WIPO Domain Name Decision: D2006-0245

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. ESL Pro Systems, Ltd.

Case No. D2006-0245

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 ESL Pro Systems, Ltd., Point Roberts, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain names are <free-toefl.com>, <free-toeic.com> and <free-toefl-pratice-test.com> (collectively, the “Disputed Domain Names”) and are registered with Go Daddy Software, Inc. of Scottsdale, Arizona, United States of America (hereinafter the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2006. On February 28, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Disputed Domain Names. On February 28, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Disputed Domain Names and providing contact details for the administrative, billing and technical contact for each.

On March 6, 2006, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 this proceeding began on March 6, 2006. According to Rule 5(a), the due date for the Response was set as March 26, 2006.

The Respondent failed to submit a response. Accordingly, the Center notified the Respondent of his default on March 27, 2006.

The Center appointed Lynda M. Braun as the sole panelist (the “Panel”) in this matter on April 7, 2006. The Panel finds that it was properly constituted. The Panel has submitted a 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 not-for-profit educational research institution founded in 1947, which provides educational testing services, including the administration of tests dealing with languages and the preparation of informational manuals dealing with educational testing and computer programs for use in the field of language proficiency testing and test preparation. The Complainant develops and administers the Test of English for International Communication (the “TOEIC Test”) and the Test of English as a Foreign Language (the “TOEFL Test”). The Complainant’s first use of “TOEFL” and “TOEIC,” (including in other variations, the “Marks”) occurred as early as 1964, and 1979, respectively. The Complainant’s trademark registrations for the Marks in the United States, which are valid and subsisting, date back to 1978 and 1982, respectively.

The Respondent is ESL Pro Systems, Ltd., an entity whose administrative contact is Daniel Brimm, located at 2621 Uplands Court, Coquitlam, British Columbia V3E 2N9, Canada .

The Respondent registered the Disputed Domain Names on October 24, 2001, January 14, 2003 and August 3, 2005, respectively.

The Respondent operates a single website at “www.free-English.com”, which advertises and provides for sale commercial products, including, but not limited to, ESL exams, games and software, study tools and aids, and other items geared towards learning the English language. Two of the Disputed Domain Names, <free-toefl.com> <free-toeic.com>, resolve to the Respondent’s website. The third of the Disputed Domain Names, <free-toefl-pratice-test.com>, resolves to a placeholder page which contains links to alleged sponsors, including a link to the Complainant’s homepage.

The Complainant sent the Respondent a cease and desist letter dated June 14, 2005, informing the Respondent that the two registered Disputed Domain Names <free-toefl.com> and <free-toeic.com> infringed the Complainant’s Marks.

5. The Parties’ Summarized Contentions

A. Complainant

The following are the allegations made by the Complainant in this proceeding:

- Since its formation in 1947, the Complainant has been at the forefront of development and administration with respect to testing, research, advanced learning, opportunities for foreign students and related goods and services. Since 1964 and 1979, respectively, included among the tests developed and administered by the Complainant are the TOEFL Test and TOEIC Test.

- The Complainant has used, registered or applied to register various Marks in the United States Patent & Trademark Office as well as around the world, including Canada.

- The Complainant has exercised due care and diligence in protecting its intellectual property rights in the Marks, as well as maintaining the Marks in the United States and in countries around the world.

- The constant use of the Marks in the United States and around the world has resulted in worldwide recognition of the Marks.

- The Complainant has also registered numerous domain names, including <toefl.com>, <toefl.org>, <toefl.net>, <toefl.us>, <toeic.com>, <toeic.org>, <toeic.net> and <toeic.us>, all of which resolve to the ETS official website for the TOEFL Test.

- The Disputed Domain Names are identical and confusingly similar to the Marks and the addition of the descriptive term “free” is not a distinguishing feature.

- The Respondent has no permission of any kind to use the Marks whether as part of a domain name or for any other purpose.

- The Complainant has superior rights to use the Marks as domain names, whether in the same form or a variation thereof.

- Each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute:

1. The Disputed Domain Names are essentially identical to the Complainant’s trademarks, service marks, products and domain names acquired, used or registered by the Complainant before the Respondent registered the Disputed Domain Names, and such identity results necessarily in likelihood of confusion, in accordance with the terms of the first element of paragraph 4(a) of the Policy.

