Educational Testing Service v. Joe Lee and Brian Wong
Claim Number: FA1101001367650
Complainant is Educational Testing Service (“Complainant”), represented by Peter D. Vogl of Jones Day, New York, USA. Respondents are Joe Lee (“Respondent Lee”), Alberta, Canada and Brian Wong (“Respondent Wong”), Alberta, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <托福.com> and <toeflchina.com> (the “Disputed Domain Names” in the singular or plural as required by context), registered with DOTSTER.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2011; the National Arbitration Forum received payment on January 17, 2011.
On January 14, 2011, DOTSTER confirmed by e-mail to the National Arbitration Forum (the “Forum”) that the domain names <托福.com> [PUNY CODE translation <xn--xpus03c.com>] and <toeflchina.com> are registered with DOTSTER and that Respondents are the current registrants of the domain names, Respondent Lee for <托福.com> and Respondent Wong for <toeflchina.com>. DOTSTER has verified that Respondents are bound by the DOTSTER registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 25, 2011, Complainant filed a supplemental complaint in which the original Respondent, Netego DotCom, was withdrawn, and Respondent Lee and Respondent Wong were added and alleged to be aliases of Netego DotCom.
On January 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2011 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@xn--xpus03c.com, postmaster@toeflchina.com. Also on January 27, 2011, the Written Notice of the Complaint, notifying Respondents of the email addresses served and the deadline for responses, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.
Timely Responses were received and determined to be complete on February 17, 2011.
Complainant submitted an Additional Submission on February 22, 2011.
Respondents submitted an Additional Submission each on February 26, 2011.
On February 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of numerous trademark registrations for the mark TOEFL in the United States, Canada, China, and numerous countries throughout the world. This mark applies to goods and services related to information manuals dealing with educational testing, and educational testing services, namely, administering tests dealing with languages, and computer programs for use in the field of language proficiency testing and test preparation. Additionally, Complainant is the owner of three registered trademarks for the mark 托福 (the Chinese characters that translate to TOEFL) in China for similar good and services.
Complainant is the largest private not-for-profit educational research and measurement institution in the world. It is 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 college and graduate school admission licenses for technical and paraprofessional occupations and teacher certifications, among other services since its formation in 1947. In 2005, Complainant launched the new TOEFL iBT test which is now delivered to test takers directly by Complainant via the Internet worldwide. In connection with the test, Complainant has developed numerous test preparation products, including print publications, CD-ROMs, computer software and online writing exercises.
Complainant’s 托福 mark is the Chinese equivalent of the trademark TOEFL. As a result of Complainant's long and prominent use of the 托福 mark for and in connection with its products and services among speakers of the Chinese language in China and worldwide, the 托福 mark has acquired recognition as identifying exclusively the products and services of Complainant, and the vast invaluable goodwill symbolized by the Mark belongs exclusively to Complainant.
Respondents Joe Lee and Brian Wong are aliases for Netego DotCom, which is the true owner of <托福.com> and <TOEFLCHINA.com>. Netego DotCom is in a registered business name under which Joe Lee and his successor in interest Netego Software, Inc., carries on business. Joe Lee is the sole shareholder, officer and director of Netego Software, Inc., a company registered in Alberta, Canada. Netego DotCom first registered <托福.com> on October 5, 2005. Joe Lee assumed the domain name from Netego DotCom on January 14, 2011, the day after complainant filed its complaint herein. Additionally, the address listed for Netego DotCom in the Whois data for the domain name <托福.com> prior to January 14, 2011 and the address listed for Joe Lee on the current Whois database for the domain name <托福.com> are identical. Finally, this transfer was not a true transfer to a new owner because the registrar would have added one year to the term of the registration, and that extension was not given here.
Upon information and belief, the current owner of the <TOEFLECHINA.com> domain name is Netego DotCom a/k/a Brian Wong. Upon information and belief the name "Brian Wong” as well as the address and phone number given for Brian Wong in the current Whois database for the <TOEFLCHINA.com> domain name are fictitious. A close examination of the data provided on the Whois registration shows this to be the case. The e-mail address provided for "Brain Wong” is actually that of one Brian Huynh. An Internet search for the listed address reflects that there is no such address. A Google search on the telephone number shows that this is actually the telephone number for M&M Meat Shop in Spruce Grove , Alberta, with no affiliation to “Brian Wong” or the provided address. Additionally, and similar to the <托福.com> Disputed Domain Name, the <TOEFLCHINA.com> Dispute Domain Name was transferred to a new owner on January 14, 2011, the day after Complainant filed its complaint herein. Finally, this was not a true transfer to a new owner because the registrar did not add an additional year to the term of the registration.
