WIPO Domain Name Decision: D2007-0449

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service (ETS) v. International Names Ltd.

Case No. D2007-0449

1. The Parties

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

The Respondent is International Names Ltd., of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <etstoefl.org> is registered with CapitolDomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2007. On March 27, 2007, the Center transmitted by email to CapitolDomains, LLC a request for registrar verification in connection with the domain name at issue. On March 28, 2007, CapitolDomains, LLC 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”), 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 the proceedings commenced on April 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2007.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 14, 2007. 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 private not-for-profit educational research and measurement institution. The Complainant was founded in 1947, and since its inception, the Complainant has been a leader in developing and administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for individuals seeking preparatory school, college and graduate school admission; licenses for technical and paraprofessional occupations; and teacher certification. Examples of tests include: the TOEIC test (Test of English for International Communication); the TOEFL test (Test of English as a Foreign Language); and the PRAXIS test (Test of Spoken English). The Complainant develops, administers, and scores more than 24 million tests annually in more than 180 countries at more than 9,000 locations. The Complainant also develops, administers, and markets numerous test preparation products and services, including print publications, computer software and training services. These products and services are offered for sale worldwide by the Complainant, including on the Complainant’s website “ets.org”. The Complainant generates hundreds of millions of dollars in annual revenue. The Complainant has continuously since 1964 administered the TOEFL test. Colleges and Universities in the United States of America and Canada require TOEFL test scores from their international applicants. Since 1964 the TOEFL test has been taken by nearly 20 million students in more than 110 countries, and over 6,000 institutions worldwide use scores from the TOEFL test. The Complainant’s TOEFL test preparation products and services, including print publications, CD-ROMS, computer software and online writing exercises have been offered for sale worldwide, including on the Complainant’s websites operated through its domain names <toefl.org>, <toefl.com>, <toefl.net> and <toefl.us>.

The Complainant owns trademark registrations in the United States of America for the mark ETS dating back to 1949 and for the mark TOEFL dating back to 1964.

The Complainant’s use of the TOEFL trademark has been mentioned in newspaper and magazine articles in the United States of America and internationally.

The Respondent registered the domain name <etstoefl.org> on November 20, 2005. At the date of the Complaint, the Respondent was operating a website under this name that provides links to other companies’ goods and services as a “pay-per-click” site.

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar

The Complainant contends that the domain name <etstoefl.org> is confusingly similar to the Complainant’s ETS and TOEFL Trademarks. The Complainant submits that the disputed domain name is a combination of two trademarks owned by the Complainant and as such does not serve to distinguish the domain name from the Complainant’s trademarks. The Complainant contends that the combination of the two trademarks actually increases the likelihood of confusion amongst Internet users.

(b) Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interest in respect of the domain name <etstoefl.org>. The Complainant owns trademark registrations in the United States of America for the trademarks ETS and TOEFL. The Complainant’s rights in those trademarks are well established dating back to 1949 and 1964 respectively, many years before the registration by the Respondent of the domain name <etstoefl.org>. The Complainant contends that the Respondent’s use of the domain name in connection with a “pay-per-click” site does not establish a bona fide offering of goods or services, especially in view of the Complainant’s long standing exclusive rights. The Complainant submits that it has never authorized the Respondent as a dealer, distributor or licensee. The Complainant contends that the Respondent is not commonly known by the domain name, but rather is known as International Names Ltd. The Complainant submits that as the Respondent is not making a legitimate or fair use of the domain name without the intent for commercial gain to divert customers misleadingly and/or to tarnish the trademark at issue.

(c) Registered and Used in Bad Faith

The Complainant contends that the domain name <etstoefl.org> was registered and is being used in bad faith on the following factors: (i) knowledge of the Complainant’s long and continuous use of the ETS and TOEFL trademarks at the time of registration; (ii) registration of a confusingly similar domain name to the Complainant’s trademarks; (iii) Respondent acquired the confusingly similar domain name for the purpose of monetary gain by providing links to other companies’ products and services through a “pay-per-click” scheme; (iv) Respondent’s registration and use of a confusingly similar domain name for the purpose of interfering and disrupting the business of the Complainant, and depriving the Complainant from owning and operating a website at <etstoefl.org>; and (v) the Respondent’s pattern of registering domain names incorporating well-known and famous trademarks of others, in which it does not have legitimate rights and using the names for commercial gain.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

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

(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established its rights in the ETS and TOEFL trademarks, by virtue of the U.S. trademark registrations.

The Panel finds that the disputed domain name <etstoefl.org> is confusingly similar to the ETS and TOEFL trademarks, in that it is nothing more than a combination of the Complainant’s two trademarks. Panels have decided that the mere combination of two or more trademarks owned by a complainant do not serve to distinguish the domain name from a complainant’s trademarks (see Danisco A/S and Genencor International, Inc. v. Bong-Gyu Jeong, WIPO Case No. D2005-0973, Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118, ABB Asea Brown Boveri Ltd. v. Mark Maddison, WIPO Case No. D2001—0538).

The Panel, therefore, finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds no evidence that the Respondent ever had any legitimate right or interest in the <etstoefl.org> domain name. The Respondent is not commonly known by the dispute domain name. The Respondent is using the confusingly similar domain name to the Complainant’s trademarks in connection with a “pay-per-click” site that offers goods and services of the complainant’s competitors. The Respondent does not appear to be using the domain name in connection with a bona fide offering of goods and services. In similar circumstances, Panels have found that use of a confusingly similar domain name in connection with a “pay-per-click” site does not serve to establish a bona fide offering of goods and services. (See The Evening Store v. Henry Chan, WIPO Case No. D2004-0305, and Lilly ICOS LLC v. Saban Mihailovic, WIPO Case No. D2005-0356).

The Panel also accepts that the Complainant never authorized, licensed or permitted the Respondent to use its ETS and TOEFL trademarks.

The Panel is therefore, satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain name. Once a complainant has made this prima facie showing, the Respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).

As the Respondent has not filed any evidence in response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The uncontested evidence shows that the Complainant’s trademarks ETS and TOEFL are distinctive and have been widely known for more than 45 years. In these circumstances, the Panel is prepared to infer that the Respondent had actual knowledge of the Complainant’s trademark rights when it registered the confusingly similar domain name <etstoefl.org>.

The Panel is also prepared to find that the Respondent registered the domain name and is operating a website for the purposes of monetary gain by providing links to sites of other companies, some of which are direct competitors of the Complainant, in the form of a “pay-per-click” site. The Respondent is using its confusingly similar domain name to trade on the goodwill of the Complainant and to disrupt the business of the Complainant. In similar circumstances, Panels have consistently recognized that the registration of domain names which are confusingly similar to complainant’s trademarks, and which are then used to operate “pay-per-click” sites, will be considered to be evidence of bad faith (see Credit Industriel et Commercial S.A. v. Richar J., WIPO Case No. D2005-0569, Société Air France v. Bing G Glu, WIPO Case No. D2006-0834 and, Société Air France v. WWW Enterprise Inc., WIPO Case No. D2005-1160).

For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.

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, <etstoefl.org> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist

Dated: May 28, 2007