WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Hackers Language Institute / David Cho, Ph.D.

Case No. D2006-1089

1. The Parties

The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America, represented by Dorsey & Whitney, LLP, of the United States of America.

The Respondent is Hackers Language Institute / David Cho, Ph.D., of Seoul, Republic of Korea, represented by Dongsuh International Law Offices, of the Republic of Korea.

2. The Domain Names and Registrar

The disputed domain names <hackerstoefl.com> and <hackerstoeic.com> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2006. On August 28, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On August 31, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On September 4, 2006 the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced September 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response September 24, 2006. The Response was filed with the Center September 22, 2006.

On September 27, 2006, the Complainant filed with the Center a Supplemental filing.

On October 16, 2006, the Respondent filed with the Center a Response to the Supplemental filing.

The Center appointed Yong Li, Sang Jo Jong and Wolter Wefers Bettink as panelists in this matter on October 20, 2006. The Panel finds that it was properly constituted. Each member of 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. Due to unforseen circumstances the Panel subsequently extended the due date for the decision.

Supplemental filings

The Panel accepts the supplemental filings as they provide additional information relevant to the decision in this case.

4. Factual Background

The Complainant is the holder of the following word marks, registered with the United States Patent and Trademark Office:

- TOEIC, registered March 9, 1982 under registration number 1,191,669;

- TOOLS FOR TOEIC, registered April 16, 2002, under registration number 2,561,226.

- TOEFL, registered October 3, 1978, under registration number 1,103,426;

- TOEFL, registered October 3, 1978, under registration number 1,103,427;

- TOEFL, registered June 19, 2001, under registration number 2,461, 224;

and of the following word marks registered with the Korean Intellectual Property Office:

- TOEIC, registered September 21, 1982 under registration number 40-83993;

- TOEIC, registered January 14, 1983, under registration number 42-3521;

- TOEIC, registered January 14, 1983, under registration number 40-608509;

- TOEFL, registered February 25, 1983, under registration number 41-3625;

- TOEFL, registered May 23, 1994, under registration number 40-101036.

The Complainant also owns the domain name registrations <toeic.com>, <toeic.org>, <toeic.net>, <toeic.us>, <toefl.com>, <toefl.org>, <toefl.net> and <toefl.us>.

The Respondent has registered the domain names <hackerstoefl.com> on July 22, 1999 and <hackerstoeic.com> on October 5, 2003. The Respondent is the owner of the wordmark HACKER’S, registered on October 17, 2000 under registration number 41-0064048 with the Korea Intellectual Property Office. The Respondent has designed the ‘Hackers Program for the TOEFL Test’ and the ‘Hackers Program for the TOEIC Test’ in order to recommend the proper studying methods for the TEOFL and TOEIC tests. In addition, the Respondent has published a series of books on the subject of the TOEFL and TOEIC tests.

In January 2003, the Respondent established the Hackers Academia, at which the Respondent is giving lectures inter alia about the TOEIC test.

5. Parties’ Contentions

A. Complainant

Rights in trademarks

The Complainant contends that its trademarks TOEFL and TOEIC are well-known throughout the world. The Complainant is the largest private not-for-profit educational research and measurement institution in the world. Since its formation in 1947, the Complainant is the leader in developing and administering tests for measuring skills, academic aptitude and achievement. The Complainant has developed, amongst others, the TOEIC test (Test of English for International Communication) and the TOEFL test (Test of English for Foreign Languages).

The TOEIC test is the world’s leading test of English language proficiency in a workplace and is administered to over 4.5 million people a year in over 60 countries. The TOEFL test is a well-known test for evaluating the English proficiency of people whose native language is not English. Between June 2004 and June 2005, the TOEFL test was administered to 650,000 people.

Identical or Confusingly Similar

The Complainant contends that the disputed domain names are identical or confusingly similar to the TOEIC and TOEFL trademarks, as they incorporate the Complainant’s distinctive TOEIC and TOEFL trademarks in their entity. The primary elements of the disputed domain names (TOEIC and TOEFL) are identical to the Complainant’s marks. A domain name that wholly incorporates a Complainant’s registered mark is sufficient for establishing confusing similarity for purposes of the UDRP. The likelihood of confusion is increased because of the term “hackers”, which falsely suggests that the goods and serviced offered by the Respondent are authentic TOEIC or TOEFL goods and services.

