WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. Andy Rashid
Case No. D2017-1936
1. The Parties
Complainant is Educational Testing Service of Princeton, New Jersey, United States of America (“United States”), represented by Jones Day, United States.
Respondent is Andy Rashid of Amarillo, Texas, United States, represented by “GRE Center”, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <grecenter.org> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2017. On October 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2017. The Response was filed with the Center on October 21, 2017.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 1, 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
Complainant, Educational Testing Service, is a provider of educational testing and assessment services. Complainant develops and administers tests for measuring skills, academic aptitude and achievement, and occupational and professional competency. Complainant administers and scores more than 50 million tests per year in more than 180 countries. The tests developed by Complainant include such tests as the TOEFL, TOEIC, PRAXIS, and GRE General Test.
Complainant has submitted a number of trademark registrations for the GRE trademark in connection with its GRE test, including registrations in (i) the United States (Registrations Nos. 1,146,134, 1,756,582, 1,943,796 and 4,400,269), the earliest of which issued on January 20, 1981 (United States Trademark Registration No. 1,146,134), and (ii) Bangladesh (Registration No. 101569), which issued on October 10, 2006. Complainant also owns a number of domain names that incorporate the GRE mark, including <gre.com>, <gre.org>, and <grecenter.com>.
Respondent is an individual with an address in the United States. Respondent registered the disputed domain name on September 15, 2010. The disputed domain name has resolved to a website promoting test preparation services for the GRE test and other tests in Bangladesh and the United States. In late 2015, Complainant sent Respondent a demand letter concerning its registration and use of the disputed domain name. At that time, a representative or associate of Respondent agreed to make some changes to the website posted at the disputed domain name. The parties exchanged further communications in 2016 and 2017 concerning the website at the disputed domain name and Respondent’s use of the GRE mark. At some point after the Complaint was filed in this proceeding, Respondent took down the website at the disputed domain name. Currently, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
Complainant asserts that it owns and has used the GRE mark since 1941 in connection with its GRE test, which is used to evaluate the abilities of prospective graduate and business school applicants. Complainant maintains that it has made its GRE test available worldwide in more than 1,000 testing centers in over 160 countries, including the United States and Bangladesh, and that as a result the GRE mark is well-known within the educational testing services industry in the United States and throughout the world. Complainant also asserts that it has developed numerous GRE test preparation products and services that are offered for sale worldwide, including on Complainant’s official website at “www.gre.com” and the websites of Complainant’s business partners for the GRE test.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s GRE mark because it contains the GRE mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the descriptive term “center” increases the potential risk of confusion because the term when used with the GRE mark suggests a relationship with Complainant or a test center for Complainant’s GRE test.
Complainant argues that Respondent does not have any bona fide rights or legitimate interests in the disputed domain name because Respondent (a) is not in any way affiliated with or licensed by Complainant, and (b) has not used the disputed domain name for a legitimate purpose. Complainant asserts that Respondent has simply used the disputed domain name to trade off of the fame associated with Complainant’s GRE mark and to misleadingly divert consumers to Respondent’s competing test preparation products and services for commercial gain. Complainant contends that Respondent’s lack of a legitimate interest is further established by Respondent’s continued use and display of the GRE Center name, misleading statements, and the unauthorized appearance of Complainant’s test preparation materials on the website at the disputed domain name which suggest a connection with Complainant, despite multiple demands by Complainant requesting that Respondent cease such unauthorized activities.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent was clearly aware of Complainant’s GRE mark, given that the website at the disputed domain name displayed Complainant’s GRE mark as well as Complainant’s copyrighted test preparation materials for the GRE test. Complainant further asserts that Respondent’s bad faith is established by Respondent’s use of the GRE mark to intentionally divert Internet users to Respondent’s website in order to promote and sell competing test preparation services related to those of Complainant. Lastly, Complainant maintains that Respondent’s actions are in bad faith in light of Respondent’s continued use of the GRE mark and Complainant’s GRE test preparation materials despite numerous requests by Complainant that Respondent cease these activities.
Respondent did not file a formal Response. However, a representative or associate of Respondent (the same one who replied to the demand letter sent by Complainant before the commencement of the proceeding) filed a Response with the Center. In said Response, this representative or associate of Respondent contends that because he has removed the contents of the website at the disputed domain name, the proceeding initiated by Complainant is no longer valid and, as such, Respondent should be allowed to maintain the disputed domain name until September 16, 2019. Respondent further contends that the disputed domain name is a combination of the two words “grec” and “enter.”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, Section 1.2.1. Complainant has provided evidence that it owns and uses the GRE mark, which has been registered and used in the United States and Bangladesh well before Respondent registered the disputed domain name. Complainant has also submitted evidence that the GRE mark is being used in the United States in connection with Complainant’s GRE test and related test preparation services and materials, and that Complainant offers its GRE test in numerous locations around the world, including in Dhaka, Bangladesh.
