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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Whois Privacy Protection Service by onamae.com / Xiansheng Chen, chenxiansheng

Case No. D2021-4103

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 Whois Privacy Protection Service by onamae.com, Japan/ Xiansheng Chen, chenxiansheng, Singapore.

2. The Domain Name and Registrar

The disputed domain name <toeic911.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 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 10, 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 amended Complaint in English on December 14, 2021.

On December 10, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On December 14, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent in English and Japanese of the Complaint, and the proceedings commenced on December 16, 2021. In accordance with paragraph 5 of the Rules, the due date for Response was January 5, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2022.

The Center appointed Yuji Yamaguchi as the sole panelist in this matter on January 12, 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is one of the world’s largest private non-profit educational testing and assessment organization. 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 Complainant develops, administers and scores more than 50 million tests per year, in more than 180 countries and 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.

The Complainant first applied to register the TOEIC trademark (the “TOEIC Mark”) on October 26, 1979 in the United States, and registration was granted under U.S. Registration No. 1,191,669 in International Classes 16 and 42 on March 9, 1982. This registration indicates first use of the TOEIC Mark at least as early as October 19, 1979.

Since then, the Complainant has used, registered, and applied to register the TOEIC Mark and variations and foreign equivalents thereof in numerous countries around the world, covering various products and services related to testing. The Complainant owns registrations for the TOEIC Mark in over 100 countries worldwide, including in Japan and Singapore.

The Complainant owns registrations for numerous domain names that incorporate the TOEIC Mark, the earliest of which is <toeic.org>, dating back to August 24, 1997. In addition, the Complainant owns the domain names <toeic.com> and <toeic.net>. The Complainant utilizes all three domain names to redirect to <ets.org/toeic>, through which the Complainant promotes goods and services under the TOEIC Mark.

The disputed domain name was registered on October 1, 2021. The disputed domain name resolved to a website featuring explicit adult content and pornographic material.

5. Parties’ Contentions

A. Complainant

First, it is well-established by previous UDRP decisions that a domain name incorporating a distinctive trademark in its entirety creates sufficient similarity between the trademark and the domain name so as to render it confusingly similar, regardless of the presence of other terms in the domain name. Given the fame of the TOEIC Mark, and the fact that the disputed domain name incorporates the TOEIC mark in its entirety, consumers are likely to believe that the disputed domain name is affiliated with, authorized, or endorsed by the Complainant.

Second, the Respondent is not a licensee of or otherwise affiliated with the Complainant and is not commonly known by the disputed domain name. Furthermore, the use of the TOEIC Mark in the disputed domain name is not necessary for any legitimate noncommercial or fair use purpose. Rather than using the disputed domain name in connection with a bona fide offering of goods or services, the Respondent has instead used the disputed domain name for the purpose of providing an active website featuring explicit adult content and pornographic material. The use of the disputed domain name for the distribution of offensive pornographic content does not constitute a legitimate noncommercial or fair use. Given the disputed domain name was registered with knowledge of the Complainant’s extensive goodwill and reputation in the TOEIC Mark, and that currently the disputed domain name is not being used for any legitimate purpose and was used for the provision of a website offering explicit adult content, there is no question that the Respondent is not making legitimate, noncommercial or fair use of the disputed domain name.

Third, the Respondent registered, used, and is holding the disputed domain name willfully, in bad faith, and in complete disregard of the Complainant’s exclusive rights to use the TOEIC Mark. The Respondent’s actions constitute numerous instances of bad faith as set forth in paragraph 4(b) of the Policy. As an initial matter, the Respondent clearly knew of the Complainant’s well-known TOEIC Mark at the time it registered and used the disputed domain name. The Respondent registered the disputed domain name on October 1, 2021, more than 40 years after the Complainant began using the TOEIC Mark, which supports an inference of bad faith. The Respondent has registered and utilized the disputed domain name in connection with the provision of a website offering explicit obscene content and pornographic material, in a bad faith effort to interfere with the Complainant’s offering of goods and services by intercepting, misdirecting and misleading members of the consuming public. The Respondent’s use of the disputed domain name to offer pornographic material tarnishes the Complainant’s TOEIC Mark further evidencing bad faith. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are intended to be illustrative, rather than an exclusive list of all circumstances from which such bad faith may be found.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The language of the Registration Agreement for the disputed domain name is Japanese.

