WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Registration Private, Domains By Proxy, LLC / Hikmet Sahiner, Avrimpex

Case No. D2018-2434

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 Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Hikmet Sahiner, Avrimpex of Ankara, Turkey, self-represented.

2. The Domain Name and Registrar

The disputed domain name <onlinetoefl.org> 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 October 25, 2018. On October 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 2018, 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 October 29, 2018 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 on November 2, 2018.

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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2018. The Respondent did not submit any response. The Respondent sent several informal email communications but did not submit any formal Response. Accordingly, the Center notified the Parties on November 27, 2018 that it would proceed to the panel appointment.

The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on December 10, 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 United States company specialized in educational testing services namely, administering tests dealing with languages. The Complainant language testing services are known with the TOEFL trademark throughout the world.

The Complainant owns multiple trademark registrations TOEFL including the followings among others:

- TOEFL word mark No. 1103427 registered on October 3, 1978 before the United States Patent and Trademark Office covering the classes 16 and 41.

- TOEFL word mark No. 2006 28369 registered on May 11, 2009 for the classes 9, 16, 41 and 42 in Turkey where the Respondent is domiciled.

The Complainant’s TOEFL trademark has been recognized as a well-known trademark according to the Turkish Patent and Trademark Office on June 24, 2011.

The Complainant’s TOEFL trademark has been recognized as a well-known trademark in previous UDRP decisions.

The Complainant owns several domain names such as <toefl.org> and <online-toefl.org> among other several domain names.

The disputed domain name was registered on July 6, 2012 in the name of the Respondent domiciled in the city of Ankara, Turkey. The Panel visited the disputed domain name on January 11, 2019, and observed that the disputed domain name redirects to the website “www.etese.org” in Turkish, which offers language courses and other services related to the language tests organized by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark TOEFL and that the addition of the descriptive word “online” reinforces the association between the disputed domain name and the Complainant’s trademark.

The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark TOEFL. The Complainant further asserts that in the view of bad faith use of the disputed domain name, the services offered by Respondent cannot be considered for a bona fide offering of goods and services by an authorized or non-authorized third party.

Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s trademark considering that the Respondent is using the Complainant’s trademark with its logo and that the Respondent’s website clearly suggests that the website belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant.

The fact that the website does not provide any information on the true identity of the website provider clearly shows that the Respondent intentionally creates the impression that the services offered on the Respondent’s website are provided by the Complainant or at least an official dealer by misleading users on the source of the website and thereby attract, for commercial gain, Internet users to the website.

B. Respondent

Though the Respondent did not formally reply to the Complainant’s contentions, he sent several email communications between October 29, 2018, November 5, 6 and 7, 2018 stating that:

- the disputed domain name is not identical or confusingly similar to the trade mark TOEFL;

- it is clear from the underlying website content that the Respondent is targeting online prep course website for Turkish speakers;

- there are several websites including the term “toefl” and that the fact that the Complainant is targeting the Respondent is discriminatory;

- he has legitimate rights and interest on the disputed domain name as the term “toefl” is generic;

- the disputed domain name is used for offering online prep course towards TOEFL exam;

- it has not registered or used the disputed domain name in bad faith;

- the Complainant has been acting in bad faith and discriminatory manner.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:

(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) the disputed domain name has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

It should be carefully noted that the overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. The Panel is simply invited to review whether the three conditions mentioned above exist in a case. Accordingly, the allegations put forward by Respondent in its informal email outside the scope of the UDRP such as illegal discriminatory practices are not taken into consideration while reviewing the case.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

As indicated above, the Complainant holds several trademark registrations for the TOEFL trademark.

The disputed domain name <onlinetoefl.org> integrates the Complainant’s TOEFL trademark in its entirety.

The disputed domain name differs from the registered TOEFL trademark by the additional descriptive term “online”. The term “online” does surely not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

As regards the generic Top-Level Domain (“gTLD”) “.org”, it is typically disregarded under the confusing similarity test under the Policy.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.

The Panel accepts the Complainant’s submissions that the Respondent does not appear to be known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain name, and has no consent from the Complainants to use its trademark.

The Complainant also submitted evidence that its trademark is recognized as a well-known trademark by the Turkish Patent and Trademark Office. The Panel finds that these submissions are sufficient to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

In accordance with the established jurisprudence of the Policy, the burden of production on the Respondent’s rights or legitimate interests thus shifts to the Respondent to come forward with relevant evidence.

The Respondent, in its informal responses, simply states that it is offering online course for preparation to TOEFL test and that TOEFL is a generic word and thus cannot be monopolized by the Complainant.

The Panel finds that the Respondent is using the Complainant’s registered trademark to attract Internet users to its own website without disclosing the (lacking) relationship between the Complainant and the Respondent.

The Respondent did not give any explanation for rebutting the Complainant’s claims as to the second element. Therefore, the Panel is not satisfied with the explanation of the Respondent as to how it has rights or legitimate interests in the disputed domain name. In the Panel’s view, the Respondent’s explanations and arguments do not give rise to any right or legitimate interest for the disputed domain name <onlinetoefl.org>.

Accordingly, there is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “onlinetoefl”.

For these reasons, the Panel concludes that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services.

In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

At the time of registration of the disputed domain name which occurred in 2012 according to the claim of the Complainant, the Complainant’s trademark TOEFL was a well-known trademark in the world and in Turkey where the Respondent is domiciled. As the Complainant submits with evidences, it is clear and obvious that the Respondent knew the Complainant and Complainant’s trademark. The cease-and-desist letter sent to the Respondent in 2012 makes clear that the Complainant had not initially agreed with the use of its trademark TOEFL to compose the disputed domain name. The Respondent did not oppose such arguments. In the view of the above, the Panel is convinced that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name.

Moreover, the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).

In this respect, several UDRP panels have ruled that the mere addition of a term does not sufficiently differentiate a disputed domain name from a complainant’s registered trademark. It is therefore the Panel’s view that using the word “online” together with the registered TOEFL trademark strengthens the impression that the disputed domain name is in some way connected to the Complainant’s trademark (see, e.g., Société des Produits Nestlé S.A. v. MrToys.com LLC, WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-Domain.com, WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; and Swarovski Aktiengesellschaft v. www.swarovski-outlet.org, WIPO Case No. D2013-0335).

On the other hand, the Panel observed that the Respondent used a privacy shield. While the Respondent’s use of a privacy service will not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences. The use of the privacy shield in this case together with other elements gives rise to the suspicion that the privacy shield was used to mask the identity of the true registrant, to give impression that the Complainant is offering this website in the absence of any information regarding the ownership of the website and to obstruct proceedings commenced under the Policy.

In the view of the all above, the Panel is persuaded that the Respondent’s registration and use of the disputed domain name for redirecting Internet users to other online locations, constitutes bad faith registration and use of the disputed domain name. The only reason for the registration of the disputed domain name must have been with bad faith intent. More precisely and as mentioned above, the Respondent used the disputed domain name to exploit, for commercial gain, the Complainants’ reputation. See, Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004.

Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).

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 <onlinetoefl.org> be transferred to the Complainant.

Emre Kerim Yardimci
Sole Panelist
Date: January 14, 2019