The Complainant is IDP Education Ltd, Australia, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Transure Enterprise Ltd, Host Master, United States of America (“United States”).
The disputed domain name <ieltsidp.com> (the Domain Name) is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2021. On January 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 1, 2021, 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 February 2, 2021.
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 February 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2021.
The Center appointed Jon Lang as the sole panelist in this matter on March 3, 2021. 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.
IDP Education Ltd (and its subsidiaries, including IELTS Australia Pty Ltd) (hereafter the Complainant), along with The Chancellor, Masters and Scholars of the University of Cambridge and The British Council, co-own trademark registrations for IELTS across various jurisdictions including, in the United States, USPTO trademark registration number 2618288 (registration date: September 10, 2002) and in Europe, EUIPO European Union trademark registration number 001884253 (registration date: November 29, 2001). In addition, IDP Education Ltd is the owner of trademark registrations for IDP across various jurisdictions including, in Australia, IPAU trademark registration number 636818 (registration date: October 29, 1993).
IDP
IDP Education Ltd (IDP) is a global leader in international education services and has been helping international students study in English speaking countries for over 50 years. It has an extensive network with offices in 32 countries. IDP is also a co-owner of the International English Language Testing System (IELTS) through its wholly owned subsidiary IELTS Australia Pty Ltd. IELTS Australia Pty Ltd manages a network of IELTS test centers in over 45 countries. IDP maintains its primary website at “www.idp.com“ and attracted an average of more than 1.8 million visitors during the period between July 2020 and December 2020.
IDP also holds various domain name registrations containing the IELTS trademark including <ielts.com.au> which attracted an average of more than 186,000 visitors during the period between January 2019 and June 2019.
IELTS
Established in 1989, IELTS is jointly owned by IDP, the British Council and UCLES (a part of University of Cambridge). In 2018, 3.5 million IELTS tests were undertaken around the world. It is recognized by universities and colleges across the English-speaking world and is also the most widely used test for visa and citizenship purposes in Australia, Canada, New Zealand and the United Kingdom. There are 1,200 IELTS test centers in more than 140 countries and territories. IELTS’ official website is found at <ielts.org> and attracted an average of 1.53 million visitors during the period between January 2019 and June 2019.
The Domain Name was registered on September 3, 2006.
The following is a brief summary of the main assertions of the Complainant.
General
The IELTS and IDP brands are well recognized and respected worldwide and in their industry. The Complainant has made significant investment in advertising and promoting the IELTS and IDP trademarks worldwide over the years.
The Domain Name is Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights
By virtue of its trademark registrations, the Complainant is the owner of the IELTS and IDP trademarks.
It is standard practice to disregard the applicable Top-Level Domain (TLD) under the confusing similarity test.
The Domain Name captures and combines the Complainant’s IELTS and IDP trademarks in their entirety. Where a complainant’s trademark is recognizable within the domain name, the addition of other third-party marks is insufficient in and of itself to avoid a finding of confusing similarity. The Domain Name is confusingly similar to each of these trademarks.
The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name
The Complainant’s trademark registrations are prima facie evidence of the validity of the IELTS and IDP trademarks, of the Complainant’s ownership of these trademarks and of its exclusive rights to use the IELTS and IDP trademarks in commerce on, or in connection with, the goods and/or services specified in registrations.
The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent a license, or authorization or permission to use the Complainant’s trademarks in any manner, including in domain names.
The Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests. Whilst the WhoIs information does not identify the Registrant, upon verification by the Registrar, the Registrant was identified as “Transure Enterprise Ltd, Host Master”, a name which does not resemble the Domain Name.
The Respondent is using the Domain Name to redirect Internet users to a website featuring links to third-party websites. For instance, the website to which the Domain Name resolves features multiple third-party links for “Sat Exam”, “Free Practice Test” and “Practice Exam Test”. The Respondent’s website also features links that reference the Complainant and its trademarks, such as “Idp Exam”, “Idp Exam Dates” and “Idp Ielts Registration”. Presumably, the Respondent receives pay-per-click (“PPC”) fees from these linked websites.
The Domain Name was Registered and is Being Used in Bad Faith
The Complainant, as well as the IELTS and IDP trademarks, are known internationally, with trademark registrations across numerous countries. The Complainant has marketed and sold its goods and services using these trademarks since well before the Respondent’s registration of the Domain Name.
By registering a domain name that incorporates the IELTS and IDP trademarks in their entirety, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademarks (as well as the <ielts.org> and <idp.com> domain names) and, as such, has demonstrated a knowledge of and familiarity with the Complainant’s brands and business.
The IELTS and IDP trademarks are so closely linked and associated with the Complainant, that the Respondent’s use of them or any minor variation thereof, strongly implies bad faith.
The Complainant’s IELTS test is the world’s most popular English language proficiency test for higher education and global migration. In 2018, 3.5 million IELTS tests were undertaken around the world, which demonstrates the Complainant’s fame.
The Respondent has created a likelihood of confusion with the Complainant and the IELTS and IDP trademarks by registering a domain that combines the two trademarks. The Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and the website to which it resolves. This demonstrates a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the Domain Name’s website for the Respondent’s own pecuniary gain.
