WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Mohammed Hayder

Case No. D2018-2224

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 Mohammed Hayder of Zayouna, Iraq.

2. The Domain Names and Registrar

The disputed domain names <registration-ibt.org> and <registration-toefl.org> (the “Domain Names”) 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 October 1, 2018. On October 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 2, 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 October 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2018.

The Center appointed David Taylor as the sole panelist in this matter on November 12, 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, Educational Testing Service (“ETS”), is the world’s largest private non-profit educational testing and assessment organization founded in 1947. The Complainant has registered trade mark rights in the term TOEFL for goods in classes 9, 16 and 41 and in the terms TOEFL IBT and IBT for goods in classes 9, 16, 41 and 42, in many countries around the world, such as, but not limited to:

- United States Trade Mark No. 1103427, TOEFL, registered on October 3, 1978;

- United States Trade Mark No. 2461224, TOEFL, registered on June 19, 2001;

- United States Trade Mark No. 3953133, TOEFL IBT, registered on May 3, 2011;

- Iraq Trade Mark No. 47365, TOEFL, registered on July 29, 2008;

- Benelux Trade Mark No. 99514, IBT, registered on April 8, 2014.

The Complainant’s official website is available at “www.ets.org” and the Complainant owns registrations of multiple domain names that incorporate the TOEFL and IBT trade marks, such as <toeflibt.org> and <ets‑ibt.org>, which were registered by the Complainant in 2004.

The Respondent appears to be an individual based in Iraq. No additional information about the Respondent is known.

The Domain Name <registration-ibt.org> was registered by the Respondent on October 14, 2017 and the Domain Name <registration-toefl.org> was registered by the Respondent on September 21, 2018. Neither is currently being used to point to an active website. However, both Domain Names were previously mirroring the Complainant’s official TOEFL test registration page, possibly in order to collect personal information from Internet users.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it is the world’s largest private non-profit educational testing and assessment organization founded in 1947. The Complainant states that its TOEFL trade mark, first adopted in the year 1978, and its TOEFL IBT and IBT trade marks have gained worldwide recognition and goodwill as a result of its extensive and continuous use throughout the world. As evidence, the Complainant has supplied a list of its trade mark registrations certificates.

Furthermore, the Complainant claims to be the owner of a number of generic Top-Level Domain (“gTLD”) domain names that incorporate the TOEFL and IBT trade marks and which were registered years prior to the registration of the Domain Names by the Respondent. The Complainant submits that these domain names include, among other, the following domain names: <toeflibt.org>, <toeflibtregistration.com>, <ibt‑toefl.org>, <toefl-ibt.org> and <toefl-ibt.org>.

In response to each of the requirements under the Policy, the Complainant asserts as follows:

(i) The Domain Name is confusingly similar to the Complainant’s trade mark

The Complainant argues that the Domain Names incorporate its IBT and TOEFL IBT trade marks in their entirety and its TOEFL IBT mark in part.

The Complainant submits that the addition of a generic term such as “registration” to the IBT and TOEFL trade marks does not decrease the confusing similarity arising from the incorporation of the Complainant’s IBT and TOEFL trade marks in their entirety, but rather increases the likelihood of confusion, as it is a term related to the Complainant’s services.

The Complainant states that the Respondent has operated the Domain Names as phishing websites, which is also relevant to a finding of confusingly similarity.

(ii) The Respondent has no rights or legitimate interests in the Domain Name

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant asserts that the Respondent is in no way related to or associated with the Complainant nor is the Respondent a licensee of the Complainant.

Further, the Complainant argues that the Respondent is not, and to the Complainant’s knowledge never was, commonly known by the Domain Names, which supports a finding that the Respondent has no rights or legitimate interest in the Domain Names.

The Complainant states that the Respondent’s operation of phishing websites is considered a form of Internet fraud and therefore establishes a prima facie case that the Respondent lacks rights or legitimate interests in the websites.

(iii) The Domain Name was registered and is being used in bad faith

The Complainant underlines that the Respondent knew of the Complainant’s rights to the TOEFL, TOEFL IBT, and IBT trade marks at the time he registered and used the Domain Names as evidenced by the Respondent’s near-identical duplication of the Complainant’s TOEFL test registration website and use of the IBT and TOEFL marks in the Domain Names.

The Complainant asserts that the Respondent’s registration and use of the Domain Names was designed to misdirect consumers in search of the Complainant’s official website. Furthermore, the Complainant states that the Respondent was engaged in an unauthorized phishing scheme that was designed to gain access to the login credentials and/or personal information of the Complainant’s IBT test takers and other customers through the websites associated with the Domain Names.