However, the Complainant requests that the Panel adopt English as the language of this proceeding on the following grounds with several reasons including that the Respondent being located in Singapore, not Japan, evidences that it would be inappropriate for Japanese to be the language of the proceeding and that it would be unfair to require the Complainant to translate its Complaint and all other proceeding materials into Japanese as it would result in additional expenses and cause unnecessary delay of the proceeding. The Respondent had the opportunity to submit an objection to the Complainant’s request to proceed in English of which the Center had notified the Parties by email both in English and Japanese. But the Respondent did not submit any comment on the language of the proceeding.

In view of these circumstances of this case, the Panel decides that English should be the language of the proceeding with the spirit of fairness and justice intended by the Policy.

6.2 Substantive Elements of the Policy

According to paragraph 4(a) of the Policy, the Complainant must assert and prove the following three elements are present:

(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 disputed domain name incorporates the Complainant’s TOEIC Mark in its entirety with the addition of three-digit number “911” and a generic Top-Level Domain (“gTLD”) “.com”.

As noted in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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. “911” may be used as a telephone number for emergency services in the United States and some other countries, but its presence as a suffix to the Complainant’s trademark in the disputed domain name does not prevent a finding of confusing similarity (see F. Hoffmann-La Roche AG v. Registration Private, Domains By Proxy, LLC / Amir Haddad, WIPO Case No. D2019-1291 (<valium911.com>)). The gTLD “.com” may be disregarded for the purpose of assessment of confusing similarity. See section 1.11.1 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s TOEIC Mark.

B. Rights or Legitimate Interests

The disputed domain name was once used for the distribution of offensive pornographic content. The tarnishment of another’s trademark by using it to divert Internet users to pornographic websites cannot be the ground for justifying the Respondent’s rights or legitimate interests (see FENDI S.r.l. v. Wubo, Wubo, WIPO Case No. D2021-2019).

On October 8, 2021 and thereafter, the Complainant sent complaints to request the suspension of the disputed domain name to the host of the disputed domain name, CloudRadium L.L.C., but no response was received from CloudRadium L.L.C. On October 8, 2021 and thereafter, the Complainant also sent complaints to request the suspension of the disputed domain name to the Registrar, and the Registrar forwarded them to the Respondent, but no response has been received from the Respondent. The website at the disputed domain name was disabled as of at least October 15, 2021 and currently remains disabled.

As the Complainant asserts, the Complainant has never authorized, otherwise condoned, or consented to the Respondent’s registration of the disputed domain name. There is also no evidence to show that the Respondent is commonly known by the disputed domain name.

Therefore, the Panel finds that the Complainant has establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and then the burden of production is shifted to the Respondent.

Since no response was submitted by the Respondent in the proceeding and no evidence of any rights or legitimate interests is presented before the Panel, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finds that for over 40 years, the Complainant has spent a considerable amount of time, effort and money researching and developing the products and services that are marketed, distributed and sold under the TOEIC Mark, as well as extensively promoting its products and services under the TOEIC Mark throughout the world. As a result of these efforts, the TOEIC Mark has immense goodwill and a valuable reputation across the globe. Therefore, when Internet users access domain names incorporating the TOEIC Mark, they likely believe the associated website will direct them to one of the Complainant’s websites and the goods and services that the Complainant provides in connection therewith.

Due to the fame and distinctiveness of the Complainant’s TOEIC Mark, it would not be possible to consider that the Respondent could have been unaware of the Complainant’s TOEIC Mark at the time of the registration of the disputed domain name. Moreover, the Respondent must be aware of the Complainant’s request of suspension of the disputed domain name to the Registrar, which was forwarded by the Registrar to the Respondent.

This knowledge characterizes the Respondent’s bad faith in registering the disputed domain name.

The fact that the Respondent used the disputed domain name in connection with the provision of a website offering explicit obscene content and pornographic material has also supported the findings that the disputed domain name was used in bad faith (see FENDI S.r.l. v. Wubo, Wubo, WIPO Case No. D2021-2019). The fact the disputed domain name is currently inactive does not also prevent a finding of bad faith use. See section 3.3 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the requirement of registration and use in bad faith is satisfied.

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 disputed domain name <toeic911.com> be transferred to the Complainant.

Yuji Yamaguchi
Sole Panelist
Date: January 26, 2022

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