WIPO Arbitration And Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Truong Huy / Bill Huy / Huy Truong, toefltestonline / Truong Huy, Think Big / Huy, Think Big

Case No. D2017-2547

1. The Parties

The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America (“United States” or “US”), represented by Jones Day, US.

The Respondent is Truong Huy of Downers Grove, Illinois, US / Bill Huy of Ha Noi, Viet Nam / Huy Truong, toefltestonline of Ha Noi, Viet Nam / Truong Huy, Think Big of Ha Noi, Viet Nam / Huy, Think Big of Ha Noi, Viet Nam (collectively the “Respondent”).

2. The Domain Names and Registrars

The disputed domain names <toefl-books.com> and <toefltestonline.net> are registered with Domain.com, LLC. The disputed domain names <toeflplanet.com> and <wikitoeflibt.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com. The disputed domain name <toefltips.info> is registered with GoDaddy.com, LLC. The disputed domain names <toeicmateiral.com> and <toeicmateiral.net> are registered with DNC Holdings, Inc. The disputed domain name <wiki-toefl.com> is registered with NameCheap, Inc. The disputed domain names are referred to herein as the “Domain Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2017. On December 21, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On December 22, 2017, December 23, 2017, and December 26, 2017, the respective registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. On December 23, 2017, the Registrar eNom, Inc. transmitted by email to the Center its verification response, confirming that the Domain Name <wiki-toefl.com> was registered with it and placed under lock status, and disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 6, 2018.

The Center verified that the Complaint together with the amended 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 January 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2018.

Despite the Registrar eNom, Inc.’s confirmation that the Domain Name <wiki-toefl.com> was locked and registered with it, the Center learned that the Domain Name had become registered at the Registrar NameCheap, Inc. and on February 2, 2018 requested that NameCheap, Inc. confirm the lock for the duration of these proceedings. On February 5, 2018, the Registrar NameCheap, Inc. confirmed the domain name lock.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 5, 2018. 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.

On February 16, 2018, the Panel instructed the Center to request Registrar Verification from the Registrar NameCheap, Inc. in relation to the Domain Name <wiki-toefl.com>, which it did on the same day. On February 16, 2018, the Registrar NameCheap, Inc. confirmed the same registrant details previously confirmed by the Registrar eNom, Inc. for the Domain Name <wiki-toefl.com>.

4. Factual Background

The Complainant is a nonprofit corporation organized under the law of the US State of New York and is headquartered in New Jersey. According to the Complaint, the Complainant is the world’s largest private, nonprofit educational testing and assessment organization. It develops, administers, and scores more than 50 million tests per year, in more than 180 countries and 9,000 locations worldwide. These examinations are known by their English acronyms and include the TOEFL (Teaching of English as a Foreign Language) test, TOEFL iBT (the TOEFL Internet Based Test), TOEFL ITP (the TOEFL Institutional Testing Program paper-based tests), and the TOEIC (Test of English for International Communication). These are described and promoted on the Complainant’s main website at “www.ets.org” and related mobile apps and social media sites.

The TOEFL test has been used since 1964 to measure proficiency in the English language for college admissions and teaching positions. The TOEFL iBT test, administered online, was launched in 2005. The TOEIC, used by employers and job seekers, has been available since 1979. The Complainant distributes numerous test preparation products and services relating to its TOEFL and TOEIC tests.

The Complainant holds numerous trademark registrations consisting of TOEFL or TOEIC, including these:

The Complainant has also registered hundreds of domain names incorporating the TOEFL and TOEIC marks (as evidenced in an annex to the Complaint), such as the following: <toefltips.guru>, <toeflonlinetest.com>, <toeflexamtips.com>, <toeflexamonline.com>, <freetoeicmaterials.com>, <onlinetoeictest.com>, <toefltoeiconline.com>. These are typically used to redirect visitors to the TOEFL or TOEIC pages of the Complainant’s main website.

The Domain Names were registered on dates ranging from August 22, 2016 to April 27, 2017. The Domain Names <toefl-books.com>, <toeflplanet.com>, and <toefltestonline.net> redirect to the same website associated with the Domain Name <wiki-toefl.com> (the “Respondent’s website”). At the time of this Decision, the Domain Name <toefltips.info> resolves only to the registrar’s parking page with pay-per-click (“PPC”) advertising links, and the other three Domain Names do not resolve to an active website.

The Respondent’s website, which is in the English language, was formerly headed with the Complainant’s trademarked ETS and TOEFL logos and advertised test preparation materials, along with unrelated third‑party advertising. Following communications from the Complainant in November 2017, the Respondent changed its website to display at the top a “WIKI TOEFL” logo that is similar in shape and color scheme to the Complainant’s ETS and TOEFL logos. The Respondent’s website continues to display the TOEFL marks, with no disclaimer of affiliation with the Complainant.

