WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
British Council, The Chancellor, Masters and Scholars of the University of Cambridge, IELTS Australia Pty v. Whois Agent of Domain Protection Services, Inc. / Siamak Nezhadi, Apptel GmbH
Case No. D2021-3709
1. The Parties
The Complainant is British Council, The Chancellor, Masters and Scholars of the University of Cambridge, United Kingdom (“UK”) and IELTS Australia Pty, Australia, represented by Mills & Reeve LLP, UK.
The Respondent is Whois Agent of Domain Protection Services, Inc., United States of America / Siamak Nezhadi, Apptel GmbH, Austria.
2. The Domain Name and Registrar
The disputed domain name <takeielts.net> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2021. On November 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 10, 2021.
The Center verified that the Complaint together with the amendment to 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 December 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2021. The Response was filed with the Center on December 19, 2021.
The Center appointed Adam Taylor as the sole panelist in this matter on January 6, 2022. 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 Complainants are (1) the British Council, a company incorporated by Royal Charter and registered as a charity in both England and Wales and in Scotland, (2) The Chancellor, Masters and Scholars of the University of Cambridge (generally known as the University of Cambridge), a common law corporation by prescription, confirmed by the Oxford and Cambridge Act 1571, and (3) IELTS Australia Pty Limited, an Australian company. The Complainants are collectively referred to below as “the Complainant” unless it is necessary to refer to them separately.
Since 1989, the Complainant has operated the International English Language Testing System, generally known as “IELTS” and first developed in 1980. The results of the tests are accepted by many academic institutions worldwide and the UK government as proof of English language ability.
The Complainant promotes the test at its main website at “www.ielts.org” as well as on various other websites.
The second Complainant, the University of Cambridge, owns European Union registered trade mark no. 1884253 for the word mark IELTS, filed on October 3, 2000, registered on November 29, 2001, in class 41. On December 31, 2020, this mark was converted into a UK registered trade mark, no. 901884253, with the same registration date as the original, as a consequence of the UK leaving the European Union.
The second Complainant also owns UK trade mark no. 2360300 for the word mark IELTS, filed on April 5, 2004, registered on March 25, 2005 in class 41.
All three Complainants are the joint registered proprietors of UK registered trade mark no. 3517510 for the word mark IELTS, filed on July 30, 2020, registered on December 25, 2020, in classes 9 and 16.
The Respondent registered the disputed domain name on December 2, 2018.
The Respondent has used the disputed domain name for a website offering mock examinations. The site was prominently branded with the statements: “Succeed in the IELTS Exam”, “With Online Mock Texts and Exceptionally Detailed Test Reports”, and “The Fastest Way to Become IELTS Ready”. Amongst other things, the homepage described its tests as “the closest tests to IELTS” and claimed that they were “developed by official IELTS examiners” and “reviewed by certified IELTS examiners”.
The resources section footer of the website included links to “IELTS Official Website” as well as the websites of the individual Complainants. The footer also included a disclaimer stating: “IELTS is a registered trade mark of University of Cambridge ESOL, the British Council, and IDP Education Australia. takeielts.net is not affiliated, approved or endorsed by the University of Cambridge ESOL, the British Council, and IDP Education Australia. All other trade marks on this website are the property of their respective owners.”
The “About Our Reports” page of the website included the statement: “Marked by IELTS Examiners Certified by” followed by the logos of each of the three Complainants.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant has acquired a substantial reputation and valuable goodwill in the mark IELTS in the UK and internationally in relation to the provision of educational, teaching, testing, and examination services and teaching courses and materials.
The disputed domain name is confusingly similar to the Complainant’s trade mark as it merely adds the simple verb “take” to the term “ielts”, which is the dominant and distinctive element of the disputed domain name.
The Respondent lacks rights or legitimate interests in respect of the disputed domain name.
The Complainant has not authorised the Respondent to register or use the disputed domain name.
The Respondent is not using the Respondent in connection with a bona fide offering for goods or services. Rather, the Respondent is using of the term “ielts” in an unfair manner, namely to mislead consumers into thinking that the Respondent is associated with the Complainant, but in the context of examination preparation.
The disputed domain name was registered and is being used in bad faith.
The Respondent registered the disputed domain name long after the Complainant has acquired rights in the mark IELTS and was aware, or ought to have been aware that this mark was owned by third parties.
The Respondent set out to create a likelihood of confusion between the Respondent and the Complainant’s marks as to the source of the Respondent’s services, including by linking to the Complainant’s websites and by use of the Complainant’s logos and phrases such as “certified IELTS examiners”.
The Respondent set out to damage the Complainant’s business and/or to tarnish the Complainant’s mark.
The Respondent has infringed the Complainant’s trade marks and has been guilty of passing off.
The following is a summary of the Respondent’s contentions.
The Complainant has no rights over the phrase “take IELTS” because “take” is merely a verb that is commonly used to depict the act of taking part in an examination and is therefore a generic term. The addition of this word is sufficient to distinguish the Respondent’s service from the Complainant’s trade marks.
The Respondent possesses rights and/or legitimate interests in the disputed domain name, which has not been registered or used in bad faith.