2. The Respondent is not a licensee of the Complainant, and the Complainant has not given the Respondent express or implied authorization to use its names or trademarks. There is no evidence of the Respondent’s making legitimate non-commercial or fair use of the domain name in question in accordance with the terms of the second element of paragraph 4(a) of the Policy. Moreover, the Respondent’s rights, if any, to the Disputed Domain Names are secondary and junior to the Complainant’s superior rights.

3. With respect to the third element of paragraph 4(a), it is evident that the Respondent has intentionally attempted to attract, for financial gain, internet users to the Respondent’s website at the Disputed Domain Names, by creating consumer confusion with the Complainant’s trademarks, service marks, products and domain names, clearly constituting proof of bad faith registration and use by the Respondent.

B. Respondent

As stated above, the Respondent failed to respond to the Complaint and as such a default notice was sent to the Respondent on March 27, 2006.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Names transferred to the Complainant, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):

(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no right or legitimate interest in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names were registered and are being used in bad faith.

(i) Identical or Confusingly Similar

The Panel finds that the Disputed Domain Names <free-toefl> and <free-toeic> are nearly identical, or if not identical, are confusingly similar to the Complainant’s Marks. The addition of the words “free” and “pratice-test” in these Disputed Domain Names is not sufficient to escape the finding of similarity. Indeed, it is well established that the addition of generic words to a mark does nothing to change an otherwise identical or confusingly similar domain name. PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity). Accordingly, the first element of Paragraph 4(a) of the Policy has been met by the Complainant.

(ii) Right or Legitimate Interest

Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to complainant’s mark, and that the complainant has made a prima facie case of lack of right or legitimate interest , the burden shifts to the respondent to establish some right or legitimate interest in respect of the domain name.

The Respondent’s default notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent is now or was ever known by the Disputed Domain Names, or that the Respondent has other authority or permission to use the Complainant’s Marks. Furthermore, by not submitting a response, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some right or legitimate interest in Disputed Domain Names. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323; See also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (respondent’s default alone sufficient to conclude that it had no right or legitimate interest in the domain name).

Moreover, the Respondent’s own business name does not appear conspicuously on the sites to which the Disputed Domain Names resolve. Therefore, the Panel infers that the Respondent is using the Disputed Domain Names to divert consumers searching for the Complainant’s website to its own website by capitalizing on the fame and goodwill of the Complainant, which cannot entail legitimate interest, let alone rights, in a domain name. Accordingly, the second element of Paragraph 49(a) of the Policy has been met by the Complainant.

(iii) Registered and Used in Bad Faith

As the undisputed evidence set forth in the Complaint shows that the Complainant owns numerous U.S. trademark registrations in various international classes, as well as trademark registrations in many countries around the world, the Panel infers that the Respondent was well aware of the Complainant’s Marks but chose, in spite of such knowledge, to register the Disputed Domain Names with the intent of causing consumer confusion and financially benefiting from the goodwill inherent in those well known Marks. Such conduct is a demonstration of bad faith. See J. Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054.

Second, the Respondent’s lack of response to the Complaint may be indicative of bad faith conduct, in light of the circumstances of the case. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Comms. WIPO Case No. D2001-0210.

Third, since the Respondent uses the Disputed Domain Names to direct consumers to his own website, the Panel finds that the Respondent’s acts may under the circumstances amount to “opportunistic exploitation of Internet user confusion for the Respondent’s own benefit.” Sound Unseen Ltd. v. Vanderhorst, WIPO Case No. D2005-0636. The Panel concludes that such acts indicate bad faith under paragraph 4(a) (iii) of the Policy, as well as disruption of the Complainant’s business under paragraph 4(b) (iii) of the Policy.

Fourth, the Complainant sent the Respondent a cease and desist letter dated June 14, 2005, informing the Respondent that the two Disputed Domain Names <free-toefl.com> and <free-toeic.com> infringed on the Complainant’s Marks, and requested that the Respondent transfer the names to the Complainant. Rather than act in accordance with the Complainant’s demand, however, the Respondent proceeded to register the third of the Disputed Domain Names, <free-toefl-pratice-test.com>. The Panel finds that this constitutes a further example of the Respondent’s bad faith.

In conclusion, the uncontested evidence in this proceeding sufficiently establishes the requisite bad faith elements pursuant to the Policy, paragraph 4(b)(iv). Accordingly, the third element of Paragraph 4(a) of the Policy has been met by the Complainant.

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 Names <free-toefl.com>, <free-toeic.com> and <free-toefl-pratice-test.com> be transferred to the Complainant Educational Testing Service.

Lynda M. Braun
Sole Panelist

Dated: April 21, 2006