WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. The IELTS TOEFL Centre

Case No. D2010-1755

1. The Parties

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

The Respondent is The IELTS TOEFL Centre of Delhi, India.

2. The Domain Name and Registrar

The disputed domain name <ieltstoefl.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2010. On October 18, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 18, 2010, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2010.

The Center appointed Hariram Jayaram as the sole panelist in this matter on November 22, 2010. 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.

On November 24, 2010, the Respondent filed a late response by email with the Center. On November 29, 2010, the Complainant filed with the Center a supplemental brief in reply to the Respondent’s email of November 24, 2010.

The Panel reviewed the case file and allowed an extension of time for the Respondent to file a formal Response by way of a Panel Order dated December 3, 2010. In accordance with the Panel Order the due date for Response was December 17, 2010. The Respondent filed a Response with the Center on December 17, 2010. In accordance with the Panel Order, the due date for a reply by the Complainant was December 22, 2010. The Complainant did not submit any reply.

4. Factual Background

The Complainant is a not-for-profit corporation organized and existing under the Education Law of the State of New York, with its principal place of business in Princeton, New Jersey, USA.

The Complainant has registered the trade mark TOEFL and variations thereof (the “TOEFL trade mark”) in many countries including India, the home country of the Respondent, for goods and services falling in inter alia classes 9, 16, 35, 41 and 42. The Complainant is also the owner of the domain names <toefl.com>, <toefl.org>, <toefl.net>, <toefl.biz>, <toefl.info>, <toefl.asia>, <toefl.mobi>, <toefl.eu> and <toefl.us>.

The disputed domain name was registered on September 6, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant’s Complaint is as follows:

The Complainant is the largest private not-for-profit educational research and measurement institution in the world founded on December 19, 1947, when the American Council on Education, the Carnegie Foundation for the Advancement of Teaching and the College Entrance Examination Board turned over their testing programs, a portion of their assets and some of their employees to form Educational Testing Service - an organization devoted to educational testing, measurement and research. Since its formation in 1947, the Complainant has been the leader in developing and administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for Americans and citizens of other countries seeking preparatory school, college and graduate school admission, licenses for technical and paraprofessional occupations,and teacher certification, among others. The many well-known tests developed and administered by the Complainant or its related companies include: the TOEIC® test, the TOEFL® test; the TSE® test, and the GRE® test. The Complainant develops, administers and scores more than 50 million tests annually in more than 180 countries at more than 9,000 locations. Many Americans, as well as citizens of other countries throughout the world, have prepared for and taken one or more of the Complainant’s tests at some stage in their lives. In addition to its headquarters in Princeton, New Jersey, the Complainant has regional offices in California, Pennsylvania, Texas, Washington D.C. and Puerto Rico, as well as subsidiaries in the Netherlands and other countries. The Complainant maintains an extensive worldwide network of local test administrators and authorized testing centers. Continuously since 1964, the Complainant, through its development and administration of the TOEFL® test, among other activities, has been at the forefront of evaluating the English proficiency of people whose native language is not English. Colleges and universities in the United States and Canada rely on TOEFL test scores from their international applicants. Academic institutions in other countries, as well as certain independent organizations, agencies and foreign governments also rely on TOEFL® test scores to evaluate their employees’ English-language proficiency. In addition, several medical certification and licensing agencies require TOEFL test scores. The TOEFL test is made available worldwide by the Complainant and administered by authorized institutions and/or through the Complainant’s Preferred Associates Network under contract with the Complainant. Since 1964, nearly 24 million students have taken the TOEFL test in more than 130 countries, and over 7,500 institutions worldwide use scores from the test. In 2005, the Complainant launched the new TOEFL® iBT which is now delivered to test takers worldwide. Test takers take the TOEFL iBT at secure computer test sites certified by the Complainant. On June 29, 2005, the Complainant entered into a publishing and trade mark licensing agreement with The McGraw-Hill Companies, Inc., whereby McGraw-Hill obtained the rights to publish and sell the Complainant’s The Official Guide to the New TOEFL iBT (previously referred to as TOEFL iBT: The Official ETS Study Guide) and to use the ETS logo and TOEFL trade mark in connection therewith. In connection with the TOEFL test, the Complainant has developed numerous test preparation products and services, including print publications, CD-ROMs, computer software and online writing exercises. These products and services provide information on taking the TOEFL test and authentic TOEFL practice test questions, and they are offered for sale worldwide by the Complainant, including on the Complainant’s official website for the TOEFL test, accessible through the domain names <toefl.org> and <toefl.com>. The Complainant also provides general information about the TOEFL test on this website, as well as registration information for taking the test anywhere in the world. As a result of the Complainant’s long and prominent use of its TOEFL trade mark for and in connection with its products and services, the TOEFL trade mark has acquired worldwide recognition as identifying exclusively the products and services of the Complainant, and the vast and valuable goodwill symbolized by the TOEFL mark belongs exclusively to the Complainant. The Complainant’s TOEFL trade mark is well known and enjoys a worldwide reputation and renown among educational, professional, occupational, economic, governmental, institutional and industrial sectors. The TOEFL trade mark serves to identify a single source - namely, the Complainant - and its respected products and services. The Complainant has spent a considerable sum of time, effort and money for the research and development of its products and services that are extensively promoted, marketed and sold under the TOEFL trade mark throughout the world.