The Respondent’s website is designed to support the Complainant’s customers by providing with them a legitimate preparatory mock test service that differs from the Complainant’s primary service.
The incorporation of “ielts” in the Respondent constitutes nominative fair use and is not trade mark infringement.
Since 2019, the Respondent has offered bona fide services, which have acquired international trust and recognition.
The Respondent is making legitimate fair use of the disputed domain name without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trade mark. The Respondent has not set out to intentionally create a likelihood of confusion with the Complainant’s mark or to disrupt the Complainant’s business.
The parties are not competitors. The Respondent’s website offers services that are clearly different from those of the Complainant. While the Complainant offers the IELTS exam, the Respondent offers only online “mock” tests, which term is well-known to IELTS candidates and cannot be mistaken for the actual examination because the tests are preparatory only and their nature is clearly explained on the Respondent’s website.
The disputed domain name is not misleading and creates no confusion because the Parties’ respective services are dissimilar and the disputed domain name is not being used for a site which provides the IELTS examinations themselves.
The Respondent has never used the disputed domain name to replicate the Complainant’s website.
The Respondent did not choose the disputed domain name to target the Complainant’s website at “www.takeielts.org”, but, rather, has used the “.net” Top-Level Domain (“TLD”) to indicate that the Respondent’s service is online rather than paper-based, thereby signalling fair use. The Respondent’s website supports such an inference.
The Complainant has added the word “official” to its social media profiles because “takeIELTS” is a generic term.
There is no risk of confusion because many other sites unconnected with the Complainant include the mark “ielts” in their domain names.
There is no risk of confusion with the Complainant’s website at “www.takeielts.org” because this merely forwards to a page on the first Complainant’s own website. The Respondent was unaware of such use, especially since the domain name <takeielts.com> is owned and operated by a third party. The Complainant does not itself use the term “takeielts.org” on any website.
The Respondent has taken serious measures ensure that its website visitors are completely aware that there is no affiliation with the Complainant, including a disclaimer in numerous places on its website including in the footer.
The Respondent’s website has garnered good reviews and is therefore not detrimental to the Complainant’s reputation.
As with any high-quality and trustworthy mock test, the Respondent has legitimately tried to align its tests with the Complainant’s examination as closely as possible and has acquired actual IELTS examiners certified by the Complainant to evaluate its tests. Such references on the Respondent’s website are simply an attempt to highlight features of its service and are not intended to confuse website visitors.
The Complainant has engaged in attempted reverse domain name hijacking. The Complainant is bringing this case not because the Respondent’s website is causing it any direct loss but because the Respondent’s service is reducing the likelihood of candidates failing the Complainant’s test, thereby reducing the Complainant’s revenue from failed candidates who pay for repeat tests.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Preliminary Matter – Consolidation
The principles governing the question of whether a complaint may be brought by multiple complainants or against multiple respondents are set out in section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel is satisfied that (a) the Complainants have a specific common grievance against the Respondent and that the Respondent has engaged in common conduct that has affected the Complainants in similar fashion and (b) it would be equitable and procedurally efficient to permit the consolidation.
B. Identical or Confusingly Similar
The Complainant has established rights in the mark IELTS by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and longstanding use of that mark.
Section 1.8 WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the term “take” does not prevent a finding of confusing similarity.
The Respondent asserts that the Complainant lacks rights over the entire phrase “take IELTS” because “take” is a common term. However, this is a misunderstanding of the first element. The Complainant is not required to establish rights over the entirety of the disputed domain name. It is sufficient if the disputed domain name is confusingly similar to the trade mark.
The Respondent claims that the TLD “.net” has not been chosen by the Respondent to imitate the TLD “.org” in the Complainant’s domain name <takeielts.org>. However, the TLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see section 1.11 of WIPO Overview 3.0).
Section 1.7 of WIPO Overview 3.0 makes clear that the first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trade mark and the disputed domain name. Where at least a dominant feature of the relevant mark is recognisable in the disputed domain name, it will normally be considered confusingly similar to that mark for purposes of UDRP standing.
Accordingly, the Panel is not at this stage concerned with the broader issue raised by the Respondent as to the likelihood or otherwise that Internet users will be confused by the content of the Respondent’s website, which the Panel will consider below in relation to the other elements of the Policy. At this point, what matters is that the Complainant’s distinctive mark is readily recognisable within the disputed domain name.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark and that the Complainant has therefore established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 4(c)(i) of the Policy, the Respondent is offering a service which is an adjunct to the Complainant’s own service. In the Panel’s view, it is appropriate to approach this as a reseller / distributor case. The consensus view of UDRP panels – as expressed in section 2.8 of WIPO Overview 3.0 – is that to establish a bona fide offering of goods or services in such circumstances, a respondent must comply with certain conditions (known as the “Oki Data” test).
In this case, the Panel considers that the Respondent has failed to comply with the Oki Data requirement to accurately and prominently disclose the Respondent’s relationship with the trade mark holder.
The Respondent argues strongly that Internet users will not think that the site is connected with the Complainant because it offers only mock examinations, which candidates will apparently know is not the same as the actual IELTS examination. However, the Respondent has not convinced the Panel that visitors to the site will necessarily assume that a site offering mock examinations is unaffiliated with the entity that provides the actual examinations.