A respondent cannot disclaim responsibility for content appearing on a website associated with its domain name because such links are generated by a third party, and the fact that the respondent itself may not have directly profited would not, by itself, prevent a finding of bad faith. Nor would such links ipso facto vest in the respondent rights or legitimate interests.
The Domain Name contains the IELTS trademark in conjunction with the IDP trademark and there is no plausible good-faith reason or logic for its registration.
UDRP Panels have concluded that evidence of prior Panel decisions in which domain names have been transferred away from the respondent to complaining parties supports a finding that the respondent has engaged in a bad faith pattern of “cybersquatting.” The Respondent has previously been involved in following cases, which constitutes evidence of a pattern of cybersquatting:
- Berlitz Investment Corporation v. Host Master, Transure Enterprise Ltd, (
WIPO Case No. D2020-1565, August 7, 2020);
- Reale Seguros Generales, S.A. v. Host Master, Transure Enterprise Ltd, (
WIPO Case No. D2020-1353, July 28, 2020);
- Halliburton Energy Services, Inc. v. Host Master, Transure Enterprise Ltd, (
WIPO Case No. D2020-1269, September 7, 2020);
- TBNR, LLC. v. Host Master, Transure Enterprise Ltd, (
WIPO Case No. D2020-1158, June 26, 2020);
- Ted Britt Ford Sales, Inc. v. Host Master, Transure Enterprise Ltd, (
WIPO Case No. D2020-1054, July 7, 2020).
In addition to the Domain Name, the Respondent currently holds registrations for several other domain names that misappropriate trademarks of well-known brands and businesses. This demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the Domain Name. The following represents further examples of cybersquatting/typosquatting by the Respondent, thus establishing a pattern of such conduct and bad faith registration and use:
- <christianlouboutinoutletuk.info> (Christrian Louboutin – CHRISTIAN LOUBOUTIN)
- <etihad.co> (Etihad Airways – ETIHAD)
- <famtiktok.me> (Bytedance Ltd. – TIKTOK)
- <netflix-com.org> (Netflix, Inc. – NETFLIX)
- <toptrump.us> (DTTM Operations LLC - TRUMP)
It is more likely than not that the Respondent knew of and targeted the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
The Complainant is the owner or co-owner of, or has the right to use the IELTS and IDP trademarks and thus clearly has rights in them for the purposes of the Policy.
Ignoring the generic Top-Level Domain (“gTLD”) “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the IELTS trademark followed by the IDP trademark.
Accordingly, the Domain Name is not identical to either mark and thus the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Section 1.7 of WIPO Overview 3.0 goes on to provide “[…] in cases where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Here, both marks are incorporated in their entirety within the Domain Name, and both are recognizable within the Domain Name. The combination of the Complainant’s two marks does not prevent a finding of confusing similarity. Even if a complainant’s mark is combined with a third party mark, as long as the former was recognizable within the Domain Name, there can be a finding of confusing similarity (section 1.12 of WIPO Overview 3.0).
The Panel finds that the Domain Name is confusingly similar to the IELTS and IDP trademarks for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, however, there is no evidence to suggest that the Respondent is commonly known by the Domain Name. The evidence clearly suggests otherwise. Moreover, given the nature of the website to which the Domain Name resolves i.e. featuring links to third-party websites, one or more of which look like they might well, either directly or indirectly, lead to a site (or sites) offering services which compete with the offerings of the Complainant, and some of which also reference the Complainant and its trademarks, it cannot be said that there is legitimate noncommercial use. As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name, comprising both the Complainant’s IELTS and IDP trademarks, suggests the very opposite. In these circumstances, “use”, such as it is, could not be regarded as “fair” either.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to a website containing links to third-party websites, as described earlier. In these circumstances, it would be difficult to accept that such use could amount to a bona fide offering of goods or services for the purposes of the Policy. Indeed, Section 2.9 of the WIPO Overview 3.0, provides: “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”
More generally, in Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. It is very unlikely that the Respondent would have arrived at the formulation of the Domain Name by accident. Clearly, it was the Respondent’s intention to create an impression of association with the Complainant.
In all the circumstances, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
The Respondent must have been aware of the Complainant and the IELTS and IDP trademarks and intended, by registration of the Domain Name, to create an impression of association with the Complainant.
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
The purpose behind registration of the Domain Name appears to have been to attract Internet users to the Respondent’s parking page using a domain name confusingly similar to the IELTS and IDP trademarks. In other words, the circumstances envisaged above.
For the sake of completeness, the Panel should add that the fact that links on the website to which the Domain Name resolves might be automatically generated, does not prevent a finding of bad faith under the Policy (3.5 of the WIPO Overview 3.0).
There may well be other grounds on which a finding of bad faith registration and use could be based, but given what has been said above, there is little point in considering these further.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ieltsidp.com> be transferred to the Complainant, IDP Education Ltd (albeit without prejudice to any other party’s rights to the extent they also have an interest in the IELTS and IDP trademarks).
Jon Lang
Sole Panelist
Date: March 12, 2021