The <TOEFLCHINA.com> Disputed Domain Name is identical to Complainant‘s TOEFL trademark, with the insignificant addition of the word “China,” and the <托福.com> Disputed Domain Name incorporates claimants trademark in its entirety. As such, these Disputed Domain Names are likely to confuse consumers into believing that Respondents’ websites are affiliated with or endorsed by Complainant.
Respondents have no rights or legitimate interests in respect of either the <TOEFLCHINA.com> or <托福.com> domain names. Respondents are not licensees of, or otherwise affiliated with Complainant. Complainant has never authorized or otherwise condoned or consented to Respondents registration of either domain name. Complainant's rights to the TOEFL and 托福 Trademarks predate Respondents’ uses and registration of <TOEFLCHINA.com> and <托福.com> Disputed Domain Names. A print out of the website to which the <TOEFLCHINA.com> domain name directs shows that these Disputed Domain Name are either parked or used for pay-per-click advertising. Respondents have not made use of, or demonstrable preparations to use, either domain name in connection with a bona fide offering of goods or services, nor could respondents do so in light of the notoriety of Complainant's TOEFL and 托福 trademarks.
The domain names of <TOEFLCHINA.com> and <托福.com> should be considered as having been registered and used in bad faith. On information and belief, Respondents registered and are holding these domain names in an effort to interfere with complainants offering of goods and services by intercepting, misdirecting members of the consuming public. On information and belief, Respondents have reserved and are holding these domain names to confuse the consuming public by misdirecting consumers in search of one or more of complainant's official websites such as, <toefl.com>, <toefl.org>, and <toefl.net>, among others. Upon information and belief, Respondents have adopted and used the Disputed Domain Names in order to intentionally mislead and deceive consumers into falsely believing that Respondents, and Respondents unauthorized sites, are licensed, sponsored or approved by Complainant, or that the contents of the sites are endorsed by Complainant. The homepage to which the <TOEFLCHINA>com> Disputed Domain Name directs includes a site map that includes categories such as "Learn English" and "Online School", among other similar categories. This reference is meant to further reinforce the false suggestion that Complainant sponsors, is affiliated with, or endorses the site.
B. Respondent Wong’s Response
The <toeflchina.com> Disputed Domain Name is not identical or confusingly similar to Complainant's trademark TOEFL. Respondent Wong could not find trademark registrations for ”toeflchina” in China, Canada, Hong Kong or the United States. As such, the <toeflchina.com> Disputed Domain Name is not identical or confusingly similar to a trademark or service Mark in which Complainant has rights.
Respondent Wong does have rights or legitimate interests in the <toeflchina.com> Disputed Domain Name. He has been planning for a few years to build two language learning websites. There are numerous schools or companies in China using the word “toefl” to organize English classes; it is a common expression in connection with language schools. In furtherance of this plan, Respondent Wong has acquired the following domain names: <easychinese.com>, <daiviet.com>, and <papterking.com>, and <toeflchina.com>.
Respondent Wong has not acquired or used the <toeflchina.com> Disputed Domain Name in bad faith. He has never contacted Complainant or been contacted by Complainant concerning the Disputed Domain Names. There are no circumstances indicating that he bought the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant for valuable consideration in excess of Respondent Wong’s documented out-of-pocket costs.
C. Respondent Lee’s Response
Respondent Lee is not an alias for Netego DotCom. Respondent Joe Lee was the owner of Netego Software Inc. from October 2006 to April 2009, at which time Hoa Luu took over the company and became the sole shareholder, officer and director, which is reflected on the certificate of incorporation for the company. After the transfer the company maintained its previous address, which is the same as Respondent Lee's.
