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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Jan Everno, The Management Group II

Case No. D2018-0895

1. The Parties

The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America (“United States”), represented by Jones Day, United States.

The Respondent is Jan Everno, The Management Group II of Grandville, Michigan, United States.

2. The Domain Name and Registrar

The disputed domain name <wikitoeflibt.net> is registered with DomainSails.net LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2018. On April 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2018, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2018.

The Center appointed William F. Hamilton as the sole panelist in this matter on June 6, 2018. 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 an educational testing and assessment service. The Complainant develops, administers, and scores more than 50 million tests per year in over 180 countries at over 9,000 locations. The Complainant’s “Toefl” examination is designed to measure of the English proficiency of persons whose native language is not English. The examination has been in use since 1964 and has been taken by more than 30 million students. The TOEFL mark was registered by the Complainant with the United States Patent and Trademark Office on October 3,1978, registration no. 1103427. Additionally, the Complainant owns many other registered marks that incorporate TOEFL. The Complainant began offering the TOEFL iBT test via the Internet in 2005. The Complainant thereafter obtained a registration for the mark TOEFL IBT with the United States Patent and Trademark Office on May 3, 2011, registration no. 3953133. The Complainant’s family of TOEFL marks will be collectively referred to herein as the “Mark”. The Complainant also owns, operates, and utilizes many domain names that incorporate the Mark including <toefl.com> registered in 1994.

The Respondent registered the disputed domain name on December 27, 2017. Currently, the disputed domain name resolves to a website displaying pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name wholly incorporates the Mark and merely adds the generic prefix “wiki.” The Complainant asserts that the Respondent has no rights or legitimate interests in the Mark as the Complainant has never authorized the Respondent to utilize the Mark or the disputed domain name and because the Respondent has not conducting any bona fide business under the Mark or the disputed domain name. Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith because it resolves to a pay-per-click website offering misbranded services featuring the Complainant’s Mark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.

The disputed domain name is confusingly similar to the Complainant’ Mark because the disputed domain name wholly adopts the Complainant’s registered TOEFL IBT mark, merely adding the prefix “wiki.” The addition of the term “wiki” does not prevent the confusing similarity arising from the incorporation of the Complainant’s Mark in its entirety. Educational Testing Service v. Educational Training Service, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., WIPO Case No. D2004-0324; Educational Testing Service v. Truong Huy / Bill Huy / Huy Truong, toefitestonline / Troung Huy,Think Big / Huy, Think Big, WIPO Case No. D2017-2547.

The Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has specifically disavowed providing the Respondent with any permission or license to use the Mark or the disputed domain name. The Respondent has not come forth to demonstrate any bona fide activities or business associated with the Mark or the disputed domain name. There is no evidence or indication that the Respondent was ever commonly known by the disputed domain name.

The Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For a number of reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.

1. The Mark is an unusual acronym. It is inconceivable that the Respondent would stumble by chance on this unique collection of letters that compose the Mark and then attach as a prefix the expression “wiki” to those letters. The most modest level of due diligence before registering the disputed domain name would have disclosed the Complainant and the Mark. Educational Testing Service v. Eunho Hwang, WIPO Case No. D2017-0993; Educational Testing Service v. Mohamed Ahmed Aljarwan, WIPO Case No. D2008-1073.

2. The registration of a well-known trademark or service mark as a domain name is a strong indicator of bad faith registration and use. Educational Testing Service v. Mohamed Ahmed Aljarwan, WIPO Case No. 2008-1073.

3. The disputed domain name’s resolution to a pay-per-click website where the Complainant’s Mark is used to promote commercial services is further strong evidence of bad faith registration and use. Groupon v. Ezriel Duchman / Oneandone Private Registration, WIPO Case No. D2014-1985.

The Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.

7. Decision

For 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 <wikitoeflibt.net> be transferred to the Complainant.

William F. Hamilton
Sole Panelist
Date: June 13, 2018

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