WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Sool Suum

Case No. D2018-0065

1. The Parties

The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America (“United States”), represented by Jones Day, United States.

The Respondent is Sool Suum of Taipei, Taiwan Province of China.

2. The Domain Name and Registrar

The disputed domain name <toeflcenter.info> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2018. On January 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.

The Center verified that 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 January 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2018.

The Center appointed Matthew Kennedy as the sole panelist in this matter on February 19, 2018. 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 tests, including the TOEFL test, which evaluates the English proficiency of persons whose native language is not English. Scores on the TOEFL test are used to evaluate applicants for college and university admission and for employment. Since 1964, more than 30 million students have taken the TOEFL test and over 9,000 institutions in more than 130 countries use the scores. The TOEFL test is available for test-takers at over 4,500 testing centers worldwide, three of which are located in Taiwan Province of China and one in Kinmen, China. The Complainant has developed test preparation products and services that provide information on the TOEFL test and practice test questions. These products and services are sold on the Complainant’s official TOEFL website at “www.ets.org/toefl” and on the websites of the Complainant’s authorized business partners for the TOEFL test. The Complainant holds numerous trademark registrations for TOEFL including United States trademark registration number 1,103,427, registered on October 3, 1978, specifying goods and services in international classes 16 and 41; Chinese trademark registration number 00174640, registered from March 16, 1982; and Chinese service mark registration number 00007141, registered from May 16, 1982. These trademark registrations remain current. The Complainant has also registered many domain names that include the element “toefl”, which redirect to its official website.

The Respondent is an individual located in Taipei whose contact address details in the Registrar’s WhoIs database are incomplete. The disputed domain name was registered on June 3, 2010. According to information provided by the Complainant, the Respondent’s email address has been associated with the disputed domain name since at least July 30, 2010. The disputed domain name has been used in connection with a website in Chinese titled “相聚一刻♥爱情一带!” (translation: “Get together ♥ Love Zone”). This website allowed Internet users to create an account, browse content and participate in a discussion forum. The forum prominently displayed two posts in a thread concerning live chats. The posts linked to websites offering video chats accompanied by images of young women, allowing payment by credit card. These posts, one of which was a site announcement, were uploaded in May 2012. The Complainant filed a criminal complaint with local authorities regarding the matter on December 11, 2017. The disputed domain name no longer resolves to any active website.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical and confusingly similar to the Complainant’s TOEFL trademark. The disputed domain name wholly incorporates that mark. The addition of the generic term “center” does not decrease the confusing similarity of the disputed domain name with the trademark. The addition of a generic word that describes the Complainant’s goods and services actually increases the confusing similarity.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of, or otherwise affiliated with, the Complainant. The Complainant has never authorized, condoned or consented to the Respondent’s registration of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent has not made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services and has not used the disputed domain name for any legitimate noncommercial or fair use purpose. The Respondent has used the disputed domain name to promote child pornography which is an illegal activity that tarnishes the Complainant’s mark and cannot be considered a bona fide use.

The disputed domain name was registered and is being used in bad faith. The Respondent clearly knew of the Complainant’s mark at the time that it registered the disputed domain name because that mark is so well-known worldwide. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s TOEFL trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and by promoting child pornography, which is illegal.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(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

Based on the evidence submitted, the Panel finds that the Complainant has rights in the registered trademark TOEFL.

The disputed domain name incorporates the Complainant’s trademark TOEFL in its entirety. It also contains the additional element “center”, which is a dictionary word. As a mere dictionary word, this element does not diminish the confusing similarity between the disputed domain name and the Complainant’s trademark.

The disputed domain name also includes the Top-Level Domain (“TLD”) suffix “.info”. A TLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

With respect to the first circumstance, the Complainant submits that the Respondent is not a licensee of, or otherwise affiliated with, the Complainant and that the Complainant has never authorized, condoned or consented to the Respondent’s registration of the disputed domain name. The combination of “toefl” and “center” gives the impression that the disputed domain name is used in connection with a center that administers the Complainant’s TOEFL test or is otherwise connected to the Complainant, when in reality it resolved to a website that provided content and discussion topics with no apparent connection to the Complainant or its goods or services. The disputed domain name was likely to mislead Internet users seeking information about the Complainant’s TOEFL test or testing centers and divert them to the Respondent’s website. At the present time the disputed domain name does not resolve to any active website. In view of these circumstances, the Respondent’s use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services for the purposes of the Policy.

With respect to the second circumstance, the Registrar’s WhoIs database indicates that the Respondent’s name is “Sool Suum”, not “toeflcenter”. Nothing on the website to which the disputed domain name resolved refers to “toeflcenter”. There is no evidence that the Respondent has been commonly known by the disputed domain name.

With respect to the third circumstance, the Respondent was using the disputed domain name in connection with a website that contained links to other websites offering live video chat for money. There is no evidence on the record that the use of the disputed domain name is a legitimate noncommercial or fair use.

In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because it did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, but these circumstances are not exhaustive.

As regards registration, the disputed domain name was registered many years after the Complainant obtained its trademark registrations. The Complainant’s trademark is well-known due to its long-standing and widespread use in connection with English-language proficiency testing materials and services. The letters “toefl” do not spell a word. The disputed domain name incorporates the Complainant’s TOEFL trademark in its entirety and combines it with the word “center” that indicates an awareness of the testing centers operated by, or affiliated with, the Complainant’s TOEFL test. In these circumstances, the Panel has reason to find that the Respondent knew of the Complainant and its trademark at the time that it registered the disputed domain name and registered the disputed domain name in bad faith.

As regards use, the disputed domain name no longer resolves to any active website, that is, it is only passively held. However, passive use does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The evidence indicates that, until shortly prior to the commencement of this proceeding, the Respondent was using the disputed domain name intentionally to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of services on its website. This use was either for its own commercial gain, or for the commercial gain of the operators of the live video chat websites to which it was linked, or both. In these circumstances, the Panel finds that the Respondent is using the disputed domain name in bad faith. The recent change in use of the disputed domain name, which may or may not have been due to the intervention of relevant authorities, does not alter this conclusion.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 <toeflcenter.info> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: February 22, 2018