Respondent Lee is using the expression 托福 in connection with the <托福.com> website in its generic sense. 托福 Is a Buddhist term which has been used by the Chinese people for many centuries for thanking God or Buddha in keeping them safe and happy. It is like “Thanks God” or “Thanks be to God” for English speaking Christians. May people use the expression 托福 as the short form of a longer expression, which is the transliteration for the Amitabha Buddha. Most Chinese people use the expression 托福 in this way, while only a tiny fraction of the population, those planning to study or to work abroad, would identify the expression 托福 with the Complaint, and even less would elsewhere in the world outside China.
Hoa Luu of Netego Dotcom decided to let Respondent Lee acquire <托福.com> on January 10, 2011 and subsequently transferred the domain name 托福 to Respondent Lee.
Shortly after Respondent Lee acquired the domain name <托福.com>, a one page website was put up with the picture of a Buddha in the page background. A few Buddhist words and “Under Construction” was printed on the page to indicate that the site is dedicated for Buddhism studies. Respondent Lee also acquired two other websites from Netego DotCom that relate to Buddhism and linked them to the same site.
D. Complainant’s Additional Submission
Because the <TOEFLCHINA.com> and <托福.com> Disputed Domain Names changed ownership (on January 14, 2001) after Complainant’s complaint was originally filed (on January 13, 2011), Complainant filed its supplemental complaint on January 25, 2011. Complainant’s supplemental complaint included allegations and evidence that Respondents Lee and Respondent Wong are in fact aliases of the original Respondent, Net ego DotCom; this allegation and evidence was made and presented pursuant to National Arbitration Forum Supplemental Rule 4(e).
Respondent Wong admits in his response that he plans to use the <TOEFLCHINA>COM> domain for “Language learning…for English.” Complainant has prior rights to the TOEFL trademark in connection with such services and any use of the TOEFL mark by Respondent Wong is likely to cause confusion amongst consumers as to whether Complainant is the source of, a sponsor of, endorses or is otherwise affiliated with such use.
Respondent Wong provides no evidentiary support for his allegation that the expression “toefl” is used by numerous schools or companies in China to organize English classes (setting aside those who might be pretending to be Complainant).
Respondent Lee is incorrect when he asserts that the only common meaning of the expression 托福 is “Thank God” or “Thanks be to God,” and Respondent Lee mistakenly asserts that the expression 托福 is not the Chinese equivalent of TOEFL. Online dictionaries refer to 托福 as meaning Complainant’s tests. Further, the expression 托福 is recognized by the public in China as the Chinese equivalent to TOEFL. Respondent Lee is inaccurate in alleging at the expression 托福 is a popular dictionary term and a common term for everyday use; the expression 托福 is not included in popular Chinese dictionaries as a dictionary term, separate and apart from referring to Complainant. However, if even if the expression 托福 were a common term, it has acquired secondary meaning in China referencing Complainant.
Respondent Lee’s assertion that the Chinese government’s trademark department website shows more than 43 registrations of the expression 托福. This is not correct. Most of these carry the Chinese Pinyin letters for “toufu,” not “toefl.” And, in any case, the possible rights of others are not relevant to this complaint between Complainant and Respondents.
The <TOEFLCHINA.COM> site no longer resolves to any active website, but before the complaint herein, the site did contain content that capitalized on and benefited from Complainant’s goodwill in the TOEFL mark. Respondent Lee asserts that the <托福.com> website is a “Buddhism related website” dedicated to Buddhism studies; however, prior to the complaint herein, the site was most certainly used by Respondent Lee to capitalize on and benefit from Complaint’s goodwill in the TOEFL and 托福 marks.
E. Respondent Lee’s Additional Submission
Complainant’s additional submission is not well taken and should be disregarded. There is no provision in the ICANN UDRP Policy or Rules allowing for a “Reply.” Rule 12 specifically states that either UDRP process involves only a “Complaint” and a “Response,” with the possibility of the Panel “requesting” further statements or documents from either of the parties.”
Respondent Lee’s intention for the <托福.com> website has been, since the time he acquired it and before the Forum received the Complaint herein, to use as a site dedicated to Buddha and Buddhist teachings, as demonstrated by the page which was put up on the site shortly after Respondent Lee acquired the site.