The disputed domain name is essentially identical and certainly confusingly similar to the Complainant’s TOEFL trade mark, as it incorporates the Complainant’s distinctive TOEFL trade mark in its entirety. The primary element of the disputed domain name, “TOEFL”, is identical to the Complainant's well-known trade mark. The only difference between the disputed domain name and the Complainant’s TOEFL trade mark is that they combine trade marks owned by the Complainant and a third party, respectively. The combination of two or more trade marks owned by an entity or entities other than the domain name registrant does not render such domain names any less identical or confusingly similar to the Complainant’s mark. Given the notoriety of the Complainant’s TOEFL trade mark and the fact that the disputed domain name incorporates the mark verbatim, the disputed domain name is likely to confuse consumers into believing that the Respondent’s website accessed through the disputed domain name is affiliated with or endorsed by the Complainant, or that the Respondent's use of the disputed domain name is authorized by the Complainant. Therefore, the disputed domain name is identical or confusingly similar to the Complainant’s TOEFL trade mark.

The Respondent cannot demonstrate that it has any rights or legitimate interests in the disputed domain name. All of the Complainant’s registrations for the TOEFL trade mark pre-date the Respondent’s registration of the disputed domain name. The trade mark registration is evidence of the Complainant’s exclusive rights in the mark in connection with the goods and services covered by that registration, and the Complainant has not authorized the Respondent to use any of its trade marks. The Respondent has not made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor could the Respondent do so in light of the notoriety of the Complainant’s trade mark and the Complainant’s exclusive rights in such mark. In addition, the Respondent has not been commonly known as “TOEFL”. In order for the Respondent to show that it has legitimate rights in the disputed domain name based upon a claim that it is commonly known by the disputed domain name, the Respondent must provide adequate extrinsic proof that a corresponding group of consumers who are likely to access its website, associate the “TOEFL” portion of the disputed domain name with the Respondent rather than with the Complainant. Given the widespread notoriety enjoyed by the Complainant’s TOEFL trade mark worldwide and the Complainant’s long and well-established statutory trade mark rights in the TOEFL® designation, it is impossible for the Respondent to meet that burden. Moreover, the Respondent is also not making a legitimate noncommercial or fair use of the disputed domain name without intent (1) for commercial gain to divert consumers misleadingly or (2) to tarnish the trade marks at issue. The Respondent’s commercial website offers test-taking preparation services for the TOEFL and IELTS exam that overlap and compete with those of the Complainant. The Respondent’s use of the TOEFL trade mark in the disputed domain name to “bait” consumers to its own test taking products and services for the lELTS test, which is the principal competitor of the TOEFL test, is commercial and does not constitute fair use. Rather, such use infringes upon the Complainant’s trade mark rights and is not a legitimate use of the disputed domain name under the Policy. The Respondent may argue that it has a legitimate interest because it offers test preparation goods and services. However, even if the Respondent was a licensed reseller of the Complainant’s products and services, which it is not, it would not be entitled to use the Complainant’s trade mark in the disputed domain name since resellers of trade marked goods and services have no right to register and use domain names containing the trade mark at issue. In this case, the Respondent's website features information and services relating to the International English Language Testing System (IELTS) - the primary competitor to the Complainant’s TOEFL test. The Respondent is therefore using the TOEFL mark to bait consumers to its website and then switch them to the goods and services of the Complainant’s direct competitor, all to the detriment of the Complainant. As such, even if the limited right of resellers to utilize a trade mark in a domain name was recognized, the Respondent has extinguished that right by offering the goods and services of the Complainant’s competitor on the website associated with the disputed domain name. But the fact remains that the Respondent is not a licensed reseller of any of the Complainant’s products or services. As such, it occupies a position with even lesser rights to use the TOEFL trade mark as part of the disputed domain name. Therefore, even if a licensed reseller of the Complainant’s “TOEFL” products and services lacks the right to register a domain name that features the TOEFL mark, then the Respondent certainly lacks that right as well. The Respondent’s use of the disputed domain name further constitutes a breach of the Registration Agreement, as well as the Policy, under which the Respondent warranted that, to the best of its knowledge and belief, neither the registration of the disputed domain name nor the manner in which it intended to use the disputed domain name would directly or indirectly infringe the legal rights of a third party. The Respondent’s breach of that warranty divested it of any rights or interests in the disputed domain name that it may have had. Given the exclusive rights owned by the Complainant in the “TOEFL” trade mark in respect of the educational testing and test preparation goods and services, the Respondent can have no rights or legitimate interests in the disputed domain name.

