WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. santa riiid, Riiid

Case No. D2020-2634

1. The Parties

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

The Respondent is santa riiid, Riiid, Republic of Korea, represented by Dodam IP Law Firm, Republic of Korea.

2. The Domain Names and Registrars

The disputed domain names <santafortoeic.com> (“the first disputed domain name”), <santa-toeic.com> (“the second disputed domain name”) and <santatoeic.com> (“the third disputed domain name”) are registered with Gandi SAS (the “Registrar Gandi”).

The disputed domain names <santa-toeic.co> (“the fourth disputed domain name”) and <santatoeic.co> (“the fifth disputed domain name”) are registered with CCI REG S.A. (the “Registrar CCI”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2020. On October 9, 2020, the Center transmitted by email to the Registrar Gandi and the Registrar CCI requests for registrar verification in connection with the disputed domain names. On October 12, 2020, the Registrar Gandi transmitted by email to the Center its verification response disclosing registrant and contact information for the first, second and third disputed domain names, which differed from the named Respondent and contact information in the Complaint. On October 15, 2020, the Registrar CCI transmitted by email to the Center its verification response disclosing registrant and contact information for the fourth and fifth disputed domain names, which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on October 16, 2020, providing the registrant and contact information disclosed by the Registrars Gandi and CCI, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 26, 2020.

The Center verified that the Complaint together with the amendment to 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 November 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2020. The Response was filed with the Center on December 2, 2020.

The Center appointed Antony Gold as the sole panelist in this matter on December 9, 2020. 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 substantial, non-profit, educational testing and assessment organization, with its headquarters in the United States. Its products and services are used to measure knowledge and skills, promote learning and educational performance and support educational development in multiple countries. The Complainant develops, administers and scores more than 50 million tests each year in over 180 countries. One of its tests is the TOEIC test, TOEIC being an acronym for Test of English for International Communication. This test has been administered by the Complainant since 1979 to measure English language proficiency. TOEIC test scores are presently used by over 14,000 organizations, government agencies and English-language learning programs across more than 160 countries. Many TOEIC-related products are offered for sale by the Complainant and its business partners.

The Complainant has registered numerous trade marks worldwide to protect its use of TOEIC including, by way of example only;

- United States trade mark, registration number 1,191,669, registered on March 9, 1982, for TOEIC in classes 16 and 42;
- Republic of Korea trade mark, registration number 40-83993, registered on September 21, 1982 for TOEIC in class 16.

In addition, the Complainant owns many domain names which incorporate its TOEIC trade mark, including <toeic.com>, <toeic.org> and <toeic.net>. These domain names redirect to a website location at “www.ets.org/toeic” where the Complainant provides information about the TOEIC test and promotes goods and services under the TOEIC marks.

The Respondent is a company based in the Republic of Korea. It has developed, and now promotes, a software program, made available as an app on both the Apple App Store and Google Play, named “Santa Toeic”. This is intended to assist users in learning the material necessary to pass the Complainant’s TOEIC test.

The disputed domain names were registered on October 11, 2015. The third disputed domain name has previously resolved to a website, which promoted the Respondent’s “Santa Toeic” product. The first, second and fourth disputed domain names have always been inactive. At the time of filing the Complaint, the third and fifth disputed domain names redirected to another website operated by the Respondent at “www.aitutorsanta.com”. As at September 2020 this website was promoting the Respondent’s product with explanatory narrative that it was an AI, self-study solution for the TOEIC test. The brand promoted on the website primarily “Santa” rather than “Santa Toeic”. However, the link with the Complainant’s test is clear with, for example, use of the strapline; “Santa’s goal is only one, to clear the TOEIC from your life with score achievement”.

The Complainant has provided English translations of extracts of correspondence between the parties’ legal representatives from which it is evident that, from at least early 2020, the Complainant has been seeking to regulate, modify and restrict the Respondent’s use of its TOEIC trade marks on both the Apple App Store and Google Play, in order to ensure that it is clear that the Respondent’s products are not endorsed or approved by the Complainant. The Complainant has also requested on several occasions that the Respondent cancel its registration of the third disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant refers to its extensive portfolio of TOEIC trade marks, full details of two of these marks having been set about above, and says that it has spent considerable time, effort and money, over a period in excess of 40 years, researching and developing products and services that are provided under this mark. The disputed domain names incorporate the Complainant’s mark in its entirety. The Complainant’s mark is distinctive and there is therefore sufficient similarity between the mark and the disputed domain names as to render them confusingly similar, regardless of the presence of other terms in the disputed domain names. Moreover, the addition of the term “santa” to the Complainant’s mark does nothing to mitigate the risk of confusion.