Rights or Legitimate Interests

The Complainant contends that the Respondent cannot demonstrate any right or a legitimate interest in the disputed domain names. The Respondent does not use the disputed domain names for a bona fide offering of goods or services. The Respondent cannot show that a corresponding group of consumers associates “TOEIC” and “TOEFL” with the Respondent rather than with the Complainant.

The Respondent is not making noncommercial or fair use of the disputed domain names without the intent to divert consumers misleadingly for commercial gain or to tarnish the trademarks at issue. The Respondent operates a commercial website under the disputed domain names, through which it provides links to its own websites where it sells and offers for sale TOEIC and TOEFL test preparation products and services. This does not constitute fair use but infringes upon the Complainant’s trademarks rights.

Registration and Use in Bad Faith

The Complainant further contends that the Respondent has registered the disputed domain names in bad faith. There is no bona fide basis for the registration, which is an attempt to capitalize unfairly on the goodwill of the Complainant’s trademarks. The Respondent must have had prior knowledge of the Complainant’s trademarks, since it provides through its website preparation products for the TOEIC test and the TOEFL test. Therefore, the registration has been made in bad faith.

The Respondent uses the disputed domain names in bad faith by linking them to its websites, “www.champstudy.com”, “www.hacademia.com” and “www.gohackers.com”, through which the Respondent sells and offers for sale TOEIC and TOEFL test preparation products and services. Thus, the Respondent uses the domain names to sell and offer for sale goods and services that compete with those offered by the trademark owner. This suggests a false designation of origin or sponsorship for any goods or services that the Respondent may offer under the disputed domain names, which constitutes bad faith.

B. Respondent

Identical or confusingly similar

The Respondent contends that the disputed domain names are not identical, nor confusingly similar to the Complainant’s TOEIC and TOEFL trademarks. The disputed domain names incorporate the Respondent’s HACKER’S trademark together with the Complainant’s TOEIC and TOEFL trademarks. HACKER’S is a well-known trademark in the Republic of Korea and it is not a generic term.

Rights or Legitimate Interests

The Respondent contends that it uses the disputed domain names in connection with a bona fide offering of goods or services. The websites under the disputed domain names provide general information on the TOEFL and TOEIC tests and on methods of studying, as well as a forum for users to exchange information.

The use of the website does not require paying a fee or registering as a member. The fact that a small portion of the links connect to the Respondent’s commercial websites does not undermine the noncommercial nature of the “www.hackerstoeic.com” and “www.hackerstoefl.com” websites themselves. According to the Respondent, the purpose of these links is not commercial advertising, but rather providing users with information that will assist them in their studies.

The Respondent is commonly known by the disputed domain names, as evidenced by the number of visitors to its websites and the amount of queries for “hackers toeic” and “hackers toefl” in a well-known search engine in the Republic of Korea. Around 64 % of all TOEFL applicants in the Republic of Korea have utilized the “Hackers TOEFL”-program. The Respondent has been operating the websites under the disputed domain names for a bona fide offering of goods and services before receiving notification regarding the dispute.

The Respondent cannot offer preparation material for the TOEFL or TOEIC test without naming the Complainant’s marks. Almost all the preparation books for the TOEFL and TOEIC tests in the Republic of Korea use the terms “TOEFL” and “TOEIC” in order to indicate that they are preparation books for the TOEFL and TOEIC tests.

The “www.hackerstoeic.com” website clearly indicates that TOEIC is the Complainant’s trademark and that it has no connection with the website nor with the Respondent.

Registration and use in bad faith

The Respondent contends that it has not registered or used the disputed domain names in bad faith, because the Respondent primarily provides information for the TOEFL and TOEIC tests. The websites are noncommercial.

It is only possible to communicate to the public that one offers preparation material and studying methods for the TOEFL and TOEIC tests by naming the TOEFL and TOEIC marks.

The Respondent further contends that the HACKER’S mark is well-known in the Republic of Korea, so the disputed domain names do not create a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the websites. The content of the websites decreases the likelihood of confusion between the Complainant’s marks and the Respondent’s websites as to the source, sponsorship, affiliation or endorsement of the websites.