The Respondent has registered the disputed domain name without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of the Complainant’s well-known TOEFL trade mark since bad faith is found if it is unlikely that the registrant would have selected the domain name without knowing of the reputation of the trade mark in question. Such a finding is particularly apt where the Complainant’s TOEFL trade mark is well-known. The Respondent had actual and constructive notice of the Complainant’s rights in the “TOEFL” trade mark before it registered the disputed domain name. The Respondent offers and refers to goods and services that assist test takers preparing for the TOEFL® test, which the Complainant developed and administered long before the Respondent was in business. In addition, it is highly unlikely that the Respondent selected the disputed domain name without being aware of the Complainant’s well-known “TOEFL” trade mark, given the worldwide renown enjoyed by the TOEFL trade mark. To proceed with registration in the face of such knowledge clearly demonstrates bad faith on the part of the Respondent. The commercial website hosted at the disputed domain names sells an assortment of services that compete with services covered by the Complainant’s registrations for its TOEFL trade mark. This is a bad faith attempt to capitalize on the fame of the TOEFL mark to attract Internet traffic for commercial gain. Innumerable legitimate providers of preparation services for the Complainant’s tests carry on their businesses successfully without incorporating the Complainant’s trade marks in the domain names for their websites. Those operators do not trade on the goodwill of the TOEFL trade mark to draw traffic to their websites. The Respondent should use its own designation as its domain name to avoid confusion. Simply by using the disputed domain name, the Respondent makes prominent trade mark use of the Complainant’s TOEFL trade mark without authorization from the Complainant. This use creates the false impression that the goods and services offered by the Respondent are authentic TOEFL goods and services or that they are sponsored or endorsed by the Complainant. The Complainant enjoys exclusive rights in the well-known TOEFL trade mark in respect of goods and services relating to educational testing, among other things, by virtue of its registrations for the marks and its long-term and widespread use of the marks. The Complainant has never consented to the Respondent’s registration of the mark as a domain name, nor has the Complainant ever granted any of its proprietary rights to the Respondent. Accordingly, the Respondent’s use of the disputed domain name suggests a false designation of origin or sponsorship for any goods or services that the Respondent may offer on a website associated with the disputed domain name. The Complainant submits that the Respondent undoubtedly chose the disputed domain name in an effort to free-ride on the goodwill associated with the distinctive TOEFL trade mark in which the Complainant enjoys exclusive rights and/or for the purpose of creating the false impression that the Respondent is an authorized agent, licensee or representative of the Complainant, which the Respondent is not. Therefore, the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent’s Response is as follows:

The Respondent, The International English literacy Training Services and Tutelage of English & Foreign Linguistics Centre (The IELTSTOEFL Centre), is a tutorial centre founded in New Delhi in 1997 and operating a sole campus in Kullu, in the northern Himalayan state of Himachal Pradesh, India.

The Respondent notes the contents of paragraphs 51, 53, 54, 55, 56 and 57 of the Complaint. The Respondent notes the contents of paragraphs 2, 3, 4 and 5 of the Complaint and states that the contents of these paragraphs are a matter of record. The Respondent states that the contents of paragraphs 1, 13, 14 and 15 of the Complaint are a matter of record. The Respondent denies the contents of paragraphs 29, 30 and 49 of the Complaint and states that the contents of these paragraphs are wrong or factually incorrect. The Respondent states that the contents of paragraph 36 of the Complaint are not relevant since the Respondent is not a provider and/or a reseller of TOEFL products or services.

In reply to the contents of paragraph 12 of the Complaint, the Respondent states that the Complainant clearly describes the TOEFL trade mark in relation to certain goods and services, namely information manuals dealing with educational testing and educational testing services, specifically tests dealing in languages and computer programs for use in the fields of language proficiency testing and test preparation. The fact the ETS produces testing and preparation material for their TOEFL tests that are conducted online is not a matter of dispute. The Respondent would like to point out that TOEFL is designed with the North American market in mind – in many cases the English spellings (and most cases the pronunciations) are profoundly different to the English commonly used in India, England, Australia, New Zealand, South Africa and many other countries.

The Respondent states that the contents of paragraphs 16, 17, 18, 19, 20, 21, 22, 23, 24 and 25 are a matter of record and the Respondent further states that the world's most popular English Language Test for higher education and immigration is produced by joint partners - University of Cambridge ESOL Examinations, the British Council and IDP Australia Pty Ltd under the name of the International English Language Testing System (abbreviated to IELTS) which tested more than 1.4 million candidates in year 2009.

