WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Ken Gardner, Vancouver English Centre

Case No. D2018-1118

1. The Parties

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

The Respondent is Ken Gardner, Vancouver English Centre of Vancouver, British Columbia, Canada.

2. The Domain Names and Registrar

The disputed domain names <toefl-canada.com>, <toefl-preparation.com>, <toefl-usa.com>, <toefl vancouver.org>, <toeic-canada.com>, <toeic-canada.org>, and <toeic-vancouver.org> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2018. On May 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 21 and 30, 2018, the Registrar transmitted by email to the Center its verification responses 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, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2018.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on July 3, 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 a large private non-profit educational testing and assessment organization that since 1964 develops and manages well-known English proficiency tests, including TOEFL and TOEIC.

The TOEFL and TOIC tests are made available worldwide by the Complainant and administered by authorized institutions under contract with the Complainant.

The Complainant has also developed numerous TOEFL and TOEIC test preparation products and services, including but not limited to, print publications, compact discs, computer software, and online writing exercises, offered for sale worldwide on its official website and on the websites of the Complainant’s authorized business partners for the TOEFL and TOEIC tests, which are accessible through the domain names <toefl.org>, <toefl.com>, <toefl.net>, <toeflgoanywhere.org> and <toeflgoanywhere.com>, as well as <toeic.com>, <toeic.net> and <toeic.org>. There, the Complainant and its business partners also provide general information about the TOEFL and TOEIC tests, as well as registration information for taking the tests anywhere it is available in the world. The Complainant also owns numerous other domain names comprising the terms “toefl” or “toeic”.

The Complainant first applied to register the TOEFL trademark in the United States in 1978, indicating first use of the TOEFL mark in 1964 (United States Reg. No. 1,103,427, registered October 3, 1978). The Complainant first applied for the TOEIC trademark in 1979 in the United States, indicating first use of the TOEIC mark in 1979 (United States Reg. No. 1,119,169, registered March 9, 1982). Currently the Complainant holds numerous trademark registrations for TOEFL and TOEIC trademarks in several countries throughout the world, for various products and services related to educational testing.

The disputed domain names were registered by the Respondent in the following dates:

- <toefl-canada.com> on December 6, 1999;

- <toefl-preparation.com> on December 6, 1999;

- <toefl-usa.com> on December 6, 1999;

- <toefl vancouver.org> on March 27, 2001;

- <toeic-canada.com> on March 2, 2000;

- <toeic-canada.org> on March 27, 2001; and

- <toeic-vancouver.org> on March 27, 2001.

The Panel accessed the disputed domain names on July 12, 2018, which resolved to websites reproducing the Complainant’s trademarks TOEFL or TOEIC, advertising the Respondent’s services related to preparation for TOEFL or TOEIC exams. Specifically, the websites at the disputed domain names <toefl preparation.com>, <toeic-canada.com>, <toeic-canada.org> and <toeic-vancouver.org> contain a small disclaimer stating that TOEFL and TOEIC are registered trademarks of the Complainant and that the said websites are not endorsed or approved by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain names are identical or confusingly similar to trademarks in which the Complainant has rights. All of the disputed domain names incorporate the TOEFL or TOEIC marks in their entireties. It has been well-established by previous UDRP decisions that a domain name incorporating a distinctive trademark in its entirety creates sufficient similarity between the mark and the disputed domain name so as to render it confusingly similar. Moreover, the mere addition of the generic and geographic terms “vancouver”, “canada”, “preparation” and “usa” to the TOEFL and TOEIC marks does not decrease the confusing similarity arising from the incorporation of those marks in their entireties. In fact, the addition of the geographic terms “vancouver”, “canada” and “usa” actually increases rather than mitigates the likelihood of confusion since users would believe that the disputed domain names are the official TOEFL and TOEIC websites for the United States, Canada, or Vancouver areas. And the term “preparation” is descriptive of the test preparation materials provided by the Complainant. Furthermore, the Respondent’s disclaimers at the very bottom of some of the websites associated with the disputed domain names do not diminish the likelihood of confusion that arises with the use of the TOEFL and TOEIC marks in the disputed domain names. When Internet users have access to the website associated with the disputed domain names, they have already been misled into a website that purports to be associated with the Complainant, rendering the disclaimer contained in the website useless. Finally, given that the websites associated with the disputed domain names reproduce and display the Complainant’s trademarks, the registration and use of the disputed domain names is clearly intended to cause consumers to falsely believe that the disputed domain names are official websites, owned by the Complainant.