With Complainant’s rights in the GRE mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.org”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010‑0842.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s GRE mark as it incorporates the GRE mark in its entirety at the head of the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the GRE mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
The evidence submitted in this proceeding shows that Respondent has used the disputed domain name for a website that offers test preparation information and materials for Complainant’s GRE test as well as other tests. Although, offering test preparation and related services to someone taking Complainant’s GRE test could under certain circumstances be seen as being a legitimate interest or use, Respondent here has taken the extra step of registering a domain name that suggests a connection to Complainant and then using such with a website that is replete with uses of the GRE mark and references to “GRE Center”, and which offers copies of Complainant’s GRE-related publications. Such actions, in their totality, appear to have been designed to suggest that Complainant’s test preparation services are authorized or somehow linked to Complainant. Respondent does not argue otherwise and merely contends that because it has taken down the website at the disputed domain name there is no basis for this proceeding. However, the taking down of Respondent’s website is not material here in determining whether or not Respondent has a right or legitimate interest in the disputed domain name. Based on the evidence submitted, it appears more likely than not that Respondent, who has no license or permission from Complainant to use the GRE mark, sought to trade off of the disputed domain name for Respondent’s profit.
The legitimacy of Respondent’s use of the disputed domain name is further undermined by Respondent’s actions following the receipt of a demand letter from Complainant in October 2015. At that time, Respondent claimed that the disputed domain name stood for an alphabetical abbreviation of Respondent’s claimed organization the “Graduate Resources Enhancing Center.” However, the evidence that is before the Panel shows that prior to receipt of Complainant’s demand letter in October 2015, the website at the disputed domain name made no reference to Respondent’s claimed “Graduate Resources Enhancing Center” organization and merely featured the name “GRE Center.” Thereafter, while Respondent displayed the alleged acronym “grec” on the website at the disputed domain name, Respondent continued to include numerous references to the GRE Center and the GRE mark, including as claimed in the Complaint a statement that “The Graduate Record Examination, GRE® is one of our preparatory courses.” Such actions, which are not contested or explained by Respondent, further underscore Respondent’s attempt to trade off of Complainant’s GRE mark and thus cannot be seen as supporting a right or legitimate interest in the disputed domain name.
Given that Complainant has established with sufficient evidence that it owns rights in the GRE mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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.”
In the present case, Respondent has registered the disputed domain name that fully incorporates Complainant’s GRE mark with the word “center.” The Panel finds that the addition of the word “center” does not distinguish the disputed domain name from Complainant’s GRE mark and in fact increases the confusion by suggesting that the disputed domain name is related to Complainant and/or Complainant’s GRE test. See, e.g.,Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004‑0488. Moreover, the Panel rejects Respondent’s contention that the disputed domain name is merely a combination of the words “grec” and “enter”. It seems more likely than not that Internet users seeing the domain name (particularly English speaking Internet users) would perceive the disputed domain name as “gre center” as opposed to a combination of the alleged acronym “grec” (which is also a word in French for “greek”) with the English word “enter”, as Respondent seems to suggest without any evidence. Given that Complainant administers and makes its GRE test available in centers around the world, the disputed domain name is likely to be viewed by consumers as linked to Complainant and/or to a website that relates to or administers Complainant’s GRE test.
In addition, the evidence that is before the Panel, none of which is contested by Respondent, shows that Respondent used the disputed domain name to promote Respondent’s test preparation services and included numerous misleading references and statements on the website posted at the disputed domain name that made it appear that the website is a legitimate website of Complainant and/or a website authorized by or affiliated with Complainant. Such actions make it more likely than not that Respondent registered and used the disputed domain name, which is based on Complainant’s GRE mark, to intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit. See WIPO Overview 3.0, Section 3.1.4 (and cases cited therein).
Respondent’s actions after receiving multiple demand letters from Complainant further highlight Respondent’s bad faith. After receiving Complainant’s initial demand letter in October 2015, Respondent claimed that the disputed domain name related to an alphabetical abbreviation of Respondent’s alleged organization the “Graduate Resources Enhancing Center” (with the acronym “grec”). However, the evidence submitted by Complainant makes it more likely than not that Respondent’s claim is pretextual. The website at the disputed domain name prior to the receipt of Complainant’s demand letter made no reference to the alleged “Graduate Resources Enhancing Center” and, instead, included a prominent logo that featured the name “GRE Center,” with the GRE portion in a different font, position, and color from the word “center.” Moreover, although Respondent started displaying a logo that consisted of the alleged acronym “grec” on the website at the disputed domain name after receiving Complainant’s October 2015 letter, Respondent continued to display on the pages of his website multiple references to the “GRE Center,” statements that suggested a connection between Respondent and the GRE test, and copies of Complainant’s test preparation materials. Such actions, none of which are disputed by Respondent, further confirm that Respondent’s registration and use of the disputed domain name was not undertaken for a legitimate reason or purpose but were designed to create confusion in order to entice consumers looking for GRE test preparation services to use Respondent’s services offered through its website at the disputed domain name.
Given the Respondent’s actions, the Panel finds that the Complainant has proven by a preponderance of the evidence that Respondent registered and used the disputed domain name in bad faith.
For 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 <grecenter.org> be transferred to the Complainant.
Date: November 14, 2017