The Respondent states that the contents of paragraph 31 of the Complaint manipulates the reader into thinking that it is compulsory for an individual or organisation to seek permission from the Complainant to use a string of words in their business name, whose abbreviation may bear some vague similarity. The Respondent is primarily focused on delivering English tuitions and not TOEFL testing services. The Respondent rejects the notion that it needs to seek permission from the Complainant to abbreviate the Respondent’s business name prior to registering the said abbreviation as its domain name. The Respondent has never sought to promote the Complainant’s testing system, nor has it ever had the need or requirement to seek permission to use the Complainant’s trade marks. The registered trade mark of TOEFL or of the Complainant will not be seen on the Respondent’s website, nor does the Respondent claim any affiliation or collaboration with the Complainant. The final assertion by the Complainant that the “lack of authorisation from trademark owner for use of trademark is a factor for finding the respondent has no legitimate interest in the domain name” is irrelevant and specious.

The Respondent states that the contents of paragraph 38 of the Complaint are in direct contradiction to the arguments set out in the paragraphs 1 to 37 of the Complaint. The Respondent agrees that it is not a reseller of the Complainant’s products/services; therefore, the contents of the entire Complaint are proven to be specious, malicious and vexatious. The Respondent rejects the Complainant’s suggestion that the Respondent is using the Complainant’s trade mark in the disputed domain name and the Respondent’s business registration. The disputed domain name is simply an abbreviation of the Respondent’s business name.

The Respondent states that the contents of paragraph 58 of the Complaint are deliberately misleading and self serving. The Complainant has failed to approach the Respondent at any time in the recent past to seek a remedy to their expressed “concerns”. The Respondent was unaware of any dispute pending or otherwise, and has been afforded no opportunity for mediation or other forms of dispute resolution. Instead, the Complainant has engaged in corporate bullying and harassment by needlessly embarking on a litigious route, without first properly researching the facts and circumstances pertaining to the Respondent. These proceedings have been initiated by using corporate bullying tactics - much like cracking an egg by using a sledgehammer. The Respondent has been providing education services to the rural Himalayan communities over the past three years without incident or complaint. The revenues that the Respondent raises to pay its staff and hall rentals are meager and are not able to afford fancy New York (Park Avenue) lawyers to defend its rights. The Complainant has failed to provide supporting evidence of its contentions, instead relying on invective, supposition, assumption, speculation, and specious and misleading arguments. Lastly, the Respondent’s website (the target of this proceeding) is actually only in BETA mode. It was created by a junior student web-designer, which was published only as an interim measure whilst a new improved and accurate website is under design. If it could be argued by the Complainant that there were ever any errors or omissions, these were unintentional. Since the site is BETA only, it is subject to adjustments and amendments from time to time, as the need arises, or indeed as/when matters are brought to the Respondent’s attention.

The Respondent denies the contents of paragraphs 10 and 11 of the Complaint and states that the Complainant has attempted to argue the justification of its “Jurisdictional Basis for the Administrative Proceeding” on fallacious and erroneous contentions, which the Respondent rejects as specious, malicious and vexatious. The Respondent rejects the Complainant’s contentions that the Respondent is in breach of GoDaddy’s Registration Agreement under Section 4 of their Policies and that the name of the Respondent’s Tutelage Centre is “confusingly similar” to the ETS “TOEFL” trade mark, or that the Respondent has no rights over the ownership of the disputed domain name. The Respondent denies that the disputed domain name is being used in bad faith, and it also rejects the Complainant's contention that the banner artwork that is published on the Respondent’s beta website “www.ieltstoefl.zoomshare.com” resembles the ETS “TOEFL” logo art that is registered with the Indian Trade Marks Registry.

The Respondent denies the contents of paragraph 26 of the Complaint. The Respondent denies that the disputed domain name is identical or confusingly similar to the Complainant’s trade mark. The Respondent argues that there is only a vague similarity between the phrases, due to the use of the words "English" and "Foreign" as demonstrated:

Test of English as a Foreign Language (TOEFL); and

The International English Literacy Training Services and Tutelage of English & Foreign Linguistics Centre (IELTSTOEFL)

The Respondent provides tuitions, tutelage and training, but the Complainant provides (primarily) online TESTING services. The Respondent has never promoted itself in India as a testing provider. The Respondent is only a small tuitions’ centre with a 50 student seating capacity, focusing primarily on English Literacy, and German, French and Spanish tutelage.

The Respondent denies the contents of paragraph 27 of the Complaint. The Respondent denies combining the TOEFL trade mark with any other when registering the disputed domain name in 2007. The disputed domain is an abbreviation of the name of the Respondent.

The Respondent denies the contents of paragraph 28 of the Complaint. The Respondent’s beta website clearly displays a disclaimer on every page that cites the fact that the website is neither affiliated nor approved by the Complainant.

The Respondent denies the contents of paragraph 32 of the Complaint and states that the contents are wrong. The Respondent is endorsed as “BEST PRACTICES” by the All India Collegium for Technical Education (AICTE) for delivering tutorials in a bona fide and professional manner. The Respondent’s work has no relation to the TOEFL Testing Systems.

