WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. Yevhenii Shynkar
Case No. D2021-4316
1. The Parties
The Complainant is Educational Testing Service, United States of America (“United States”), represented by Jones Day, United States.
The Respondent is Yevhenii Shynkar, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <toefl-certification.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2021. On December 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 25, 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 January 6, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent a document in relation to the language of the proceeding to the Parties in English and Russian, inviting the Parties to state their positions on this issue. The Complainant filed an amendment to the Complaint on January 6, 2022. The Respondent did not submit any comments on the language of the proceeding within the time limit fixed by the Center to do so.
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 in both English and Russian, and the proceedings commenced on January 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2022. The Respondent sent three informal communications to the Center on January 17, 2022, but did not submit a formal Response. On February 10, 2022, the Center notified the Parties of the commencement of the Panel appointment process.
The Center appointed Assen Alexiev as the sole panelist in this matter on February 16, 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 is a private non-profit educational testing and assessment organization. It develops, administers and scores more than 50 million tests per year, in more than 180 countries and 9,000 locations worldwide. The many tests developed and administered by the Complainant or its related companies include the TOEFL test, which evaluates the English proficiency of people whose native language is not English. Colleges and universities in the United States and the Russian Federation, among many other countries worldwide, rely on TOEFL test scores from their international applicants to assist in determining the admission of foreign students. Since 1964, more than 30 million students have taken the TOEFL test in more than 180 countries, and over 10,000 institutions worldwide use scores from the test. Globally, the TOEFL test is available at more than 4,500 testing centers in 165 countries.
The Complainant is the owner of the following trademark registrations for the sign “TOEFL” (the “TOEFL trademark”):
− the United States trademark TOEFL with registration No. 1103427, registered on October 3, 1978 for goods and services in International Classes 16 and 41;
− the United States trademark TOEFL with registration No. 2461224, registered on June 19, 2001 for goods in International Class 9;
− the United States trademark TOEFL with registration No. 3168050, registered on November 7, 2006 for goods and services in International Classes 16, 41 and 42;
− the Russian Federation trademark TOEFL with registration No. 119520, registered on August 25, 1994 for goods and services in International Classes 9, 16, 41 and 42; and
− the United Kingdom trademark TOEFL with registration No. UK00900013839, registered on January 5, 1999 for goods and services in International Classes 9, 16, 41 and 42.
The Complainant is also the owner of the domain names <toefl.org>, <toefl.com>, <toefl.net>, and <toefl-certification.com>, which offer for sale the Complainant’s products and services.
The disputed domain name was registered on October 29, 2021. It is currently inactive. At the time of filing of the Complaint, the disputed domain name resolved to a website that offered the Complainant’s TOEFL tests and included content from the Complainant’s official website.
5. Parties’ Contentions
The Complainant submits that the Respondent operated a website at the disputed domain name that mimicked the Complainant’s website and carried out through it a fraudulent phishing scheme against unsuspecting Internet users.
The Complainant states that on November 4, 2021, it sent a complaint to the host of the disputed domain name. No response was received to it, but the website at the disputed domain name was disabled. On November 24, 2021, the Complainant sent a cease-and-desist letter to the Respondent, but received no response.
The Complainant submits that the disputed domain name is confusingly similar to the TOEFL trademark, because it incorporates the trademark in its entirety, and consumers are likely to believe that the disputed domain name is affiliated with the Complainant. The Complainant states that the addition of the dictionary word “certification” to the disputed domain name increases the likelihood of confusion, as this term is related to the services provided by the Complainant - individuals who take the TOEFL test receive a certificate with the test taker’s score on it, and this will cause Internet users to think that the disputed domain name relates to obtaining certificates for taking the TOEFL test.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because there is no relationship between the Parties and no permission has been given to the Respondent to own or use any domain name incorporating the TOEFL trademark. The Complainant notes that the Respondent is not commonly known by the disputed domain name and has not used it in connection with a bona fide offering of goods or services. Rather, the Respondent has used the disputed domain name to impersonate the Complainant and operate a website to carry out fraudulent phishing activities, and Internet users are led to believe that the information associated with the disputed domain name is coming from personnel authorized to act on behalf of the Complainant for the TOEFL test.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the Respondent knew of the Complainant’s TOEFL trademark at the time it registered and started using the disputed domain name, which took place more than 50 years after the Complainant began using the TOEFL trademark. The Complainant points out that the Respondent has used the disputed domain name in connection with a website related to fraudulent phishing activities, in an effort to interfere with the Complainant’s offering of goods and services by intercepting, misdirecting and misleading members of the consuming public. The Complainant adds that it warned the Respondent that its conduct violates the Policy and infringes the TOEFL trademark, but the Respondent failed to respond.
