WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. yuqing dong

Case No. D2010-2132

1. The Parties

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

The Respondent is yuqing dong of Shanghai, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <toeflblog.net> (the Disputed Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2010. On December 10, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On December 10, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2011.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on January 14, 2011. 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 was founded in 1947 and is said to be the largest private not-for-profit educational research and measurement institution in the world.

One of the tests developed and administered by the Complainant is the TOEFL test, which is used to evaluate the English language skills of people whose mother tongue is not English. The TOEFL test has been administered continuously since 1964 with more than 25 million students taking the test in more than 7,500 institutions in 165 plus countries.

In connection with the TOEFL test, the Complainant has developed and sold numerous test preparation products and services, including practice questions and guidance materials. These are sold through the Complainant’s website at “www.toefl.org”, among other distribution channels.

The Complainant has registered more than 250 trade marks worldwide for, or incorporating, TOEFL, including multiple registrations in the United States of America (the location the Complainant) and in the People’s Republic of China (the location of the Respondent) for, among other things, language proficiency tests and related materials.

The Complainant’s registrations for the TOEFL trade marks pre-date the Respondent’s registration of the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant contends that the Disputed Domain Name is identical or confusingly similar to the Complainant’s TOEFL trade mark as it incorporates the TOEFL trade mark in its entirety. The inclusion of the word “blog” into the Disputed Domain Name is alleged to be generic or descriptive, and the addition of such an indistinctive element is not sufficient to avoid confusion.

The Complainant also submits that, because of the fame of the TOEFL trade mark, the inclusion of it in the Disputed Domain Name is likely to confuse customers into thinking that the Disputed Domain Name is affiliated with, or endorsed by, the Complainant, or that the Respondent’s use of the Disputed Domain Name has been authorized by the Complainant.

No right or legitimate interest

The Complainant asserts that the Respondent has no right or legitimate interest in the Disputed Domain Name on the grounds that:

i) the Complainant has exclusive rights to its TOEFL trade marks and has not authorized the Respondent to use any of these;

ii) the Respondent has not made use of, or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services and could not in light of the Complainant’s famous and exclusive rights to TOEFL;

iii) the Respondent is not commonly known as TOEFL and could not be in light of the Complainant’s rights to TOEFL trade marks; and

iv) the Respondent is not making legitimate, noncommercial or fair use of the Disputed Domain Name. Rather, the Respondent is, for commercial gain, using the Disputed Domain Name to attract consumers to its own tests and related services and products and unauthorized versions of the Complainant’s products.

The Complainant contends that, because the Respondent is much better placed to bring forward evidence of its rights or legitimate interest in the Disputed Domain Name, the Complainant only has to prove the negative (i.e., that the Respondent has no rights or legitimate interests) to a relatively low standard before the burden of proving the positive shifts to the Respondent.

Registered and used in bad faith

The Complainant contends that the Respondent had prior notice of the TOEFL marks when it registered the Disputed Domain Name and that the Respondent has registered the Disputed Domain Name in a deliberate attempt to ride on the Complainant’s goodwill in the TOEFL marks. The Complainant also suggests that because it is unlikely that the Respondent would have registered the Disputed Domain Name absent of prior knowledge of the TOEFL trade marks, bad faith is to be inferred.

Also, the Complainant submits that the Respondent is making use of the Disputed Domain Name in bad faith, by using the allure of the TOEFL marks to attract customers in circumstances where the Respondent is offering goods and services originating from the Complainant as well as those originating from competitors. Further, the Respondent’s offering for sale of the Complainant’s goods and services is said to be done without authorization from the Complainant and, accordingly, amounts to a breach of the Complainant’s copyright in such materials.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of several, well-known trade marks for TOEFL for language testing and related materials, among other things. These marks are entirely incorporated into the Disputed Domain Name; the only variation is the addition of the word “blog” at the end.

The word “blog”, a term in common parlance in the Internet language, when used in a domain name, is unlikely to be considered distinctive by Internet users. In the Disputed Domain Name, the addition of the word “blog” after the TOEFL trade mark merely suggests that the website has a blogging function, i.e., it is descriptive.

Additionally, the Panel finds that the Disputed Domain Name is likely to mislead Internet users into thinking that the website operated by the Respondent has been authorized by the Complainant or is affiliated with the Complainant.

Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Panel accepts that the Complainant has not authorized the Respondent to use the TOEFL trade marks or to sell its products.

The Respondent, using the Disputed Domain Name, is operating a business selling language testing products. The Complainant contends that some of these are its products but others are not. In support, the Complainant has provided screenshots and other print outs of pages found on the Disputed Domain Name.

The text of these print outs is largely in a foreign script, most likely Chinese (Mandarin) given the locality of the Respondent. No translation has been provided by the Complainant. The parts of this evidence which are in English (and therefore intelligible to the Panel) suggest that the Respondent is purporting to sell TOEFL goods or services originating from the Complainant. It is unclear whether the Respondent is also offering goods and services originating from competitors of the Complainant, as alleged.

Nevertheless, as has been held by previous panels (see, for example, Aventis Pharma S.A. and Merrell Pharmaceutical Inc. v Rx USAWIPO Case No. D2002-0290), resellers of trade marked goods do not have the right to register a domain name incorporating the mark without the mark holder’s consent. The use of the TOEFL trade mark in the Disputed Domain Name goes further than saying “you can buy TOEFL products here”: it suggests that the Respondent is an authorized distributor of the Complainant’s products, which is not the case.

In light of the difficulty that the Complainant faces in proving a negative, where the means to prove positive rights or legitimate interests in the Disputed Domain Name are within the Respondent’s possession, the Panel is convinced, in the absence of any evidence from the Respondent to the contrary, that the Respondent has no rights or legitimate interest in the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Disputed Domain Name was registered long after the Complainant first started using its TOEFL trade marks and given that the Respondent appears to be offering products of the Complainant under the TOEFL trade mark, it seems highly probable that the Respondent was aware of the Complainant’s TOEFL marks at the time of registration and registered the Disputed Domain Name in a deliberate attempt to divert, for its own financial gain, Internet traffic from the Complainant’s website to its own website.

The Panel is of the view that the Respondent is using the Disputed Domain Name in bad faith in that it is using the allure of the Complainant’s trade marks to attract traffic to its site and then seeking to profit from these visitors by selling them the unauthorized copies of the Complainant’s products and also, perhaps, products which compete with the Complainant’s.

7. Decision

For all 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, <toeflblog.net> be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Dated: January 21, 2011