The Respondent denies the contents of paragraph 33 of the Complaint and states that the contents of the said paragraph are framed in a specious manner and are factually wrong. The Respondent does not promote its name in a partial manner, nor does it promote itself as TOEFL providers. The portion of the disputed domain name that the Complainant refers to is “Tutelage of English & Foreign Linguistics” which bears no resemblance to ”Test of English as a Foreign Language” which is the defining difference between the different intents and meanings of Tutelage and Testing.

The Respondent denies the contents of paragraph 34 of the Complaint and states that the contents of the said paragraph are framed in a specious manner and are factually wrong. The Respondent denies ever using the Complainant’s registered trade mark on the Respondent’s website. The Complainant’s trade mark representations registered under the Trade Marks Act 1999 (India) are entirely different to the banner art used on the Respondent’s website, which is merely an abbreviation of the Respondent’s business name. The Respondent is not in breach of the Trade Marks Act 1999 (India) in terms of its right to use its business/organisation name and/or an abbreviation thereof. The Respondent rejects the Complainant’s contention that the Respondent is using the TOEFL trade mark to bait consumers to use products and services related to the IELTS test as a suggestion which is specious, insulting, misleading and factually incorrect.

Mr. J. Yopp (Vice President) along with F. Brittain and other senior executives of the Complainant met with the Respondent’s Director of Studies (Mr. V. Gaffney) in year 2002 during the Complainant’s tour of North India, and clarified that in fact the TOEFL and IELTS testing systems are not competitors, but rather parallel testing services providers. Faculty and researchers from both organisations regularly visit one another and workshop together, comparing notes, methodologies, etc., a practice which is commonplace over the past 15 years, and still ongoing. Following that meeting, Mr. Gaffney submitted a comprehensive report to the Complainant describing the activities of the top market leading English academies in New Delhi, all of whom have blatantly advertised TOEFL preparation services, using the TOEFL emblem in the newspapers and promoting the TOEFL courseware, without licensing and without even the courtesy of a disclaimer, or use of the ® or ™ symbol. Conversely, the Respondent only uses properly licensed materials – nothing fake and nothing black-market or pirated. On the one hand, the Complainant claims to be a not-for-profit organisation, but on the other hand, it contradicts itself by relying on phrases such as “commercial interest” and “principal competitor”.

The Respondent denies the contents of paragraph 35 of the Complaint and states that the contents of said paragraph are specious and factually incorrect. The Respondent uses a variety of testing methodologies which are developed in-house and are commercially available. The Respondent delivers a mini pre-test to the student prior to designing his or her study program, which allows the Respondent to accurately gauge a student’s competency in Reading, Writing, Listening, Speaking and Comprehension. The Respondent has no need to enter into a “License Agreement” with the Complainant or any other testing organisation. There is a plethora of independent study materials available free and paid - both online and in hardcover published form, to help students prepare for any tests that they so wish to undertake. The English language tutelage market in India is huge, with thousands of academies and schools offering such services. Furthermore, the Respondent is neither a reseller nor provider of TOEFL products or services, so therefore the entire contents of paragraph 35 of the Complaint are irrelevant and specious.

The Respondent denies the contents of paragraph 37 of the Complaint and states that the contents of the said paragraph are framed in a specious, malicious and vexatious manner and are factually erroneous.

The Respondent is neither a reseller nor a provider of IELTS and/or TOEFL products and services. The Complainant is simply attempting to slur the good name of the Respondent, and prejudice the Panel with sensational, negatively framed, misleading and specious suggestions, such as the Respondent may induce a customer to use other goods. Further, as stated in the Respondent’s reply to paragraph 34 of the Complaint, the copyright owners of the TOEFL and IELTS products are parallel organisations, not competitors. Customers intending on studying or migrating to the United States or Canada will generally take the TOEFL test, whilst others intending on studying or migrating to Australia, New Zealand or England will generally take the IELTS test. So for the Complainant to suggest that that the TOEFL and IELTS testing systems are competing systems is specious, incorrect and deliberately misleading.

The Respondent denies the contents of paragraphs 39, 40 and 41 of the Complaint and states that the contents of the said paragraph are framed on the basis of specious arguments. The disputed domain name is simply an abbreviation of the Respondent’s business name, and has been registered in good faith. The Respondent enjoys no benefit directly or indirectly from the Complainant or the goodwill that is claimed. The market is savvy enough to know what it wants from education providers, and all of the Respondent’s customers are motivated to increase their skills and competency in languages. The Respondent is located in the Himalayas in far North India – its client base is primarily the local agricultural and tribal communities. The vast majority has never even heard of the Complainant or of TOEFL or IELTS. Further, they come to the Respondent for its reputation and professional services and certainly not for the obscure and specious arguments that the Complainant has put forward.