The Complainant asserts also that the Respondent has no rights or legitimate interest in respect of the disputed domain names. The Complainant is required only to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of proof to the Respondent. The Respondent has not used or made any demonstrable preparations to use certain of the disputed domain names in connection with a bona fide offering of goods and services. The passive holding of a domain name does not amount to use in connection with a bona fide offering of goods and services; see Société nationale des télécommunications: Tunisie Telecom v. Ismael Leviste, WIPO Case No. D2009-1529. There are no websites located at the first, second and fourth domain names. The third and fifth disputed domain names redirect to the Respondent’s website at “www.aitutorsanta.com”. Simply using a domain name to redirect Internet users to other websites does not confer rights or legitimate interests on a respondent.

The Respondent is not commonly known by any of the disputed domain names. It is not a licensee or otherwise affiliated with the Complainant, which has never authorized or otherwise condoned or consented to the Respondent’s registration of the disputed domain names or to its use of the TOEIC mark as part of a trade name. Furthermore, the Respondent has not used the disputed domain names for any legitimate noncommercial or fair use purpose. Rather, it registered and formerly used the disputed domain names to trade off the Complainant’s goodwill by using the TOEIC mark to promote its own test preparation goods and services. Specifically, the Respondent has been using the Complainant’s mark in the title of its websites and in its trade name to promote the sale of artificial intelligence products and services which are designed to help customers improve their TOEIC test scores and which compete with the Complainant’s business. The Respondent’s operation of websites that formerly featured the Complainant’s TOEIC mark to misleadingly divert consumers for commercial gain is an illegitimate, commercial and unfair use of the disputed domain names and therefore establishes a prima facie case that the Respondent lacks rights or legitimate interests in them.

Lastly, the Complainant says that the disputed domain names were registered and are being used in bad faith. The Respondent had constructive notice of the Complainant’s TOEIC mark at the time it registered and used the disputed domain names, having regard to the Complainant’s worldwide trade mark registrations and the fame of the TOEIC mark, which had been used for almost 40 years before the Respondent registered the disputed domain names in October 2015. Furthermore, the Respondent also clearly knew of the Complainant’s trade mark rights at the time of registration and use, given its use of the TOEIC mark in reference to the Complainant’s TOEIC test. Indeed, it has demonstrated bad faith by intentionally attempting to attract, for commercial gain, Internet users to websites previously associated with the disputed domain names by creating a likelihood of confusion with the Complainant’s TOEIC mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the Respondent’s products and services offered on those websites.

Prior UDRP panels have found that the use of a domain name to attract user to a website to sell related products or services is in bad faith. The Respondent’s use of the third and fifth disputed domain names to redirect Internet users to another website operated by the Respondent is similarly in bad faith. Moreover, the Respondent continues to use its former “SANTA TOEIC” trade name in the Republic of Korea to market its TOEIC-related test preparation products and services, which is likely to mislead consumers that its products and services are authorized by, or associated with, the Complainant.

Furthermore, the Complainant repeatedly warned the Respondent that its conduct violates the Policy and infringes its rights in its TOEIC mark. Whilst the Respondent has changed the title of its current website located at www.aitutorsanta.com and disabled the website formerly located at the third disputed domain name, it continues to aggressively promote and sell its products under the name “Santa Toeic”. The Respondent’s failure to comply with requests by the Complainant that it transfer the disputed domain names to it lends additional support to a bad faith finding.

B. Respondent

The Respondent did not file a substantive response. However, the Center has received an email from the Respondent’s representatives, dated December 2, 2020, indicating that the Respondent has blocked access to the first, second and fourth disputed domain names and that, in relation to the third and fifth disputed domain names “we will take a measure to ensure that there will not be any contents shown by the end of December 2020”. On December 24, 2020, the Respondent’s representative submitted an email to the Center stating: “our client does not want to transfer the domains names. So, they will take action by the end of 2020 to stop using the trademark in all the seven [sic] domain names as suggested before”.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided details of the many registered trade marks it owns for TOEIC, which establish its rights in this mark.

As a technical requirement of registration, the generic Top Level Domain (“gTLD”) and country code Top Level Domain (“ccTLD”), that is “.com” and “co” respectively in the case of the disputed domain names, are typically disregarded when assessing confusing similarity. The only difference between the Complainant’s TOEIC mark and the disputed domain names is the addition of a prefix comprising either “santafor” or “santa”, which in the case of the second and fourth disputed domain names is followed by a hyphen. So far as the hyphen is concerned, the addition of a typographical symbol is of negligible significance when applying the test of confusing similarity. Nor do the additional words “santa” or “santafor” prevent a finding that the disputed domain names are confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

The Complainant’s TOEIC trade mark is recognizable within each of the disputed domain names and the Panel accordingly finds that the disputed domain names are confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods and services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name.