Complainant’s point about the meaning of the expression 托福 is not correct. It does mean “thanks to someone’s blessing and I get lucky.” This is the definition given by the most authoritative dictionary on Chinese language in China, which is the Chinese Language Large Dictionary. Complainant’s reliance on search engine dictionaries is fatally deficient. Further, Complainants’ characterization of Respondent Lee’s point about the meaning of the expression 托福 misses the point. Complainant characterizes Respondent Lee’s point as being that the only common meaning of the expression 托福 is “Thank God’ or “Thanks be to God.” This is not correct. Respondent Lee’s previous statement was that the expression 托福 is a Buddhist term which has been used by the Chinese people for many centuries to mean “Thanks God or Buddha in keeping them safe and happy.” It is similar to (although not identical to) “Thank God” or “Thanks be to God” for English speaking Christians.
F. Respondent Wong’s Supplemental Response
“I just bought this domain name a little more than 2 months ago and I have been busy since then. I do not know much about building website so I hire a programmer in Edmonton to take care the domain name and design the website. Nothing I have done to damage the complaint’s trademark.”
1) Complainant is the owner of a number of trademark registrations for the marks TOELF and 托福.
2) Respondent Lee is the Registrant of the Disputed Domain Name <托福.com>, and he became the Registrant on January 14, 2011.
3) Respondent Wong is the Registrant of the Disputed Domain Name <toeflchina.com>, and he became the Registrant thereof on January 14, 2011.
4) Prior to the time Respondent Lee and Respondent Wong became the Registrants of the Disputed Domain Names <托福.com>, and <toeflchina.com>, respectively, the Registrant for each of these Disputed Domain Names was Netego DotCom.
5) Prior to the time Respondent Lee and Wong became Registrant of the Disputed Domain Names as noted, each of the Disputed Domain Names directed to websites that were pay-per-click websites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Issue #1 – Complainant’s Additional Submission Filed February 22, 2011
Respondent Lee objects to Complainant’s Additional Submission as being filed without a specific request from the Panel for an additional submission. He points to UDRP Rule 12, which reads: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” Further, Respondent Lee argues that the additional submission filed by Complainant is an attempt to make corrections to a deficient complaint.
Whereas Respondent Lee might be correct in a situation in which the involved administrator did not have a relevant supplemental rule, the Forum does have a relevant Supplemental Rule, which is Rule 7. This Rule allows parties to submit additional written statements and documents to the Forum. If a party does so, the other parties thereby gain the right to file their own additional written statements and documents, provided however that no additional material may amend a complaint or response.
As noted, Respondent Lee objects that Complainant’s Additional Submission does attempt to amend the complaint: however, the Panel does not read Complaint’s Additional Submission as doing so.
As such, the Panel has accepted and given due consideration to Complaint’s Additional Submission. The Panel has also accepted and given due consideration to the additional submissions filed by Respondent Wong and Respondent Lee.
Preliminary Issue #2 – Multiple Respondents:
The Complaint was originally filed against Netego DotCom because as of January 6, 2011, the Whois database information for the Disputed Domain Names showed Netego DotCom as the Registrant. Complainant filed its original complaint on January 13, 2011, and on January 14, 2011 (per the Whois records) the <TOEFLCHINA.com> Disputed Domain Name was transferred to Respondent Wong and the <托福.com> Disputed Domain Name was transferred to Respondent Lee. Thereafter, Complainant filed a supplemental complaint dropping Netego DotCom as a named Respondent and adding allegations, arguments, and evidence that the Respondent Wong and Respondent Lee are in fact aliases of Netego DotCom.
Respondent Wong argues that he is not an alias for Netego DotCom. He obtained the Disputed Domain Name in approximately December 2010 and before the present action was initiated. Thereafter, he hired a consultant to handle the matter while he was away on vacation, and he was not aware of when the actual transfer took place. Respondent Lee does not address the issue directly, but does argue and provide evidence that he is no longer the owner of Netego DotCom.
Complainant argues that two types of evidence supports a finding of an alias relationship: 1) incorrect and/or fictitious information being maintained by a registrant on the Whois database; and 2) the same or similar administrative contact information of the various subject domain names. Other panels have so held. See Yahoo!, Inc., v. Soksripanich & Others, D2000-1461 (WIPO Jan.29, 2001) (finding multiple aliases to be the same respondent when the administrative contact information of the various subject domain names was the same or quite similar); see also Café Intermezzo, Inc., v. R. Smith, D2004-0372 (WIPO Aug. 13, 2004) (decision rendered against multiple aliases where fictitious information was given for Registrant’s contact information with Registrar.).
