WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Mustapha Ishola, Musish Ventures

Case No. D2019-1522

1. The Parties

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

The Respondent is Mustapha Ishola, Musish Ventures, Kenya.

2. The Domain Name and Registrar

The disputed domain name <toeflkenya.com> is registered with FastDomain, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2019. On July 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2019.

The Center appointed Adam Taylor as the sole panelist in this matter on July 29, 2019. 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, which was formed in 1947, is a non-profit educational testing and assessment organisation.

Since 1964, more than 30 million students worldwide have taken the Complainant’s TOEFL test, which evaluates the English proficiency of people whose native language is not English. The test is available at over 4,500 testing centers in 165 countries including Kenya, where there are currently four testing centers.

The Complainant owns many registered trade marks for TOEFL including:

- United States trade mark No. 1,103,427, registered on October 3, 1978, in international classes 16 and 41;

- International trade mark No. 882054 designating Kenya, registered on November 9, 2005, in international classes 9, 16, 41 and 42.

The Respondent formerly possessed a “Certified Test Administration Services” (“CTAS”) certification enabling it to administer the Complainant’s tests. The Complainant terminated the Respondent’s CTAS certification by letter dated March 11, 2019. Amongst other things, the letter warned the Respondent that it was no longer entitled to use the Complainant’s name or logo for any purpose.

There then followed a number of communications between the parties whereby the Complainant objected to various activities by the Respondent including the continuing misuse of the Complainant’s name and trade mark by the Respondent on websites at “www.musish.com”, “www.musishtoefl.org”, and “www.musishgre.org”, notwithstanding the Complainant’s termination of the Respondent’s CTAS certification. The Complainant also pointed out that the Respondent was not entitled to use any domain name which incorporated the Complainant’s trade mark. This correspondence culminated with a letter from the Respondent dated May 11, 2019, in which the Respondent claimed to have removed all of the Complainant’s trade marks and images from its websites. The websites at “www.musishtoefl.org”, and “www.musishgre.org” were ultimately de-activated by the host on June 12, 2019.

The Respondent registered the disputed domain name on June 16, 2019.

The Respondent uses the disputed domain name to redirect to a website at “www.musish.com” offering English proficiency and other tests.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions:

The Complainant’s trade marks are extremely well known within the educational testing services industry in the United States and Africa and throughout the world.

The disputed domain name is confusingly similar to the Complainant’s trade mark.

The disputed domain name incorporates the Complainant’s distinctive TOEFL mark in its entirety. The addition of the geographic term “kenya” increases the likelihood of confusion since Internet users will believe that it is the Complainant’s official website for Kenya.

The Respondent lacks rights and legitimate interests in the disputed domain name.

The Respondent is not a licensee of the Complainant. The former relationship has terminated and the Complainant advised the Respondent before registration of the disputed domain name that the Respondent was not allowed to register a domain name incorporating the Complainant’s trade mark.

The Respondent has never been commonly known by the disputed domain name. It operates under a different name – “Musish Ventures”.

The Respondent has registered and used the disputed domain name in bad faith.

The Respondent was clearly aware of the Complainant’s well-known trade marks when it registered the disputed domain name, having already received many warning letters notifying it of the Complainant’s rights in its trade marks.

The Respondent intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.

B. Respondent

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

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;

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

- the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the mark TOEFL by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.

Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical, or otherwise, would not prevent a finding of confusing similarity under the first element.

Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the geographical term “kenya” is insufficient to avert a finding of confusing similarity.

For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

By the time that the Respondent registered the disputed domain name:

- the Complainant had terminated the Respondent’s CTAS certification enabling it to administer the Complainant’s tests and had warned the Respondent that the Respondent was no longer entitled to use its name;

- the Complainant had sent further letters to the Respondent objecting to continuing infringements by the Respondent including use of the Complainant’s trade mark in other domain names; and

- two other such domain names had been de-activated by the host as a consequence of continuing infringements.

Yet despite all of this, the Respondent registered the disputed domain name, which conveys the impression that it leads to the Complainant’s official website for Kenya, and redirected it to a site offering the same kind of services as those supplied by the Complainant, namely English language proficiency tests.

The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the third element of 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 <toeflkenya.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: August 1, 2019