The Respondent did not submit a formal Response to the Complainant’s contentions.
On January 17, 2022, the Respondent sent three email messages to the Center in Russian, by which it stated:
“Hello. Apparently my account has been hacked, I haven't used this mail for a long time. I have now recovered my email and changed my password. What proceeding has begun? What do I need to do to complete the proceeding?”
“I just registered an account in REG.RU and there are no domain names.”
“I just created an account in REG.RU. There are no domain names. What should I do? What is this complaint?”
6. Discussion and Findings
6.1. Procedural issue – Language of the Proceeding
According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant requests that these proceedings be conducted in English, as there would be no prejudice to the Respondent who is clearly well familiar with English given its registration of a website in Latin characters and operation of a website completely in English. According to the Complainant, proceeding in English will allow for more efficient and cost-effective proceedings, comporting with the spirit of fairness and justice intended by the Policy.
The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not submitted a Response or any objections to the Complainants’ request that the proceedings be held in English. As submitted by the Complainant, for a period of time there was an active website at the disputed domain name that was entirely in English.
The above satisfies the Panel that the Respondent would not be disadvantaged if the language of the proceeding is English, and that using the English language in this proceeding would be fair and efficient.
Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.
6.2. Substantive issues
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”
A. Identical or Confusingly Similar
The Complainant has provided evidence that he is the owner of various registrations of the TOEFL trademark and has thus established his rights in this trademark for the purposes of the present proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” generic TLD section of the disputed domain name.
The disputed domain name incorporates the distinctive TOEFL trademark in its entirety with the addition of the dictionary word “certification”, and the trademark is easily recognizable in the disputed domain name. As discussed in section 1.8 of the 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 under the first element.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the TOEFL trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Complainant has not authorized the Respondent to use the TOEFL trademark, and that the Respondent has used the disputed domain name for a website that mimicked the Complainant’s own website and impersonated the Complainant. According to the Complainant, this website has been used for fraudulent activities. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a formal Response and has not alleged that it has rights or legitimate interests in the disputed domain name. In its informal communications to the Center, the Respondent has not disputed the Complainant’s allegations in this proceeding. The address that the Respondent has provided to the Registrar is non-existent. The evidence in the case file shows that the disputed domain name has indeed resolved to a website that replicated the content of the Complainant’s official website with slightly changed formatting, and did not contain any disclaimer for the lack of relationship with the Complainant.
In view of the above, and in the lack of evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent, being well aware of the goodwill of the Complainant’s TOEFL trademark, has registered the disputed domain name in an attempt to exploit the trademark’s goodwill by impersonating the Complainant and attracting Internet users to the Respondent’s website for commercial gain. To the Panel, such conduct is not legitimate or giving rise to rights or legitimate interests of the Respondents in the disputed domain name.
In view of the above, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The disputed domain name is confusingly similar to the TOEFL trademark and has been used for a website that replicated the Complainant’s website and offered the Complainant’s services, without including any disclaimer. The Respondent’s statements that its email account had been stolen and it had then regained access to it, and that it has now registered a new account with the Registrar which does not include any domain names, are not supported by any evidence. Even if true, these statements cannot be interpreted as a denial by the Respondent that it is the registrant of the disputed domain name. If the Respondent wished to deny this, it could have easily stated so. There is also no denial that the disputed domain name has resolved to a website with the content described by the Complainant.
Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the TOEFL trademark in an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the TOEFL trademark as to the affiliation or endorsement of its website and the content on it.
Therefore, the Panel finds that the disputed domain name has been registered and used 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 <toefl-certification.com> be transferred to the Complainant.
Date: March 2, 2022