WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. Marwan Hamed, 1
Case No. D2017-0585
1. The Parties
The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America (“USA”), represented by Jones Day, USA.
The Respondent is Marwan Hamed, 1 of Baghdad, Iraq.
2. The Domain Name and Registrar
The disputed domain name <toefl-registration-ets.org> (the “Domain Name”) is registered with Launchpad.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2017. The Center sent its request for registrar verification to the Registrar on March 23, 2017. The Registrar replied the same day 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 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2017. In response to an email from the Respondent of April 10, 2017, the Complainant requested a suspension of the administrative proceedings for 30 days in order to explore settlement possibilities. The administrative proceeding was suspended on April 21, 2017. On May 19, 2017 the Complainant requested reinstitution of the proceeding. On May 22, 2017, the proceeding was reinstituted. The new due date for Response was May 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2017.
The Center appointed Jonathan Turner as the sole panelist in this matter on June 7, 2017. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant develops and administers tests for measuring skills, academic aptitude and achievement, and occupational and professional competency; licenses for technical and paraprofessional occupations; and teacher certification. It was formed in 1947 and now administers more than 50 million tests per year in more than 9000 locations in more than 180 countries.
The Complainant’s tests include the TOEFL test of English proficiency of people whose native language is not English. Since 1964 more than 30 million students have taken this test. Over 9000 institutions in more than 130 countries use scores from the test. The test can be taken at more than 4500 testing centers in 165 countries, including centers in Babil, Baghdad, Basra, Dubok, Erbil, Sulaimani and other locations in Iraq.
The Complainant has registered ETS (the initials of its full name) as a trademark in the USA pursuant to an application in 1951 claiming first use in 1949. It has also registered TOEFL as a trademark in the USA pursuant to an application in 1978 claiming first use in 1964. It has also made other registrations of these marks in the USA and other countries including Iraq.
The Complainant operates its website at “www.ets.org”, including a home page for content about the TOEFL test at “www.ets.org/toefl”. This website includes a page at “https://toefl-registration.ets.org/TOEFLWeb/extISERLogonPrompt.do” which prompts those who have taken the TOEFL test to enter personal information in order to obtain verification of their test score. The personal information includes the user’s name, address, telephone number, birth date and passport number.
The Respondent reproduced the content of this web page of the Complainant’s website on his website at “https://toefl-registration-ets.org/TOEFLWeb/extISERLogonPrompt.do”. Thus the Respondent invited those who had taken the TOEFL test to provide their personal information through a web page at a URL identical to that of the Complainant’s web page apart from the substitution of a hyphen for a dot.
On learning of this, the Complainant drew it to the attention of the Registrar and webhost. The Complainant’s communications were forwarded to the Respondent, but he did not reply. The webhost suspended the Domain Name on February 8, 2017.
5. Parties’ Contentions
The Complainant points out that the Domain Name includes its registered marks TOEFL and ETS in their entirety and adds that the Domain Name was clearly intended to cause confusion as part of an exercise of phishing for personal information.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that the Respondent is not a licensee or otherwise affiliated with it, that it has not authorized, condoned or consented to the Respondent’s registration of the Domain Name, that the Respondent is not commonly known by the Domain Name, that the Respondent has not made any preparations to use the Domain Name or any corresponding name in connection with a bona fide offering of goods or services, and that the Respondent has not used the Domain Name for any legitimate noncommercial or fair use. The Complainant contends that, on the contrary, the Respondent has used the Domain Name for a fraudulent phishing scheme.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant points out, first, that the Respondent must have known of its rights in the ETS and TOEFL marks given the use that the Respondent has made of the Domain Name. The Complainant adds that the Respondent’s registration and use of the Domain Name are designed to misdirect consumers seeking the Complainant’s website in order to gain access to their personal information. The Complainant regards the Respondent’s failure to reply to its communications as further evidence of bad faith.
The Complainant seeks a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark or marks in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name was registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the marks ETS and TOEFL pursuant to its registrations and also by virtue of its use of these marks in the USA and other countries.
The Panel considers that the Domain Name is confusingly similar to these marks, which it incorporates in their entirety together with descriptive or generic elements, namely the word “registration” and the generic Top-Level Domain (“gTLD”) “.org”. The Panel has no doubt that Internet users would assume that the Domain Name locates web pages relating to registration for the Complainant’s TOEFL tests.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Complainant finds on the evidence that the Respondent has not used or made preparations to use the Domain Name for any bona fide offering of goods or services or for any legitimate noncommercial or fair use.
On the contrary, the evidence indicates that the Respondent has used the Domain Name to carry out a phishing operation to obtain personal data from consumers misled by the virtual identity of the URL of the web page posted by the Respondent to that of the page of the Complainant’s website through which such information is sought to enable access to the user’s TOEFL score. In the absence of any explanation of this conduct, the Panel infers that this was done to enable fraud, whether by the Respondent or some other party to whom the Respondent might sell the information. Such activity is obviously not consistent with a bona fide offering or other legitimate or fair use.
The Panel is also satisfied that the Respondent is not commonly known by the Domain Name and that he has not been authorized by the Complainant in any way to register or use the Domain Name.
In the circumstances, there is no other basis on which the Respondent could claim any rights or legitimate interests in respect of the Domain Name. The Panel finds that the second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the evidence that by its use of the Domain Name the Respondent intentionally attempted to attract Internet users to his web page at “https://toefl-registration ets.org/TOEFLWeb/extISERLogonPrompt.do” by creating a likelihood of confusion with the Complainant’s marks as to the source of this web page, namely that it was the page of the Complainant’s website with the almost identical address “https://toefl-registration.ets.org/TOEFLWeb/extISERLogonPrompt.do” through which those who had taken the Complainant’s TOEFL test could provide personal information in order to obtain verification of their score. The Panel further infers that this was done for commercial gain by profiting from the use or sale of the personal information so obtained.
In accordance with paragraph 4(b)(iv) of the UDRP these circumstances constitute evidence of registration and use of the Domain Name in bad faith. There is no evidence displacing this presumption; on the contrary, it can be inferred from the evidence and the lack of any explanation by the Respondent that this was part of a phishing scheme to obtain personal information for the purposes of enabling fraud.
All three requirements of the UDRP are satisfied and it is appropriate to direct that the Domain Name be transferred to the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <toefl-registration-ets.org> be transferred to the Complainant.
Date: June 19, 2017