The first, second and fourth disputed domain names have always been inactive. In this context, inactivity does not amount to use of the disputed domain names in connection with a bona fide offering of goods and services. Turning next to the third disputed domain name and dealing first with the period during which it resolved directly to a website promoting the Respondent’s “Santa Toeic” product, it is evident from the Complainant’s submissions that the Respondent’s use of the Complainant’s TOEIC mark was without its consent and that the Respondent website’s was apt to confuse Internet users into thinking that the Respondent was authorized by the Complainant to use its mark and to provide goods and services associated with the TOEIC test. Such use does not comprise a bona fide offering of goods and services. Similarly, the more recent use of both the third and fifth disputed domain names to redirect to the Respondent’s website at “www.aitutorsanta.com” which offers completing goods and services to those of the Complainant does not amount to bona fide use; see Canva Pty Ltd v. Domain Administrator, WIPO Case No. D2020-1208.

The second and third circumstances under paragraph 4(c) of the Policy are inapplicable; there is no evidence that the Respondent is commonly known by any of the disputed domain names and the use to which the disputed domain names have been put, has been commercial in character and does not constitute fair use. Moreover, the fact that the Respondent has registered multiple domain names incorporating the Complainant’s mark points against nominative or fair use of the disputed domain names; section 2.8.1 of the WIPO Overview 3.0 deals with the position of resellers, with which the facts of this case have some parallels, and explains that one of the factors which would point against fair use by a respondent is if it has attempted to “corner the market in” domain names which reflect the trade mark.

Furthermore, as explained at section 2.5.1 of the WIPO Overview 3.0; “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.

Lastly, the Panel notes that, in its communications with the Complainant’s representatives and the Center, the Respondent’s representatives have not suggested at any point that the Respondent has a right or legitimate interest in any of the disputed domain names.

For all of the above reasons, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

Having regard to the use to which the Respondent has put, at least, the third disputed domain name it is clear that the Respondent was aware of the Complainant and its rights in TOEIC trade mark as at the date of registration of the disputed domain names. Furthermore, as explained at section 3.1.4 of the WIPO Overview 3.0, “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” On this basis, the Panel finds all the disputed domain names to have been registered in bad faith.

The inactive status of the first second and fourth disputed domain names does not prevent a finding of bad faith use under the doctrine of passive holding. As explained at section 3.3 of the WIPO Overview 3.0: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.

Applying these criteria to the circumstances of this case, at least three of them are fulfilled, namely; (i) the Complainant’s TOEIC trade mark is distinctive and the Complainant has acquired substantial repute in this mark over many years; (ii) the Respondent has not provided any evidence of any actual or contemplated good faith use by it of the disputed domain names; (iii) it is implausible to conceive of any good faith use to which the disputed domain names might be put by the Respondent. For these reasons, the Panel accordingly finds the first, second and fourth disputed domain names to have been used in bad faith.

Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

The use of the third and fifth disputed domain names to redirect to the Respondent’s own website comprises circumstances similar to those described at paragraph 4(b)(iv) of the Policy. There is little substantive difference in whether the third and fifth disputed domain names resolve directly to their own websites or redirect to a third website under the control of the Respondent because, in both cases, the Complainant’s mark has been used as bait within the disputed domain names to attract Internet users to a website operated by the Respondent. That website is apt to mislead Internet users as to whether the Respondent’s products are authorized or approved of by the Complainant in substantially the same way as if the third and fifth disputed domain names resolved to it directly. See also Section 3.1.4 of the WIPO Overview 3.0, which comments that, among the evidence that points to bad faith under paragraph 4(b) of the Policy, is “[…] redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer”. See also, by way of example, Labrador II, Inc. v. Viva La Pets Inc., WIPO Case No. D2016-0010. For these reasons, the Panel finds the third and fifth disputed domain names to have been used in bad faith.

The Panel adds, finally, that, the claim made by the Respondent’s representatives that access has been blocked to the first, second and fourth disputed domain names and that, in relation to the third and fifth disputed domain names “we will take a measure to ensure that there will not be any contents shown by the end of December 2020” is irrelevant. It provides no guarantee at all that the conduct of the Respondent about which the Complainant has complained will not resume, nor does it justify the registration or use by the Respondent of any of the disputed domain names.

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 names, <santafortoeic.com>, <santa-toeic.co>, <santatoeic.co>, <santa-toeic.com> and <santatoeic.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: December 30, 2020