The Respondent denies the contents of paragraphs 42, 43, 44 and 45 of the Complaint and states that the contents of the said paragraph are framed speciously. The Complainant has miserably failed to demonstrate how the Respondent’s business name is ”confusingly similar” to the TOEFL trade mark. The Complainant has also failed to demonstrate exactly how the disputed domain name may draw on the “goodwill” of the Complainant’s registered trade mark, and the Complainant has not provided any supporting evidence of “confusion” in the market place as regards the use of the disputed domain name as an abbreviation of the Respondent’s name.

The Respondent denies the contents of paragraph 46 of the Complaint and states that the contents of the said paragraph are factually wrong. No false impression has been created since the full name of the Respondent is also referred to immediately below the banner.

The Respondent denies the contents of paragraph 47 of the Complaint and states that the contents of the paragraph are framed in a specious manner. There is no requirement under Indian law (or International law) for an organisation to seek permission from the Complainant with regards to the choice of a name or a phrase for their business. The disputed domain name duly and accurately reflects a legitimate abbreviation of the Respondent’s business name and title. Therefore, no “permissions” have been sought, nor were they ever required.

The Respondent denies the contents of paragraph 48 of the Complaint and states that the contents of the paragraph are framed in a specious manner. The Complainant has submitted poisonous conjecture rather than fact.

In reply to the contents of paragraphs 50 and 52 of the Complaint, the Respondent requests that these proceedings initiated by the Complainant based on a myriad of specious arguments, malicious suggestions and outright lies be dismissed. The Respondent further requests that the matter of the Respondent’s business name in India, and its subsequent abbreviation and any disputes to the same be handled within the jurisdiction of the competent Courts of India in New Delhi.

C. The Complainant’s Reply

The Complainant’s Reply to the Respondent’s Response is as follows:

i). The Respondent’s Untimely Response Should Be Rejected

On November 17, 2010, over a month after the Respondent became aware of the Complaint and nearly a week after its Response was due, the Respondent submitted an untimely Response via e-mail to the Center, failing to transmit a copy to the Complainant as required under paragraph 5(b)(vii) of the Rules. The Response makes only cursory reference to the “Navratras & Diwali” festival season as the apparent justification for untimely submission. The Respondent failed to disclose any exceptional circumstances relating to the festival season that prevented the Respondent from submitting a timely Response. The Rules at paragraphs 5(d) and 5(e), specify that extensions should only be granted under exceptional circumstances. Even if exceptional circumstances did exist, the Respondent could and should have exercised diligence and sought an extension of time to respond as soon as it received the Notification of Complaint, because the Respondent must have already been aware of the dates of the festival season. The Respondent’s failure to submit a timely Response or, in the alternative, make a request for extension prior to the deadline for submitting its Response demonstrates a lack of respect for this proceeding. The Respondent’s reliance on the Navratri and Diwali festivals as purported justifications for delay demonstrates a lack of credibility. The Navratri festival took place this year from October 8 to October 16 - well before the Complainant commenced this proceeding, and the Diwali holiday fell on November 5 this year. The dates of those holidays do not present exceptional circumstances to warrant an extension of the Respondent’s time to submit a Response.

ii). Argument Advanced by the Respondent Demonstrates Further Lack of Credibility

The Complainant contends that the untimely Response consists of an entirely specious argument. The Respondent asserts that its registration and use of the disputed domain name corresponds with the name of its organization, “The International English Literacy Training Services + Tutelage Of English & Foreign Linguistics Centre.” However, it is inconceivable that the Respondent devised that name as anything but an afterthought to obscure its purposeful selection of a domain name that incorporates the Complainant’s well-known, distinctive TOEFL trade mark to free ride on the renown of that mark. As of February 2010, the Respondent’s website made no reference to “The International English Literacy Training Services + Tutelage Of English & Foreign Linguistics Centre,” indicating that the Respondent concocted that preposterous moniker after it became aware of this dispute. “TOEFL” is the name of the Complainant’s respected test of English-language proficiency. The Respondent is aware of that, as demonstrated by the presence of the following text on the website to which the disputed domain name resolves: “TOEFL® test preparation = Test of English as a Foreign Language™ suitable for USA and Canada.” The disputed domain name also incorporates “IELTS”, which is the name for the English language proficiency test of the Complainant’s competitor. The Respondent is aware of the IELTS test, as demonstrated by the presence of the following text on the website to which the disputed domain name resolves: ”IELTS^TM test preparation = International English Language Testing System™ suitable for Australia, England and New Zealand.” Given that the Respondent is in the business of preparing students to take the TOEFL and IELTS tests, it is inconceivable that the Respondent was not aware of those trade marks prior to its registration and use of the disputed domain name. To register and use the disputed domain name with full knowledge of the Complainant’s rights in the well-known TOEFL trade mark constitutes bad faith.

iii). Existence of Disclaimer Does not Cure Bad Faith

The Respondent further attempts to absolve its misdeeds by noting that it has no intent to cause confusion, given that its website includes a disclaimer of endorsement or approval by the Complainant. However, the disclaimer is barely legible and placed at the very bottom of the website, requiring users to scroll through many pages before it appears, and it was not present in prior versions of the Respondent’s website. In any event, disclaimers are insufficient to cure bad faith.