The website operator is not identified in relation to the Complainant. The “About Us” section at the bottom of the home page of the Respondent’s website reads as follows:

“Wiki-Toefl.com is a brand new blog dedicated to bringing the TOEFL Community together. It offers you free TOEFL Materials/ Books/Tips, Helps, Advice, Interactive Forum about TOEFL. From these pages I hope you can maximize your TOEFL score. WIKI TOEFL Material Team”.

Although many materials on the website are free, others are promoted for a “free trial”, and many of the books, materials, tutoring services, and unrelated goods and services are clearly offered on a commercial basis.

The Complaint recounts the Complainant’s efforts to take down the Respondent’s website, because of copyright infringements, as that website and a similar website formerly associated with one of the Domain Names were successively moved from one web hosting company to another. The Complaint also demonstrates that the US and Vietnamese postal addresses given for the Domain Name registrants are false.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Names are confusingly similar to its registered TOEFL and TOEIC marks, respectively, which the Respondent has used without authorization or other right or legitimate interest.

The Complainant argues that its marks are well-known and long established and that the Respondent clearly targeted them for commercial gain, given the appearance and content of the Respondent’s website. The Complainant cites the Respondent’s inaccurate identification and evasive conduct as further evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Preliminary Matter: Consolidation

As an initial matter, the Panel notes the complaint was filed against multiple respondents, and considers the Complainant’s request to consolidate all eight Domain Names and their respective registrants in this proceeding. Previous UDRP panels considering similar consolidation requests examined whether the domain names or corresponding website are “subject to common control”, and also whether such consolidation would be “fair and equitable to all parties”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. The registrants’ names and postal addresses varied slightly, and five different registrars were used. There are persuasive reasons to believe, however, that the same person or persons are involved with all eight Domain Names. All of the registrants include the name “Huy” and give the same contact email address and/or telephone number. Furthermore, the Domain Names <toefl-books.com>, <toeflplanet.com>, <toefltestonline.net> and <wiki‑toefl.com> redirect to the same website. The Panel also finds the consolidation fair and equitable to all parties, as the Respondent had the opportunity to object to the Complainant’s request and declined to do so. Accordingly, the Panel grants the Complainant’s request to consolidate all eight Domain Names in this proceeding.

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

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

B. Identical or Confusingly Similar

The Complainant indisputably holds registered TOEFL and TOEIC trademarks. Each of the Domain Names incorporates one of these distinctive and arbitrary marks in its entirety and adds generic words or initials, which do not avoid confusion. In fact, they tend to heighten confusion by using terms employed by the Complainant itself in its related domain names and on its website, such as “test”, “online”, “tips”, “materials”, “book”, and “ibt”.

The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Names are all confusingly similar to the Complainant’s marks for purposes of the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Names, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

The Complainant demonstrates confusing similarity, and the Respondent has not offered evidence of rights or legitimate interests, nor are these evident from a review of the Respondent’s website. There is no evidence in the record that the Respondent is known by a name corresponding to any of the Domain Names. The website is commercial, in addition to providing free information about the Complainant’s tests. The website has misleadingly displayed the Complainant’s marks, featured links to both the Complainant and third parties, advertised third-party products and services, and failed to identify accurately the website operator and its relationship to the Complainant. The Respondent’s website itself shows that the Respondent is not making fair or legitimate use of the Complainant’s marks in the Domain Names. See WIPO Overview 3.0, sections 2.4, 2.5.

The Panel concludes that the Complainant prevails on the second element of the Complaint.

D. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(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 web site or location or of a product or service on your web site or location.”

This example applies in the present circumstances. The Domain Names target the Complainant’s well‑known and long established TOEFL and TOEIC marks, and four of the Domain Names are used for the Respondent’s website that advertises a variety of goods and services, some related to the Complainant’s tests and some unrelated, with a misleading use of the Complainant’s marks and content, as well as a lack of identification and a disclaimer of affiliation. Another Domain Name is parked for PPC advertising.

The remaining three Domain Names that do not yet resolve to an active website fit the commonly accepted criteria for a finding of bad faith under the “passive holding” doctrine articulated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and following decisions: (i) highly distinctive and well known marks, (ii) a respondent that failed to respond or provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity and use of false contact details (in breach of ICANN-mandated terms in its registration agreement), and (iv) the implausibility of any good faith use for these Domain Names, especially given this Respondent’s use of the other Domain Names to date. See WIPO Overview 3.0, section 3.3.

The inference of bad faith is further supported by the Respondent’s pattern of misleading and evasive measures to obscure its identity and contact details, move its website between a succession of hosting companies to avoid copyright infringement takedown notices, and avoid or ignore communications from the Complainant and the Center.

The Panel concludes on this record that the Respondent registered and used the Domain Names in bad faith within the meaning of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <toefl-books.com>, <toeflplanet.com>, <toefltestonline.net>, <toefltips.info>, <toeicmateiral.com>, <toeicmateiral.net>, <wiki-toefl.com>, and <wikitoeflibt.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: February 19, 2018