In any case, the Respondent has not provided any evidence of a “prominent” disclosure of the relationship with the Complainant, per the Oki Data requirement. According to screenshots supplied by the Complainant, the Respondent’s website was simply branded with slogans encouraging users to take mock tests, but without anything in or near the header distancing the site from the Complainant. Indeed, so far as the Panel is aware, the site did not actually identify who was operating it.
While the Respondent claims that it took “serious measures” to ensure that its website visitors were well aware that there was no affiliation with the Complainant, the only specific measure identified by the Respondent is a disclaimer which was said to appear “in numerous places” on the website including in the footer. However, the Panel considers that this cannot be described as “prominent” as it was unlikely to have been seen by most users and the Respondent has not provided evidence of any more prominent use of this disclaimer. On the contrary, as mentioned in section 4 above, the “About Our Reports” page of the website included the statement: “Marked by IELTS Examiners Certified by” followed by the logos of each of the three Complainants, thereby implying an official connection with the Complainant.
Furthermore, in the Panel’s view, the disputed domain name cannot constitute fair use because it consists of the Complainant’s trade mark plus an additional term which comes too close to suggesting sponsorship or endorsement by the trade mark owner. See section 2.5.1 of the WIPO Overview 3.0.
In the Panel’s view, the word “take” in conjunction with the name of an examination denotes a service whereby a person can go to take, i.e., apply for and/or “sit”, the official examination – as the Respondent acknowledges, and not merely to signal the services of a third party preparation course. Certainly, to the Panel, the phrase “take IELTS” does not indicate a website where candidates can apply to train for or take an unofficial mock examination to help prepare themselves to sit for or “take” the official examination.
More to the point, the Complainant itself uses the combination of “take” and “ielts” in its own domain name <takeielts.org>. Even if, as the Respondent says, the Complainant does not display the exact phrase “takeielts.org” or “take IELTS” on the website at that domain name, nonetheless the Complainant is using a domain name reflecting the same formulation used by the Respondent – “take IELTS” – to direct users to an official site and presumably at least some Internet users associate that domain name / phrase with the Complainant’s official offering. As also mentioned below, the Complainant also uses the phrase “Take IELTS Official” for the name of its social media profiles.
The Panel does not consider that any of the following assertions assist the Respondent:
1. That many others unconnected with the Complainant are using the term “ielts” in their domain names, including the third party-owned <takeielts.com>. The Respondent has not provided any evidence that those third parties are using the term “ielts” in a legitimate manner but, even if the Respondent had done so, the Panel cannot see how such usage would justify the Respondent using the term “ielts” in a way that was liable to be confused with the Complainant’s official service, as discussed above.
2. That the Respondent’s use of the “.net” TLD signals that its service is online rather than paper-based and adequately differentiates it from the Complainant’s use of the “.org” TLD. The Panel doubts that many Internet users would pay much heed to the fact that the disputed domain name includes a “.net” TLD and, in any case, the Panel considers those that users who do notice the TLD are no less likely to associate the disputed domain name with the Complainant than if the Respondent had used another TLD.
3. That the Complainant has added the word “official” to its social media profiles because “takeIELTS” is a generic term. The Panel considers it more likely that the Complainant added the word “official” to distinguish its profiles from what it considered were illegitimate users of the phrase and mark.
4. That the Respondent has garnered good reviews for its business and so its actions are not detrimental to the Complainant’s reputation. Even if the Respondent is providing a “five-star service”, that would not justify it appropriating the Complainant’s mark in the manner explained above.
For the above reasons, the Panel considers that the Respondent’s use of the disputed domain name cannot be said to support a defence under the Policy.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case. The Panel would add that the Respondent has relied on paragraph 4(c)(iii), claiming amongst other things that it was making use of the disputed domain name without intent for commercial gain although plainly the Respondent is engaged on a commercial venture.
For all of the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
As explained in detail in section 6.C. above, the Panel considers that the Respondent has used for its mock examination service a domain name that is likely to make a misrepresentation to users that any associated website is connected with the Complainant – as mentioned above, the use of the term “take” in combination with the Complainant’s mark reflecting the official name of the examination sends a different message to say “prep” or something similar. As the panel put it in Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001-0376, the disputed domain name is likely to “catch by surprise” visitors intending to reach the Complainant’s website.
And, as also discussed above, the Respondent has failed to comply with the Oki Data requirement to accurately and prominently disclose the Respondent’s relationship with the trade mark holder – both at the level of the corresponding site and the disputed domain name itself.
In the Panel’s view, paragraph 4(b)(iv) of the Policy applies in these circumstances. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The likelihood of confusion is not diminished by the possibility that at some point users arriving at the Respondent’s site will realise that the site is not connected with the Complainant. Paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users. Here, the disputed domain name creates an implied risk of affiliation with the Complainant, and the Respondent profits from at least some of the traffic intended for the Complainant.
The Complainant has therefore established the third element of paragraph 4(a) 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, <takeielts.net> be transferred to the Complainants.
Date: January 20, 2022