6. Discussion and Findings

Preliminary Procedural Issues: Deficient Response, Supplemental Filing and Mutual Jurisdiction

The Panel wishes to address three preliminary procedural issues: 1) the Respondent’s filing of a deficient Response; 2) the acceptance of the Complainant’s supplemental filing of November 29, 2010; 3) the issue of mutual jurisdiction raised by the Respondent.

i. Deficient Response

The Panel notes, in particular, that the Respondent’s Response of December 17, 2010 does not conform to the requirements of Rule 5(b) of the Rules in particular Rule 5(b)(vii) and (viii).

However, under paragraph 10(a) of the Rules, the Panel is given general powers inter alia to “conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules and to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” In accordance with the said general powers, the Panel admits the deficient Response in this proceeding.

ii. Supplemental Filing

The Complainant has filed a supplemental brief in reply to the Respondent’s Response of November 24, 2010. The Complainant did not file a reply to the Respondent’s subsequent response of December 17, 2010. The Panel has considered the issue of accepting the Complainant’s earlier supplemental filing of November 29, 2010 and the Panel finds that the circumstances of the current case permits the acceptance of the supplemental filing by the Complainant as the Respondent in his Response has raised issues which the Complainant could not have been expected to address in the Complaint. Moreover, the Panel finds that there is no evidence or proof of communication before the Panel which shows that the Response of December 17, 2010 was transmitted to the Complainant.

Therefore the Panel, exercising its powers under paragraph 10(a) of the Rules, admits the Complainant’s supplemental filing.

iii. Mutual Jurisdiction

The Respondent in its Response of December 17, 2010, has argued that the fact that the Respondent’s country of residence is India, the dispute pertaining to the disputed domain name ought to have been instituted in the jurisdiction of the competent courts of India in New Delhi.

The Panel wishes to bring paragraph 4(k) of the Policy and paragraph 3(b)(xiii) of the Rules to the notice of the Respondent. Paragraph 4(k) of the Policy states:

“The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.”

In accordance with paragraph 3(b)(xiii) of the Rules, the Complainant is also required to specify a “Mutual Jurisdiction” in the Complaint.

Any person or company may file a complaint under the UDRP Administrative Procedure for a dispute relating to a gTLD. The party who loses in the administrative proceeding is given a redress in court pursuant to the provisions mentioned above.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the domain name to be transferred to it:

- The domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

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

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

A. Identical or Confusingly Similar

The disputed domain name is <ieltstoefl.com> and the Complainant’s trade mark is TOEFL. The disputed domain name incorporates the Complainant’s TOEFL mark in its entirety. In Turkcell Iletisim Hizmetleri A.S. v. GWT, WIPO Case No. D2007-0614, the panel observed:

“…the full incorporation of the trademark in the domain name is sufficient to make a finding of confusion between the trademark and the domain name.”

The Complainant owns trade mark registrations for the TOEFL trade mark in many countries including in India, the country of residence of the Respondent. The Complainant’s TOEFL trade mark is a well-known trade mark and renowned for the testing services the Complainant offers and manages. The Respondent’s argument that the word “ieltstoefl” in the disputed domain name is synonymous to its business registration, i.e., “The International English literacy Training Services and Tutelage of English & Foreign Linguistics Centre (The IELTSTOEFL Centre)” is neither justified nor acceptable because the disputed domain name incorporates the name of the international testing system TOEFL. The addition of the word/letters “ielts” to the word/letters “toefl” to form a disputed domain name will not diminish the confusing similarity of the disputed domain name to the Complainant’s TOEFL trade mark. Such an addition will make the disputed domain name confusingly similar to the trade mark as the domain name is clearly a combination of the two famous testing systems.

In Danisco A/S and Genencor International, Inc. v. Bong-Gyu Jeong, WIPO Case No. D2005-0973, the disputed domain name was <daniscogenencor.com> and the panel held:

“The disputed domain name is merely a combination of the two asserted trademarks in their entireties. Further, given the public announcement of the agreement between Danisco and Genencor, the disputed domain name is very likely to cause confusion with respect to the Complainants.”

Similarly in this administrative proceeding, the disputed domain name which combines the names of two testing systems to form a domain name is a mere combination of two separate trade marks owned by different entities. It will not diminish the confusing similarity to the asserted trade marks.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made allegations against the Respondent as to its lack of rights and legitimate interests. The Respondent is not commonly known as “toefl”. The Complainant has not granted any license or authorization to the Respondent to use any of the Complainant’s trade marks. The disputed domain name resolves to a website, i.e., “www.ieltstoefl.zoomshare.com” which offers services which overlap and compete with those of the Complainant.

