WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. John Krzysik
Case No. D2018-0931
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 John Krzysik of Clifton, New Jersey, USA.
2. The Domain Name and Registrar
The disputed domain name <toeflonline.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2018. On April 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2018, 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 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 23, 2018.
The Center appointed William F. Hamilton as the sole panelist in this matter on May 29, 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.
4. Factual Background
The Complainant is an educational testing and assessment service. The Complainant develops, administers, and scores more than 50 million tests per year in over 80 countries at over 9,000 locations. Among the Complainant's "Toefl" examination is designed to measure of the English proficiency of persons whose native language is not English. The examination has been in use since 1964 and has been taken by more than 30 million students. The TOEFL mark (the "Mark" hereinafter) was registered by the Complainant with the United States Patent and Trademark Office in 1978. Additionally, the Complainant owns many other registered marks that incorporate the Mark. The Complainant also owns, operates, and utilizes many domain names that incorporate the Mark including <toefl.com> registered in 1994.
The Respondent registered the disputed domain name on March 8, 2004. The disputed domain name does not resolve to an active website.
5. Parties' Contentions
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant's Mark because the disputed domain name wholly incorporates the Mark and merely adds the generic expression "online" as a suffix. The Complainant asserts that the Respondent has no rights or legitimate interests in the Mark as the Complainant has never authorized the Respondent to utilize the Mark or the disputed domain name and because the Respondent has not conducting any bona fide business under the Mark or the disputed domain name. Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar the Complainant's Mark. The disputed domain name simply appends the generic expression "online" to the Complainant's Mark. Educational Testing Service v. Educational Training Service, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., WIPO Case No. D2004-0324; Educational Testing Service v. Truong Huy / Bill Huy / Huy Truong / Huy Truong, toefitestonline / Troung Huy/,Think Big/ Huy, Think Big, WIPO Case No. D2017-2547.
The Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has specifically disavowed providing the Respondent with any permission or license to use the Mark or the disputed domain name. The Respondent has not come forth to demonstrate any bona fide activities or business associated with the Mark or the disputed domain name. Indeed, the only apparent activity associated with the disputed domain name was to offer it for sale. There is no evidence or indication that the Respondent was ever commonly known by the disputed domain name.
The Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain was registered and is being used in bad faith. The Mark is an unusual acronym. It is inconceivable that the Respondent would stumble willy-nilly on this unique collection of letters that compose the Mark and then attach the expression "online" to those letters. The most modest level of due diligence before registering the disputed domain name would have disclosed the Complainant and the Mark. Educational Testing Service v. Eunho Hwang, WIPO Case No. D2017-0993; Educational Testing Service v. Mohamed Ahmed Aljarwan, WIPO Case No. D2008-1073.
The registration of a well-known trademark or service mark as a domain name is in and of itself is a strong indicator of bad faith registration and use.Educational Testing Service v. Mohamed Ahmed Aljarwan, WIPO Case No. 2008-1073.
The fact that the disputed domain name does not resolve to an active website is further evidence of bad faith registration and use. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 3.3.
While UDRP panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
The Panel finds the above factors (i), (ii), and (iv) are present in this case. See Educational Testing Service v. Truong Huy / Bill Huy / Huy Trong / Huy Truong, toefitestonline / Troung Huy, Think Big / Huy, Think Big, WIPO Case No. D2017-2547; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Lastly, the Respondent's bad faith is also demonstrated by the Respondent's efforts to sell the disputed domain name on an auction for a substantial sum. Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044.
The Complainant has met its burden of proof 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 disputed domain name <toeflonline.com> be transferred to the Complainant.
William F. Hamilton
Date: June 4, 2018