Supplemental filing

A. Complainant’s Contentions

Identical or confusingly similar

According to established UDRP case law, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark (Educational Testing Service v. Jeong-Cheol Seo, WIPO Case No D2006-0056 and Britannia Building Society v. Brittania Fraud PreventionWIPO Case No. 2001-0505). In Educational Testing Service v. Song Soo Dong, WIPO Case No. D2006-0827, the domain name <credutoeic.com> (credu being the Respondent’s business name) was held to be confusingly similar to the Complainant’s mark.

Rights or Legitimate Interests

The Complainant contends that the Respondent uses the disputed domain names to provide links to commercial websites. Clicking on the links generates a pop-up, superimposed on the website, through which the Respondent offers and advertises TOEIC and TOEFL test preparation products. The fact that only a small portion of the links redirect to the Respondent’s commercial websites does not diminish the commercial use of the disputed domain names.

Although the Complainant allows publishers and educators to make a reference to the Complainant’s TOEIC and TOEFL trademarks in order to describe their businesses, it has never allowed the Respondent to incorporate its registered trademarks in a domain name. The Complainant features on its website Guidelines for Informational Uses of the ETS Trademarks, which, inter alia, require that the Complainant’s trademarks are not included in any domain name. This provision has been violated by the Respondent.

Registration and use in bad faith

The Complainant further contends that the Respondent does not need to include Complainant’s trademarks in its domain names. It would suffice to use its own trademark HACKER’S. By incorporating the Complainant’s marks, users may erroneously believe that the Respondent’s websites are affiliated with the Complainant.

The Complainant submits that the term “hackers” is pejorative, which further proves the Respondent’s bad faith.

B. Respondent’s Contentions

Identical or confusingly similar

The Respondent contends that the case involving the <credutoeic.com> domain name cannot be considered representative as the Respondent in the cited case was in default. Furthermore, CREDU is not a well-known trademark in the Republic of Korea while HACKER’S is.

Respondent’s Rights or Legitimate Interest

Over 99 % of the total megabyte content of the Respondent’s website contains essential information for people preparing for the TOEIC or TOEFL test. Only a few links to the Respondent commercial websites are presented, clearly distinguishable from other noncommercial information.

The Respondent contends that that it is not bound by the Complainant’s Guidelines on trademark use, as they are not the prevailing law, nor have they been agreed between the parties. The Respondent has not breached the Guidelines as it has only used the Complainant’s trademarks to indicate the Complainant.

The Respondent further contends that it is necessary to incorporate the Complainant’s trademarks in the disputed domain names as there are no precise terms, other than “hackerstoeic” and “hackerstoefl”, to signify “hackers preparation materials and hackers information for the TOEIC and TOEFL test”.

Registration and use in bad faith

The Respondent further submits that the term “hacker” is not necessarily pejorative, as it is (also) used to signify a “highly skilled programmer”.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it has trademark rights in the TOEIC and TOEFL marks in several countries, including the Republic of Korea.

The Panel finds that the disputed domain names <hackerstoeic.com> and <hackerstoefl.com> are confusingly similar to the trademarks TOEIC and TOEFL respectively, since the domain names contain those trademarks.

In addition, for the general public the term “hacker” is a generic term from the English language. Previous WIPO panels have found that a domain name consisting of a trademark and a generic term to be confusingly similar to that trademark, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; ADT Services AG v. ADT Sucks.com, WIPO Case No. D2001-0213. The Panel finds that this is the case here, because each of the disputed domain names contains a trademark of the Complainant and the generic term “hackers”.

The Panel is therefore of the opinion that the Complainant has provided sufficient evidence that the trademarks and the disputed domain names are confusingly similar.

B. Rights or Legitimate Interests

The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. If the Complainant has made such a case, the Respondent then carries the burden of demonstrating that it does have rights or legitimate interests in the disputed domain names. Usually, this prima facie case is established if the Complainant shows that it has not granted any rights to the Respondent, that the Respondent has no links with the Complainant and that the disputed domain name is not the name of the Respondent.