By its own admission, the Respondent has displayed a disclaimer on its “www.ieltstoefl.zoomshare.com” website which states non-affiliation with the Complainant. Therefore, the Respondent has not obtained authorization from the Complainant to use the Complainant’s trade mark. The Respondent’s services have no relation to the TOEFL Testing system.

Paragraph 4(c) of the Policy states that the Respondent in responding to the Complaint, may show any of the following circumstances in order to demonstrate its rights and legitimate interests in the disputed domain name:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent 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.

In the Panel’s view, the Respondent has failed to rebut the Complainant’s allegations and has failed to demonstrate its rights and legitimate interests in the disputed domain name. The Respondent’s use of a domain name which incorporates the Complainant’s trade mark for a website which offers services similar to those of the Complainant’s is not a use of the disputed domain name for a bona fide offering of goods and services. The disputed domain name resolves to a website which offers “TOEFL^® test preparation” as one of the services of the Respondent. The heading of the website displays the “ielts” and the “toefl” words as two separate and distinct words and not as suggested by the Respondent, i.e., abbreviation of the Respondent’s business name. Hence, the Respondent’s use of the disputed domain name appears to be merely intended to divert customers/potential customers to the Respondent’s website and cannot be considered a bona fide offering of goods and services. The disclaimer added by the Respondent on its website is only visible to the Internet users once the users enter the Respondent’s website. Thus the effectiveness of the disclaimer, considering its size and placement, is questionable as it does not offset the risk of confusing similarity and customer diversion generated by the choice of the domain name by the Respondent.

In Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312, the panel held:

“… the fact that Respondent trades in automobiles (and specifically in pre-owned Porsche cars) would in any case not give right to Respondent to use the PORSCHE mark as a trade name to carry on its business in order to make commercial gain and to attract consumers. Respondent could not be prevented from using Porsche in a non-trademark sense on its web site but this is not the way he was planning to use the Domain Name. Respondent’s projected web site would in fact be accessible through the Domain Name, which would misleadingly appear to be a domain name of the Complainant. Consumers would realize that this is not the case only once they had actually accessed the site and could see the disclaimer added by Respondent after it had received Complainant’s objections. At this point, however, they had already been diverted and misled.”

The Panel agrees with the above decision and finds that such use and purpose of the disputed domain name without the authorization of the bona fide trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name or a bona fide offering of goods and services.

In the presence of the Complainant’s well-known TOEFL trade mark, it is not sufficient for the Respondent to show that it is commonly known by the disputed domain name by submitting that the word “ieltstoefl” in the disputed domain name is an abbreviation of the Respondent’s business name. The Panel agrees with the decision in Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512, in which the panel held:

“… there is no evidence that the Respondents have been commonly known by the disputed domain name. Accordingly, the Panel cannot conclude that the Respondents’ have rights or legitimate interests in the domain name simply because Dell is (or may be) the legal surname of one of the Respondents … there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name. In addition, the Complainant has made a substantial showing that the DELL mark is a well known or famous mark in the United States, and given the strength of the DELL mark, the Respondents’ use of the disputed domain name seems calculated to falsely suggest to Internet users that the Complainant is affiliated with the website.”

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent has devised the disputed domain name by combining two trade marks as one word. The disputed domain name resolves to a website which offers services similar to those of the Complainant. The Complainant’s TOEFL trade mark is clearly projected on the website of the Respondent and used in a trade mark sense without the authorization of the Complainant. The Panel reiterates the fact that the Respondent’s website bears a disclaimer which acknowledges the Complainant’s rights in the TOEFL trade mark is in itself evidence of the Respondent’s knowledge of the Complainant and its rights in the TOEFL trade mark. The Respondent’s registration and use of the disputed domain name thus attracts Internet users to the Respondent’s “www.ieltstoefl.zoomshare.com” website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Such registration and use of the disputed domain name constitutes registration and use in bad faith within the meaning of the Policy.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

The Panel also finds that the Respondent’s argument as to its website being on a beta mode is not acceptable as the Respondent is the registrant of the disputed domain name which resolves to the “www.ieltstoefl.zoomshare.com” website. Hence the Respondent is liable for the contents of the website and it cannot shield itself from liability on such basis.

7. Decision

The Complainant has requested for the disputed domain name to be transferred to it. The Panel cannot order transfer of the disputed domain name because the disputed domain name comprises trade marks of the Complainant and a third party. Therefore, the appropriate remedy for this administrative proceeding would be cancellation of the disputed domain name.

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 name, <ieltstoefl.com> be cancelled.

Hariram Jayaram
Sole Panelist
Dated: December 31, 2010