WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. Eunho Hwang
Case No. D2017-0993
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 Eunho Hwang of Surrey, British Columbia, Canada, self-represented.
2. The Domain Name and Registrar
The disputed domain name <toeflcenter.com> (the "Domain Name") is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 18, 2017. On May 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2017. On June 1, 2017, the Respondent submitted an email consulting whether it could have the Complaint in Korean. The Response was filed with the Center on June 19, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on June 29, 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 the Rules, paragraph 7.
4. Factual Background
The Complainant is a private non-profit educational testing and assessment organization, operating from as early as 1947. The Complainant develops, administers and scores over 50 million tests a year, including the TOEFL test which evaluates the English proficiency of people whose native language is not English. Since 1964, more than 30 million students have taken the TOEFL Test in more than 180 countries, and over 9,000 institutions worldwide use scores from the test. Globally, the TOEFL test is available in 165 countries at more than 4,500 testing centers.
The Complainant is the owner of trade marks in countries including the USA and Canada for the letters "toefl" (the "TOEFL Mark"), with the TOEFEL Mark first being registered in the USA on October 3, 1978 (registration no. 1,103,427) for "information manuals dealing with educational testing" and "educational testing services – namely administering tests dealing with languages".
The Domain Name <toeflcenter.com> was registered by the Respondent on March 1, 2002 and redirects to a website (the "Respondent's Website") that appears to be a parking webpage but contains related links to educational services related to the Complainant's business, including TOEFL Speaking Practice and TOEFL classes as well as a link that visitors can click if they are interested in purchasing the Domain Name. In 2015 a different website was set up at the Domain Name, with the message "under construction".
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's TOEFL Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the TOEFL Mark, having registered the TOEFL Mark in the USA and Canada. The Domain Name is confusingly similar to the TOEFL Mark, containing the TOEFL Mark in its entirety and the generic term "center".
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name. There is no evidence, since the Respondent registered the Domain Name, of the Respondent's 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 for a legitimate noncommercial purpose. The Domain Name has variously redirected to an "under construction" page and a pay-per-click parking page.
The Domain Name was registered and is being used in bad faith. The TOEFL Mark is well-known and it is inconceivable that the Respondent could not be aware of the TOEFL Mark at the time of registration. The Respondent is also using the Domain Name in bad faith through its use of a pay-per-click website on the Domain Name and by disrupting the Complainant's business interests by allowing the Domain Name to remain registered but inactive for long periods of time.
The Respondent registered the Domain Name in 2002 to operate a free learning center known as "Technology of Evolution Free Learning Center". The Domain Name redirected to a parking page to test whether it was working but following the receipt of a cease-and-desist letter, redirected to another parking page, for which the Respondent has received no revenue.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the TOEFL Mark, having registrations for the TOEFL Mark as a trade mark in the USA and Canada.
The Domain Name consists of the TOEFL Mark in its entirety and the descriptive term "center". The addition of the descriptive term does not prevent a finding of confusing similarity and in the present case the addition of "center" may cause Internet users to think that Domain Name related to a centre promoting or otherwise connected with the Complainant TOEFL Test. The Panel finds the Domain Name is confusingly similar to the Complainant's TOEFL Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 organization) have been commonly known by the domain name, even if you have acquired no trademark 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 trademark or service mark at issue."
The Respondent is not affiliated with the Complainant in any way. He has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the TOEFL Mark or a mark similar to the TOEFL Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use or a bona fide offering of goods and services.
The Respondent claims that he intends to use the Domain Name for a free learning centre known as "Technology Of Evolution Free Learning Center", however the Domain Name has been registered for 15 years and the Respondent has provided no evidence of any such use for that purpose, demonstrable preparations for such use, an explanation for the delay, or even an explanation of what "Technology Of Evolution Free Learning Center" means. Given the lack of evidence in support of his claims, as well as the inherent implausibility of the Respondent's choice of words to describe his so-called learning centre, I reach the inference that the term "Technology Of Evolution Free Learning Center" is simply a term made up by the Respondent for the purposes of providing an explanation for his registration of the Domain Name because its acronym corresponds to the TOEFL.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that he has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the TOEFL Mark at the time the Respondent registered the Domain Name. The Complainant's TOEFL Mark is very well-known in the USA and Canada, with over 30 million students having taken the test in more than 180 countries. The Respondent's explanation for his registration of the Domain Name is both unsupported by any evidence and implausible. It is highly unlikely that the Respondent chose to register the Domain Name unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the TOEFL Mark.
The Panel notes that the Respondent's Website both offers pay-per-click links to websites relating to the Complainant's TOEFL test and invites inquiries to see if the Domain Name is for sale. The Respondent has provided no evidence in support of its contention that it receives no revenue (or alternatively receives no benefit such as free domain name registration) from the pay-per-click links on the Respondent's Website. In circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Name nor has the Domain Name been used in any active manner in the 15 years since it was registered the Panel finds that either that the Respondent has registered the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name or that the Respondent is using the Domain Name to intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the TOEFL Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website. As such the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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 <toeflcenter.com> be transferred to the Complainant.
Date: July 3, 2017