Complainant asserts that both factors are present in the present action. The address for Respondent Lee and Netego DotCom is the same, and the contact information for Respondent Wong is simply wrong, and therefore fictitious.
Each Respondent presents an explanation in his behalf. Respondent Wong asserts that his consultant made a mistake and perhaps used his own contact information, and Respondent Lee admits that his address is the same as Netego DotCom’s, but this does not mean that the company was in fact transferred to a third party.
Whereas these explanations seem innocent enough and well within the normal meanderings of life, two facts stand out in sharp contrast. Both of these transfers took place on the day after Complainant filed its Complaint herein, and both took place on the same day. If these were independent processes within the normal flow of affairs, one would expect to see two different dates of transfer, and further, one would not expect to see these transfers take place on the day after a complaint was filed. Further, it is not credible that this would be the case but for an intention to avoid or disrupt this proceeding.
As such, the Panel finds that these transfers were coordinated and done intentionally to avoid or disrupt this proceeding. As such, the Panel finds that Respondents Lee and Wong are aliases of Netego DotCom and of each other for purposes of this proceeding. Hereinafter, both Respondents may be referred to together as “Respondents.”
Pursuant to policy Paragraph 4(a)(i) a complainant must have rights in a trademark and the disputed domain name must be confusingly similar thereto.
One of the ways in which the Complainant can demonstrate rights in a trademark is to show ownership of a registration in a national trademark office, which need not be within the same country as a respondent is located. See Miller Brewing Co., V. Miller Family, FA 104177 Nat. Arb. Forum Apr. 15, 2002)(finding that the complainant had establish rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)(finding that the complainant's federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS marks were adequate to establish its rights in the mark pursuant to policy ¶ 4(a)(i)); see also KCTS Television v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001)(holding that it does not matter for the purpose of ¶ 4(a)(i) of the Policy whether the complainant's mark is registered in a country other than that of the respondents place of business).
Confusing similarity is determined at the level of the trademark and the disputed domain name, and confusing similarity is determined by way of a simple comparison of the two. For purposes of making the comparison, generic top-level domain identifiers and minor variations, such as the addition or subtraction of a single character, are ignored. See Islewoth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)(“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a policy ¶ 4(a)(i) analysis."). Other additional content can be disregarded depending on the circumstances, including generic territorial designations. See Trip Network Inc., v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27 2001)(finding that the addition of geographic terms, such as "cancun" to the end of the CHEAPTICKETS Mark in the<cheeapticketscancun.com>, <cheapticketscancun.bix>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under policy ¶ 4(A)(i)).
In the instant administrative action, Complainant has submitted documentation to show that it owns several trademark registrations for its TOEFL trademark, including registrations with the Canadian Intellectual Property Office, the Chinese State Intellectual Property Office and United States Patent and Trademark Office. Complainant has also submitted evidence to show that it owns three trademark registrations with the Chinese State Intellectual Property Office for the 托福 trademark. These showings are sufficient to establish rights in the TOEFL and 托福 trademarks for purposes of the Policy.
When one compares Complainant’s trademarks 托福 to Respondents’ domain name <托福.com>, one can readily see that these are identical with the exception of the generic top-level domain identifier ". com,” which as has been said, is ignored.
When one compares Complainant’s trademark TOEFL with Respondents’ domain name <TOEFLCHINA.com>, one can readily see that these are identical except for two things, the generic top-level domain identifier and the word "china." As noted, the top-level domain identifier is ignored. As is further noted above, the word “china”, a generic territorial designation, is also ignored.
As such, Complainant has established the first element of the Policy.
Rights or Legitimate Interests
Policy paragraph 4(c) sets forth three non-exclusive conditions under which a respondent would have right or legitimate interests in a disputed domain name. The first condition is when a respondent is using the disputed domain name in furtherance of a bona fide offering of goods or services. The second condition under which a respondent would have rights or legitimate interest in a disputed domain name is when a respondent has been commonly known by the disputed domain name. The third condition under which a respondent would have rights or legitimate interests is where the respondent is making a legitimate noncommercial or fair use of the dispute domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish a trademark or service mark at issue.
