WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. Super Privacy Service LTD c/o Dynadot / linhui feng
Case No. D2021-4101
1. The Parties
The Complainant is Educational Testing Service, United States of America (“United States” or “U.S.”), represented by Jones Day, United States.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / linhui feng, China.
2. The Domain Name and Registrar
The disputed domain name <toeicjp.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2021. On December 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 December 14, 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 December 14, 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 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2022.
The Center appointed Fabrizio Bedarida, as the sole panelist in this matter on February 7, 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 Complainant in this administrative proceeding is Educational Testing Service, one of the world’s largest private non-profit educational testing and assessment organizations. The Complainant’s products and services measure knowledge and skills, promote learning and educational performance, and support education and professional development for all people worldwide. The Complainantdevelops, administers, and scores more than 50 million tests per year, in more than 180 countries and at 9,000 locations worldwide. The many well-known tests developed and administered by the Complainant, or its related companies include the TOEFL test, the TOEIC test, the PRAXIS test, and the GRE test.
Since 1979, the Complainant has administered the TOEIC test to measure English-language proficiency. Today, TOEIC test scores are used by over 14,000 organizations, government agencies, and English-language learning programs across more than 160 countries.
Prior UDRP panels have consistently remarked upon the fame and distinctiveness of the Complainant’s TOEIC Mark. See, e.g., Educational Testing Service v. ISITE, Inc., Masuo Santo, WIPO Case No. D2008-1980 (“It is clear on the given evidence that the Complainant has a longstanding use of the name “Toeic” and that it has registered trademarks that incorporate that term in many parts of the world”); Educational Testing Service v. Jong-Cheol Seo, WIPO Case No. D2006-0056 (“Complainant’s [TOEIC] trademark has a strong reputation and is widely known”).
The Complainant owns registrations for the TOEIC mark in over 100 countries worldwide, including in China.
The Complainant has registered, inter alia, the following trademarks:
- TOEIC (word), U.S. Registration No. 1,191,669, registered on March 9, 1982;
- TOEIC (word), Chinese Registration No. 763206, registered on August 28, 1995.
The Complainant is also the registered owner of domain names including the mark TOEIC, the earliest of which is <toeic.org>, dating back to August 24, 1997. In addition, the Complainant owns domain names <toeic.com> and <toeic.net>.
The disputed domain name was registered on November 20, 2020.
The Complainant provided evidence that the Respondent was operating a website associated with the disputed domain name that displayed pornographic material. The Complainant has confirmed that the website at the disputed domain name was disabled as of October 25, 2021. Currently, the disputed domain name resolves to a pay-per-click website, hosting multiple revolving links to third-party websites, including websites offering competing products and services.
5. Parties’ Contentions
The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
Specifically, the Complainant has asserted that the Respondent’s intention is to create confusion among Internet users for its own benefit, and by doing so the Respondent is damaging the Complainant’s good reputation.
Moreover, the Complainant claims that the website under the disputed domain name previously showed explicit pornographic content.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
(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 Complainant has established rights in the TOEIC trademarks.
The only difference between the disputed domain name and the Complainant’s TOEIC trademark is the addition of the letters “jp” to the Complainant’s trademark and the addition of the generic Top-Level Domain (“gTLD”) “.com”. The Panel agrees with the Complainant’s assertion that these differences are irrelevant in assessing the confusing similarity between the Complainant’s trademarks and the disputed domain name.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “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.”
Therefore, the Panel finds the disputed domain name to be confusingly similar to the TOEIC trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the disputed domain name, the name “toeicjp”, or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark.
Furthermore, the Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent was in fact using the disputed domain name for a website where explicit pornographic content was displayed.
As affirmed by previous UDRP panels, the Respondent’s use of the disputed domain name for the distribution of offensive pornographic content does not constitute a legitimate noncommercial or fair use. See Guccio Gucci S.p.A v. Roberto Baggio, WIPO Case No. D2009-1196 (which found that “[t]he use of a domain name that is confusingly similar to the Complainant’s well known registered mark in order to lure Internet users to a website offering content that many are likely to find offensive does not, in the Panel’s view, constitute a bona fide offering of services capable of conferring a right or legitimate interest under paragraph 4(c)(i) of the [ICANN] Policy, nor does it amount to a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. There is nothing bona fide or legitimate about adopting a confusingly similar domain name in order to attract Internet users seeking a website relating to the Complainant and its brand, only to expose them to pornographic material that is likely to offend and may also taint, either consciously or subliminally, their impressions of the GUCCI brand”).
The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. The Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.
The Complainant’s trademark has no meaning apart from indicating the Complainant’s trademark and trade name. It has been in use for many years and has a fairly high degree of distinctiveness, and thus, on the balance of probability, the Panel believes the Respondent knew of the Complainant’s trademark when registering the disputed domain name.
Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service. While the use of a privacy service does not in and of itself constitute bad faith under the Policy, the manner in which such service is used in the present case is deemed to contribute to a finding of bad faith.
Moreover, another indication of bad faith registration and use of the disputed domain name is the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in this proceeding. Hence, the Panel finds that if the Respondent had legitimate purposes for registering and using the disputed domain name, it would have responded to these assertions.
The Panel finds that the Respondent’s use of the disputed domain name, first for a website displaying explicit adult content, and then for a pay-per-click website with competing links, constitutes a disruption of the Complainant’s business and shows an intention to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark, and so qualifies as bad faith registration and use under the Policy.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
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 <toeicjp.com> be transferred to the Complainant.
Date: February 21, 2022