The Complainant states that it allows the use of the trademarks TOEIC and TOEFL under certain conditions as set out in Guidelines published by the Complainant on its website “ www.ets.org” and submitted as part of the Complainant’s supplemental filing. The evidence before the Panel is that the Complainant has not indicated prior to the filing of the Complaint that it objects to the use of its trademarks by the Respondent as part of the Hackers Program for the TOEFL test, the Hackers Program for the TOEIC test and the books published by the Respondent.

The Complainant has set out that the Guidelines under point 7 provide “Do not make any ETS trademark (part of) an Internet domain name.” Leaving aside whether these unilateral Guidelines are binding on the Respondent, the Panel notes that in the explanation to point 7, it is provided that “exploitation of ETS trademarks in third party domain names may be unlawful if used in ‘bad faith’.”

The Panel notes that the Complainant has not objected to the use of the trademarks TOEIC and TOEFL by Respondent for its HACKER’S series of guide books and preparatory material for the TOEFL and TOEIC tests which have been used for this purpose since 1998 and 2003 respectively.

The Panel further notes the extensive evidence provided by the Respondent, which has not been refuted by counter-evidence of the Complainant, that the Respondent has used the domain names for over seven and three years respectively, and that these domain names do appear to be well-known as evidenced by the following:

- the number of daily visitors to the domain name <hackerstoeic.com> is indicated in the Complaint to be some 70,000 and the number of daily visitors to <hackerstoefl.com> to be 30,000 (Exhibit 26);

- the websites “www.hackerstoeic.com” and “hackerstoefl.com” are stated to be the first and third in the field of online English education and account for 30.24% and 9.44% of the customers in the Republic of Korea’s online English education field, according to the Korean website “www.rankey.com” (Exhibit 23);

- the websites “www.hackerstoeic.com” and “hackerstoefl.com” rank first and second in the Republic of Korea’s online English education field and its overall market share reaches 69%, according to the Korean website <100HOT.co.kr> (Exhibit 23).

Furthermore, the Respondent has provided evidence that the terms “hackers toefl” and “hackers toeic” are frequently used to search for the Respondent’s websites, including evidence indicating that:

- the search phrases “hackers toefl” and “hackers toeic” are the most frequently searched phrases, according to four popular online search engines (their names in Korean) (Exhibit 24);

- the monthly number of search queries for “hackers toeic” is over 150,000 and the monthly number of search queries for “hackers toefl” is 35,083, according to the search engine at<naver.com> (Exhibit 24, 25);

- the monthly number of total search queries for “hackers toeic” is 277,022 and the monthly number of total search queries for “hackers toefl” is 54,912, according to <overture.com> (Exhibit 25);

- the number of registrants to revise study materials via email is 226,866 (Exhibit 27).

From the facts it is not clear whether the Respondent was commonly known under the names “hackers toefl” and “hackers toeic” prior to registering the domain names. This is all the more so, because the domain names contain more than the Respondent’s trademark HACKER’S.

The Panel also notes that the facts and evidence put forward by the parties make it difficult to determine whether the domain names have been used in a bona fide manner as required by the UDRP. In order to reach a conclusive finding in this respect more information about the activities of the Respondent and their relation to the TOEFL and TOEIC products would be required.

Finally, the Panel notes that the use of the domain names appears to be (at least partially) commercial.

Having reviewed all the facts and evidence, the Panel finds that it is unable to decide that the Respondent lacks an own right or legitimate interest in the disputed domain names. In reaching this conclusion the Panel has also taken into account that each domain name is a combination of the Respondent’s trademark and one of the Complainant’s trademarks, that the use of these domain names has apparently been tolerated by the Complainant since 1999 and 2003 respectively, while the Complainant apparently still tolerates the use of its trademarks in combination with the Respondent’s trademark as part of the title of the books and programs which the Respondent has published since 1998.

The Panel does not rule out the possibility that a different conclusion may be drawn if the case would be brought before another forum on a different legal basis, but finds that within the framework of the UDRP it must conclude that the Complainant has not provided sufficient evidence that the Respondent lacks an own right or legitimate interest.

On this basis, the Panel dismisses the Complaint.

C. Registered and Used in Bad Faith

In view of the conclusion in relation to the Respondent’s own right or legitimate interest, the Panel does not need to discuss whether the disputed domain names have been registered and are being used in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: November 27, 2006