The Complainant argues that the Respondent failed to respond to communications from the Complainant, which supports an inference of bad faith.

According to the Complainant, the Respondent registered the Domain Names in bad faith as he provided false identification information.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Names, the Complainant must prove the following three elements:

(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.

In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has supplied evidence that it has registered trade mark rights in the terms TOEFL, TOEFL IBT and IBT in connection with “information manuals dealing with educational testing” and “educational testing services-namely, administering tests dealing with languages”. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Names are identical or confusingly similar to the Complainant’s trade marks. In this regard, the Panel notes that the Domain Names incorporate the Complainant’s distinctive TOEFL and IBT trade marks in their entirety with the addition of a hyphen and the descriptive term “registration”. The Panel finds that this addition is insufficient to avoid the confusing similarity with the Complainant’s trade marks. See section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

Furthermore, it is widely accepted that the “.org” gTLD is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name.

The Panel therefore finds that the Domain Names are confusingly similar to the Complainant’s trade marks.

The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:

“(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 trade mark 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 trade mark or service mark at issue.”

A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See section 2.1 of the WIPO Overview 3.0.

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Names and that, as a result of his default, the Respondent has failed to rebut such a showing.

The Complainant has asserted that the Respondent is not affiliated or connected in any way with the Complainant and nor has he been authorised by the Complainant to make any use of its TOEFL, TOEFL IBT and IBT trade marks. There is no evidence that the Respondent is commonly known by the Domain Names, in accordance with paragraph 4(c)(ii) of the Policy.

The Respondent’s use of the Domain Names domains to create websites that were an exact copy of the Complainant’s official TOEFL test registration site in order to collect the personal information of users who believed that they were setting up a test registration profile with the Complainant or logging in to their official account, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Names, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy. The Respondent was most probably using the Domain Names, which consist of the Complainant’s trade marks TOEFL and IBT in their entirety with the addition of a hyphen and the generic term “registration” related to the Complainant’s field of business, in an unauthorized phishing scheme to fraudulently misrepresent himself as the Complainant in order to unduly take advantage of the Complainant’s rights. See section 2.13.1 of the WIPO Overview 3.0: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”

Finally, the Respondent’s lack of rights or legitimate interests in the Domain Names may be inferred from the Respondent’s failure to submit a response to the Complaint. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Names were registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(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 trade mark 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 trade mark 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 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 your website or location or of a product or service on your website or location.”

The Complainant trade mark rights in the terms TOEFL, TOEFL IBT and IBT in connection with “information manuals dealing with educational testing” and “educational testing services-namely, administering tests dealing with languages” predate the registration date of the Domain Names by many years. Given the nature of the Domain Names, which consist of an exact match of the Complainant’s trade marks TOEFL and IBT with the addition of a hyphen and the generic term “registration”, in conjunction with the subsequent use of the Domain Names to resolve to a clone website of the Complainant’s, the Panel is convinced that, on balance, the Respondent had the Complainant in mind at the time of registration of the Domain Names.

Moreover, the Panel finds that the Respondent was likely engaged in an unauthorized phishing scheme that was designed to gain access to the login credentials and/or personal information of TOEFL IBT test takers and other customers of the Complainant through the websites associated with the Domain Names. See for instance, Educational Testing Service v. Ali Mohammed Ahmed, Afakcenter, WIPO Case No. D2017-1600 (“The Respondent’s bad faith registration and use is further demonstrated by the fact that the Respondent used the Disputed Domain Name for what appears to be a phishing website, an illegitimate activity, which is manifestly considered evidence of bad faith”). The Panel therefore finds that the Respondent’s use of the Domain Names designed as a phishing scheme to fraudulently misrepresent himself as the Complainant was in bad faith.

The Panel also finds that an additional circumstance indicative of the Respondent’s bad faith is the fact that the Respondent registered the Domain Names using a false address. Prior panels deciding under the Policy have held that actively providing (and failing to correct) inaccurate, incomplete or false WhoIs data constitutes additional evidence of bad faith.

Finally, the Panel also finds that the Respondent’s failure to take part in the present proceedings constitutes an additional indication of its bad faith.

The Panel thus finds that the Domain Names were registered and used in bad faith.

Accordingly, the Complainant has satisfied paragraph 4(a)(iii) 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 <registration-ibt.org> and <registration-toefl.org> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: November 26, 2018