WIPO Domain Name Decision: D2006-0056

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Jong-Cheol Seo

Case No. D2006-0056

1. The Parties

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

The Respondent is Jong-Cheol Seo, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <realtoeic.com> is registered with OnlineNic, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2006. On January 16, 2006, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the domain name at issue. On January 17, 2006, OnlineNic, Inc. 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 in Korean character. In response to a notification by the Center that the Complaint was administratively deficient due to a Mutual Jurisdiction option, the Complainant argued that Respondent agreed to submit to the jurisdiction where the Registrar principal office is located in the terms provided in the Registration Agreement. The Center requested the Registrar to confirm whether Defendant has submitted in its Registration Agreement to the jurisdiction at the location of your principal office on January 19 and 24, 2006. The Center have attempted twice to contact the Registrar to clarify the Mutual Jurisdiction issue, but have been unable to obtain a reply to its enquiry. The Panel verified that section titled “Governing Law; Jurisdiction; Waiver of Trial by Jury” of Registrar Member Joint Agreement, to which the Respondent is bound, gives the Complainant the possibility to choose a court at the location of the principal office of the Registrar. Therefore, the Panel agrees with the Center acceptance of the Complainant as compliant in respect of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraph 3(xiii), and satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 March 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2006.

The Center appointed Eduardo Machado as the sole panelist in this matter on March 31, 2006. 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.

The Registrant contacted the Center on April 3, 2006, to inform that the disputed domain name will expire on April 16, 2006. The Center requested information on the same day whether the domain name will be placed in hold and Registrar lock status, and the domain name will remain in that status until this proceeding is finished.

On April 10, 2006 the Complainant requested a suspension of the proceeding, which was reinstated upon request from the Complainant on April 20, 2006.

4. Factual Background

Complainant owns trademark registrations for the TOEIC mark in the United States and Korea. The Certificates of Registration date from March 1982 to February 2005. Complainant also owns registrations for the domain names <toeic.com>, <toeic.org>, <toeic.net> and <toeic.us>.

Complainant has been providing educational testing services, namely, administering tests dealing with languages since 1946. In addition, Complainant has developed numerous test preparation products, including print publications, CD-ROMs and computer software.

The tests developed and administered by Complainant and its related companies includes not only the TOEIC test (“Test of English for International Communication”), but also tests such as TOEFL® (“Test of English as a Foreign Language”), GMAT® (“Graduate Management Admission Test”), and GRE® (“Graduate Record Examinations).

Complainant has spent considerable sums of money for the research and development of its products and services under the TOEIC mark, and for promoting it throughout the world. Complaint has offices in several American States, the Netherlands and other countries, as well as worldwide network of local test representatives and testing centers. The test is administered to over 4.5 million people a year in over 60 countries, and more than 4,000 corporations around the world depend upon it.

Respondent registered the domain name at issue on April 16, 2004. The domain name in dispute resolves to a commercial website, through which, in Korean language, the Respondent appears to sell and offer for sale TOEIC test preparation good and services.

5. Parties’ Contentions

A. Complainant

i. Complainant alleges that it has been the exclusive owner of the well-known TOEIC trademark.

ii. Complainant argues that the addition of the generic or descriptive term “real” to its TOEIC mark leaves the resulting REAL TOEIC essentially identical and certainly to be confused with Complainant’s trademark, since Complainant’s TOEIC trademark is the primary element of the domain name; the addition of generic term “real” to any trademark is not sufficient to avoid confusion. Moreover, it increases the likelihood of confusion because the term “real” falsely suggests that the goods and services offered by the Respondent are authentic TOEIC goods and services or they are sponsored or endorsed by the Complainant.

iii. Complainant also argues that it has found no evidence that the Respondent has any rights or legitimate interests neither in the TOEIC mark nor in the domain name at issue.

iv. Complainant argues that Respondent’s is using the domain name for commercial gain to divert consumers misleadingly to its website, and it capitalizes on that confusingly similarity to re-route Internet traffic to its own website that is likely destined for Complainant’s website.

v. Complainant argues finally that Respondent registered the domain in bad faith, since it is unlikely that it would have selected the domain name without knowing of the reputation of the trademark in question. In addition, Complaint argues that Respondent is making use of the disputed domain name in bad faith, considering that it suggests a false designation of origin or sponsorship for Respondent’s goods and services.

B. Respondent

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

6. Discussion and Findings

Although the Respondent did not reply, it is proper for the Panel to examine the Complainant’s contentions having regard to both the Policy and the Rules.

A. Identical or Confusingly Similar

Complainant is correct in claiming that the domain name <realtoeic.com> is confusingly similar to Complainant’s trademark TOEIC, which is a registered mark in the United States and in Korea.

The addition of the generic term “real” is not sufficient to distinguish a mark from its see. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant registered mark.” In the instant case, the trademark TOEIC is the most prominent element in this combination, and that may cause the public to think that the domain name <realtoeic.com> is somehow connected with the owner of the TOEIC trademark.

Moreover, the addition of the generic term “real” creates a likelihood of confusion because that term falsely suggests that the goods and services offered by Respondent are authentic TOEIC goods and services or they are endorsed by the Complainant.

To sum up, Respondent added ‘real’ to Complainant’s TOEIC mark, and ‘realtoeic’ is confusingly similar to TOEIC.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name at issue as enumerated in paragraph 4(c) of the Policy. The Complainant has made out a prima facie case that the Respondent lacks rights and legitimate interests in the domain name. The Respondent, by failing to file a Response, did nothing to dispute this contention nor to provide information as to its interests in using the disputed domain name. The fact that the domain name resolves to a commercial website, through which, in Korean language, the Respondent sells and offers for sale TOEIC test preparations, also leaves the Panel with the conclusion that the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes the following particular circumstances of this case:

(i) the Complainant’s trademark has a strong reputation and is widely known, including in Korea and in the United States;

(ii) the Respondent has provided no evidence whatsoever of any good faith use by it of the disputed domain name, and has not participated in this proceeding even though properly notified thereof;

(iii) the disputed domain name resolves to a commercial website, through which, in Korean language, the Respondent sell and offer for sale TOEIC test preparation good and services.

In light of these circumstances, the Panel makes the reasonable inference that the Respondent was aware of the Complainant and its trademark and that the Respondent registered the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.

The third element of the Policy has been met.

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 domain name <realtoeic.com> be transferred to the Complainant.

Eduardo M. Machado
Sole Panelist

Dated: April 25, 2006