WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. Deep Udeshi
Case No. D2020-0166
1. The Parties
The Complainant is Educational Testing Service, United States of America (“United States”), represented by Jones Day, United States.
The Respondent is Deep Udeshi, India.
2. The Domain Names and Registrar
The disputed domain names <mockgre.com> and <mocktoefl.com> (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 January 22, 2020. On January 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification of the Domain Names. On January 24, 2020, 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 January 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2020. On January 31, 2020, the Center received an email from the Respondent in which the Respondent expressed their willingness to explore settlement options. The Center sent an email communication to the Parties on January 31, 2020 advising them on the possibility of exploring settlement options. On February 20, 2020, the Center received an email communication from the Complainant in which they stated that they are not interested in suspending the matter or pursuing a settlement that requires them to compensate the registrant for the return of the Domain Names. Accordingly, the Center notified the Parties of the commencement of panel appointment process on February 21, 2020.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on February 27, 2020. 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. It has developed and administered tests for measuring skills, academic aptitude and achievement, and occupational and professional competency since its formation in 1947. The Complainant administers and scores more than 50 million tests per year, in more than 180 countries and 10,000 locations worldwide. The tests include the TOEFL® test, the TOEIC® test, the PRAXIS® test, and the GRE® General Test. In addition to the headquarters in Princeton, New Jersey, the Complainant has regional offices in California, Florida, Texas, Washington D.C. and Puerto Rico, as well as subsidiaries in the Netherlands and other countries. The Complainant maintains a worldwide network of local test administrators and authorized testing centers.
The Complainant owns several trademark registrations for GRE and TOEFL worldwide, including in the United States and India:
- United States Trademark registration No. 1146134 for GRE, registered on 1981 with priority dating back to November 1941; and
- United States Trademark registration No. 1103427 for TOEFL, registered on October 3, 1978 with priority dating back to February 1964.
The Complainant has many domain name registrations for GRE and TOEFL, such as <gre.org> and <toefl.com>, both registered in 1994.
According to the Registrar, the Domain Names were registered in 2009, updated in 2017 and 2019, and both Domain Names expire at the end of 2020. At the time of drafting the Decision, the Domain Names resolved to an error page and the Registrar’s parking page.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations. The Complainant argues that the Complainant’s trademarks are well-known, and that Domain Names are confusingly similar to the Complainant’s trademarks. The addition of the descriptive term “mock” does not decrease the confusing similarity, but increases the likelihood of confusion, as the term relates to Complainant’s goods and services.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant asserts that the Respondent is not affiliated with the Complainant, nor is the Respondent an authorized distributor or reseller of the Complainant’s products. The Respondent has not been authorized by the Complainant to use the trademarks. There is no evidence of the Respondent’s use of, or preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering. The <mockgre.com> domain name resolves to an inactive website. The <mocktoefl.com> domain name resolves to a website that operates as a pay-per-click site. The Respondent has listed the Domain Names for sale for $10.000 per domain name.
The Complainant believes it is evident that the Respondent knew of the Complainant and its trademarks when the Respondent registered the Domain Names. The Complainant argues that the Respondent has registered the Domain Names to attract Internet users to the Respondent’s websites under the belief that the websites are authorized by or associated with the Complainant. It is done to profit from sales of test preparation services or from pay-per-click hits through the websites. Such use amounts to bad faith. Moreover, the Domain Names are offered for sale at $10.000.
The Respondent has not replied to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademarks GRE and TOEFL.
The test for confusing similarity involves the comparison between the trademarks and the Domain Names. In this case, the Domain Names include the entire trademarks, added the descriptive term “mock”. The addition does not affect the confusing similarity. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the gTLD “.com”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Names are confusingly similar to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Names containing the Complainant’s trademark or otherwise make use of its marks. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired common law or unregistered trademark rights. There is no evidence of 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. The use of the Domain Names, and the fact that the Domain Names are listed for sale, is rather evidence of bad faith, see below.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds it likely that the Respondent was aware of the Complainant when the Respondent registered the Domain Names. The Respondent’s use of the Domain Names seems to be to attract Internet users to the Respondent’s websites under the belief that the websites are authorized by or associated with the Complainant. Moreover, the Domain Names are offered for sale at $10.000, and the Respondent has not responded to the Complainant’s contentions.
For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of 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 Domain Names <mockgre.com> and <mocktoefl.com> be transferred to the Complainant.
Date: March 6, 2020