- The Respondent has no rights or legitimate interests in respect of the disputed domain names. As noted in previous panel decisions, the Complainant must only establish a prima facie case that the Respondent lacks rights or legitimate interests in a domain name in order to shift the burden of proof to the Respondent. First, the Respondent is not a licensee of or otherwise affiliated with the Complainant. The Complainant has never authorized or otherwise condoned or consented to the Respondent’s registration of the disputed domain names. From the beginning the Complainant advised the Respondent that maintenance of these confusingly similar domain names was not authorized. Moreover, the Respondent is not now, and never was, commonly known by any of the disputed domain names. Rather, the Respondent operated under the name “Vancouver English Center”. Furthermore, although the Respondent did provide test preparation courses for the Complainant’s TOEFL and TOEIC tests, the use of the Complainant’s marks in the disputed domain names was not necessary for any legitimate noncommercial or fair use purpose. The Respondent could have just as easily advertised his business on a website with the name of the business, e.g., <vancouverenglishcenter.com>. Rather than using the disputed domain names in connection with a bona fide offering of goods or services, or otherwise using the disputed domain names for any legitimate purpose, the Respondent registered and operated the disputed domain names in an attempt to deceive Internet users into thinking that the Respondent was affiliated with the Complainant, both before and after the Respondent had any affiliation with the Complainant. Furthermore, since the Final Non-Compliance Notice was sent in January 2016, the Respondent was on notice that he did not have the Complainant’s permission to use the disputed domain names. And since the Respondent’s English Center closed down in May 2017, he certainly does not have any rights or legitimate interests in the domains. The Respondent’s inclusion of a disclaimer at the very bottom of some of the websites associated with the disputed domain names does not diminish the likelihood of confusion. Users seeking information regarding the TOEFL and TOEIC tests would access the Respondent’s websites without previously knowing that the websites were not affiliated with the Complainant. Furthermore, <toefl-vancouver.org>, <toeic-vancouver.org>, and <toeic-canada.org> are currently inactive. Prior Panels have repeatedly found that inactive websites fail to establish that the Respondent has made a bona fide offering of goods or services or preparations to make such an offering.

- The disputed domain names were registered and are being used in bad faith. The Respondent’s actions constitute numerous instances of bad faith as set forth in paragraph 4(b) of the Policy. As an initial matter, the Respondent clearly knew of the Complainant’s well-known TOEFL and TOEIC marks at the time he registered and used the disputed domain names. The Respondent registered the first disputed domain name on December 6, 1999, more than 30 years after the Complainant began using the TOEFL mark, and 20 years after it began using the TOEIC mark. The Respondent also clearly knew of the Complainant’s rights to the Complainant’s marks at the time he registered and used the disputed domain names, as evidenced by the Respondent’s disclaimer of affiliation with the Complainant (visible only on some of the websites and only once users have been misled to the websites by a confusingly similar domain name). Such knowledge is sufficient to establish that the disputed domain names were appropriated and used by the Respondent in bad faith. Moreover, the Respondent has demonstrated bad faith by intentionally attempting to attract, for commercial gain, Internet users to the website associated with the disputed domain names by creating a likelihood of confusion with the Complainant’s TOEFL and TOEIC marks. The Respondent has registered the disputed domain names to attract Internet users to his websites under the belief that the Respondent’s websites are authorized by or associated with the Complainant, and to profit from sales of test preparation services through those websites. Such use amounts to clear and blatant bad faith registration of the disputed domain names for commercial gain. Moreover, the Complained warned the Respondent repeatedly that his conduct violates the Policy and infringes its rights to the TOEFL and TOEIC marks. The Respondent’s failure to answer the letters sent to him in 2017 requesting that he transfer the disputed domain names lends additional support to a finding of bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(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.

A. Identical or Confusingly Similar

The Panel has no doubt that “toefl” and “toeic” are terms directly connected with the Complainant’s trademarks.

Annex 7 to the Complaint shows trademark registrations for TOEFL and TOEIC registered in the United States as long ago as in 1978 and in 1982. Annexes 8 and 9 describe several other TOEFL and TOEIC trademarks obtained by the Complainant in Canada and in numerous other countries.

