WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. ahmed faez, faez ahmed
Case No. D2021-3722
1. The Parties
The Complainant is Educational Testing Service, United States of America (“United States”), represented by Jones Day, United States.
The Respondent is ahmed faez, faez ahmed, Iraq.
2. The Domain Name and Registrar
The disputed domain name <ets-iq.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2021. On November 8, 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 9, 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 November 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2021.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on December 9, 2021. 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. The Complainant develops, administers and scores more than 50 million tests per year in more than 180 countries, including the TOEFL test.
The Complainant owns trademark registrations in various jurisdictions, including the United States trademark ETS (Reg. No. 5372434, registered on January 9, 2018) and the United States trademark ETS (Reg. No. 4735388, registered on May 12, 2015).
The Complainant further holds the domain name <ets.org> under which the official website of the Complainant is available. The Complainant holds several other domain names incorporating the ETS trademark. The Complainant advertises and sells its services through its <ets.org> domain name.
The disputed domain name was created on June 16, 2020 and resolves to a website advertising an alleged TOEFL exam center in Iraq and offering TOEFL tests.
5. Parties’ Contentions
The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has submitted sufficient evidence to demonstrate its registered rights in the ETS trademark.
The ETS trademark is wholly reproduced in the disputed domain name.
A domain name is “identical or confusingly similar” to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “[w]here 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”. Hence, the Panel holds that the addition of the geographical term “iq” (for Iraq) to the Complainant’s ETS trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainant contends that the Respondent is neither affiliated with the Complainant nor making any bona fide use of the disputed domain name.
The Respondent uses the disputed domain name to offer alleged services in connection to the Complainant’s business and trademark. The Complainant has credibly alleged that the Respondent uses the disputed domain name for generating revenue by offering the same sort of services for which the Complainant registered the ETS trademark while taking advantage of the Complainant’s trademark notoriety. This cannot be considered as a bona fide offering of goods or services or a noncommercial use.
Furthermore, the composition of the disputed domain name, wholly incorporating the Complainant’s trademark and a geographical term, cannot constitute fair use in these circumstances as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
The Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainant’s trademark, it can be inferred that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name.
The Panel finds that the reproduction of the Complainant’s trademark along with the term “iq” creates a likelihood of confusion between the Complainant’s trademark and the disputed domain name.
The evidence and allegations submitted by the Complainant support a finding that the Respondent was engaged in an attempt to pass himself off as the Complainant by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website for his own commercial benefit. The Respondent therefore used the disputed domain name in bad faith (see Claudie Pierlot v. Yinglong Ma, WIPO Case No. D2018-2466).
Accordingly, the Complainant has also fulfilled 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 <ets-iq.com> be transferred to the Complainant.
Date: December 14, 2021