefl.net> is registered with Xin Net Technology Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2010. On October 18, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On October 19, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the Respondent’s contact details. On October 22, 2010, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On October 26, 2010, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center has verified that the Complaint satisfies 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 proceeding commenced on October 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 18, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on November 19, 2010.

The Center appointed Sebastian Hughes as the sole panelist in this matter on November 26, 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.

4. Factual Background

A. Complainant

The Complainant is a not-for-profit organisation organised and existing under the Education Law of the State of New York in the United States of America. The Complainant is the owner of numerous registrations worldwide for the trade mark TOEFL (the “Trade Mark”), including several registrations in China, where the Respondent is based. The date of first use of the Trade Mark was 1964 (in the United States of America). The earliest of the Complainant’s registrations for the Trade Mark in China is 1994.

The Complainant is also the owner of several domain names comprising the Trade Mark, including <toefl.com>, <toefl.org>, <toefl.net>, <toefl.biz>, <toefl.asia>, <toefl.mobi>, <toefl.eu> and <toefl.us>.

B. Respondent

The Respondent appears to be an educational institution based in China.

The disputed domain name was registered on February 21, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions in the Complaint.

The Complainant was founded in 1947 and is the largest not-for-profit educational research and measurement institution in the world. It is the leader in developing and administering tests for measuring skills and aptitude for admission to educational institutions. Continuously since 1964, the Complainant has been administering English language proficiency tests for non-native English speakers under the Trade Mark, which has become well-known worldwide in respect of such tests. Since 1964, more than 24 million students in over 130 countries worldwide have taken the TOEFL test. The test is recognised in more than 7,500 educational institutions worldwide.

The disputed domain name is confusingly similar to the Trade Mark. It comprises the third party trade mark IELTS and the Trade Mark. IELTS is the principal competitor of the Complainant in respect of English language proficiency tests for non-native English speakers.

Prior to the filing of the Complaint, the disputed domain name was resolved to a Chinese language website promoting the entity “IELTS International Learning Centre” (the “IILC”) and courses for the IELTS English language proficiency exam conducted by the IILC (the “Website”). The Website also promoted a seminar to be held by an entity called “Beijing Global Education & Technology Co Ltd” (“Beijing Global”) relating to the IELTS test, and was hyperlinked to the website operated by Beijing Global which offers for sale goods and services to assist persons to take the Complainant’s TOEFL test. Such goods and services have not been authorised by the Complainant.

The Respondent has no trade mark rights in respect of the disputed domain name and has not been licensed or authorised by the Complainant to use the Trade Mark.

The Respondent has registered and used the disputed domain name in bad faith to capitalise on the goodwill in the Trade Mark and to intentionally attract users, for commercial gain, to the Website, by creating confusion with the Trade Mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be conducted in English.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).

The Complainant has requested that English be the language of the proceeding for the following reasons:

(1) the disputed domain name consists of two trade marks that denote tests for English language proficiency;

(2) the Respondent’s registration of the disputed domain name demonstrates the Respondent’s knowledge of the IELTS and TOEFL English language tests;

(3) the Respondent has used the Website to advertise products and services to assist students in learning the English language;

(4) the disputed domain name and the Respondent’s email address are in Roman characters;

(5) all of the above factors suggest the Respondent is proficient in the English language;

(6) the Complainant will incur substantial costs and the proceeding will be delayed if the Complainant is required to translate the Complaint and its Exhibits into Chinese.

All of the Center’s communications to the Parties have been transmitted in both English and Chinese. The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding. Had the Respondent made cogent submissions to the effect that it does not understand the English language, the Panel would likely have decided the language of the proceeding should be the language of the registration agreement, particularly given the Website is in the Chinese language.

However, in exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

Having considered all the matters above, and given in particular the Respondent’s failure to file a Response or make any submissions with regard to the language of the proceeding, and in order to prevent further delay and translation costs on the part of the Complainant, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding.

In making this determination, the Panel was persuaded by the fact the disputed domain name appears to have been registered in order to promote courses relating to English language proficiency tests, which would suggest that the Respondent is likely to be conversant in the English language.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many decades the date of registration of the disputed domain name.

UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

The disputed domain name comprises the Trade Mark in its entirety, combined with the IELTS trade mark of the Complainant’s main competitor, also in its entirety. The disputed domain name contains otherwise no distinguishing terms.

Given that IELTS and TOEFL are the leading global providers of English language testing for non-native English speakers, the Panel has no hesitation in finding that the disputed domain name is confusingly similar to the Trade Mark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by decades. There is therefore a prima facie case established by the Complainant that the Respondent has no rights and legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

It is clear that, prior to the filing of the Complaint, the Website was being used in order to pass off the business of the Respondent (or the business of the operator of the Website) and the business of Beijing Global as businesses of or licensed by the Complainant and/or the owner of the IELTS trade mark, as evidenced by the promotion of the various products and services to assist persons taking the IELTS or TOEFL tests on the Website and on the Beijing Global website to which the Website was hyperlinked.

The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

At some stage following the filing of the Complaint, the Respondent ceased using the disputed domain name. The Website is no longer active. It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski, WIPO Case No. D2008-0028). The Panel finds that, in the circumstances of this case, the passive use of the disputed domain name by the Respondent, having previously been used to facilitate the promotion and sale of unauthorised English language training courses under the Trade Mark prior to the filing of the Complaint, amounts to additional grounds for finding bad faith on the part of the Respondent.

Given the circumstances of this case, the Panel also considers the failure of the Respondent to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 disputed domain name <ieltstoefl.net> be transferred to the Complainant.¹

Sebastian Hughes
Sole Panelist
Dated: December 2, 2010

¹ Transfer to be without prejudice to any rights which may be asserted by the third party owner of the mark IELTS.