The trademarks TOEFL and TOEIC are wholly encompassed within the disputed domain names. The disputed domain names differ from the Complainant’s trademarks TOEFL and TOEIC by the inclusion of the suffixes “-canada”, “-preparation”, “-usa” and “ vancouver”, as well as of the generic Top-Level Domain (“gTLD”) extensions “.com” or “.org”.

Previous UDRP decisions have found that the mere addition of symbols (such as a hyphen), as well as of descriptive expressions (such as “preparation”, in the context of educational testing) or geographical terms (such as “usa” – that usually corresponds to the acronym of the United States of America –, “canada” and “vancouver”) to a trademark in a domain name does not avoid a finding of confusing similarity (see, e.g., BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017 0284; Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017 0287; Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000 0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; and America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000 0713).

It is also already well established that the addition of gTLD extensions such as “.com” or “.org” are typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is 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 at issue.

Based on the Respondents’ default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

Although the Respondent registered the disputed domain names more than fifteen years ago, the TOEFL and TOEIC trademarks were registered by the Complainant decades before. Furthermore, the Complainant showed its dissatisfaction with the registration and use of its trademarks to compose the disputed domain names from the outset, as indicated by the cease-and-desist letter sent in 2003, concerning the “Improper use of ETS trademarks on various websites”.

It is also to be noted that, as the Complainant himself acknowledges, for a certain period the use of the TOEFL and TOEIC marks in the context of the websites linked to the disputed domain names had been regulated by Complainant. However, shortly thereafter, the Respondent failed to meet the conditions set forth by the Complainant. Moreover, in recent years the Respondent has repeatedly been notified of the inadequacy of its websites and of the misuse of the trademarks TOEFL and TOEIC on the disputed domain names. Finally, it was evidenced that at this moment the Respondent is no longer operating, which prevents concluding that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint. Without prejudice to the complainant’s duty to establish that a domain name has been registered and used in bad faith, a respondent claiming a right or legitimate interest in a domain name for example based on a prior agreement or relationship between the parties or based on past good-faith use (thus demonstrating merely a past right or legitimate interest) would not necessarily have rights or legitimate interests in the domain name, at the time a decision is rendered.

Currently, the Complainant has not licensed or authorized the usage of its trademarks to the Respondent to compose the disputed domain names, and it does not appear from the present record that the Respondent is commonly known by the disputed domain names.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain names, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 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 its website or location or of a product or service on its website or location.

When the disputed domain names were registered by the Respondent (between 1999 and 2001) the trademarks TOEFL and TOEIC were already well-known and directly connected to the Complainant’s language proficiency tests.

Also, the contents published at the disputed domain names make direct references to the Complainant’s services and products, reproducing the Complainant’s trademarks TOEFL and TOEIC.

Therefore, the Panel concludes that it would not be possible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademarks.

The cease-and-desist letter sent to the Respondent in 2003 makes clear that the Complainant had not initially agreed with the use of its trademarks TOEFL and TOEIC to compose the disputed domain names.

Even if at some point the use of these marks on the websites at the disputed domain names had been regulated by Complainant, the evidence in this case makes it clear that this condition has not existed for a long time.

In recent years, repeating what happened at the time of registration of the disputed domain names, the Respondent has been successively challenged to cease the use of the TOEFL and TOEIC marks, without presenting any answer or justification to the Complainant.

The use of the Complainant’s well-known trademarks TOEFL and TOEIC to compose the disputed domain names, together with a descriptive term such as “preparation” or with geographic indications such as “usa”, “canada” and “vancouver” clearly creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or disputed domain names.

Some of the disputed domain names present a disclaimer stating that TOEFL and TOEIC are registered trademarks of the Complainant and that the said websites are not endorsed or approved by the Complainant. However, in addition to the fact that this reference is not being present in all websites at the disputed domain names, according to the WIPO Overview 3.0, the mere existence of a disclaimer cannot cure a finding of bad faith, especially where the overall circumstances of a case point to the respondent’s bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.

The passive holding of some of the disputed domain names does not prevent a finding of bad faith.

Finally, the passive and non-collaborative posture of the Respondent, not at least providing justifications for the use of the Complainant’s trademarks certainly cannot be used in benefit of the Respondent in the present case.

Accordingly, the Panel finds that the Complainant has met its burden under the third element 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 disputed domain names <toefl-canada.com>, <toefl-preparation.com>, <toefl-usa.com>, <toefl vancouver.org>, <toeic-canada.com>, <toeic-canada.org>, and <toeic-vancouver.org> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: July 17, 2018