Under this element of the Policy, a complainant has the burden to make a prima facie showing, which burden is light, and then the burden shifts to the respondent. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
It is important to note that the first condition noted above, that a respondent would have rights or legitimate interests in the disputed domain name when used in furtherance of a bona fide offering of goods or services, has a significant exception. This exception is that a bona fide offering of goods or services does not include a use of the disputed domain that is found to have been in bad faith under Policy ¶ 4(a)(iii)/4(b), the third element of the Policy. This is true even when a disputed domain name might otherwise be used in connection with goods and services that are themselves otherwise legitimate. See Disney Enterss., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that Respondent’s diversionary use of Complainant’s marks to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Many panels conduct this analysis under the analysis of the second element of the Policy, Policy ¶ 4(a)(ii)/4(c); however, this Panel believes that where it is relevant, it is better to leave the bad faith analysis to the analysis of the third element of the policy, Policy ¶ 4(a)(iii)/4(b).
In the present administrative action, it is clear that neither Respondent is commonly known by the name “Toefl” or “托福.” Respondents are commonly known as Joe Lee and Brian Wong.
Complainant has demonstrated that Respondent’s were using the Disputed Domain Names for pay-per-click sites prior to the date on which the Complaint herein was filed and before the Disputed Domain Names were transferred, which is a commercial purpose. This is sufficient to establish that Respondent is not using the Disputed Domain Name for non-commercial or fair use purposes.
Complainant further demonstrated that the Disputed Domain Names are identical or confusing similar to Complainant’s trademarks and that the Disputed Domain Names were used for pay-per-click websites. The intention of Respondent’s with respect to this use could certainly have been to attract Internet users to its website, and if so (pending further review with respect to the bad faith element of the Policy, discussed below), Respondent’s use of the Disputed Domain Names would not be in connection with a bona fide offering of goods or services.
This showing is sufficient to carry Complainant’s burden for purposes of this element of the Policy.
Respondent’s assert that they recently acquired the Disputed Domain Names and that they are making preparations to use them in connection with bona fide offerings of goods or services. Respondent Wong is intending to use the <TOEFLCHING.COM> Disputed Domain Name to build two websites for language learning. In connection with this effort he is also acquired the following other domain names <easychinese.com>, <daivIet.com>, and <paperking.com>. Respondent Lee is intending to create a website dedicated to Buddha and Buddhist teachings. Both of these intended uses are otherwise legitimate.
However, Policy ¶ 4(c)(i) includes a threshold introductory clause "before any notice to you of the dispute… your demonstrable preparations to use… The domain name…" In the instant action, Complainant has demonstrated that Respondents acquired the Disputed Domain Names on the day after the complaint was filed. The Panel believes and so finds that as a consequence, Respondents’ stated intended uses were developed after notice of the dispute, and therefore Respondents’ actions do not fall within the scope of Policy ¶ 4(c)(i).
This leaves the Panel with the only intended use by Respondent’s as being the actual use demonstrated by Complainant, namely the operation of a pay-per-click websites. The use of the Disputed Domain Names in connection with pay-per-click websites could constitute a bona fide offering of goods and services, provided that the uses are not also in bad faith.
As noted below, Respondent’s use of the <托福.com> Disputed Domain Name is not in bad faith, and therefore Respondent’s use thereof is in connection with a bona fide offering of goods or services, and Respondent’s use of the <toeflchina.com> Disputed Domain Name is in bad faith, and therefore Respondent’s use thereof is not in connection with a bona fide offering of goods or services.
As such, Complainant has established this element of the Policy with respect to <toeflchina.com> Disputed Domain Name and has not established this element of the Policy with respect to <托福.com> Disputed Domain Name.
Registration and Use in Bad Faith
Policy paragraph 4(b) sets forth four non-exclusive conditions under which a respondent’s registration and use of a disputed domain name would be in bad faith. The first condition is when the respondent is using a disputed domain name under circumstances indicating that a respondent has registered or acquired the dispute domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your document out-of-pocket costs directly relate to the Disputed Domain Name.
The second condition is when a respondent has registered a disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark, in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
The third condition is when a respondent has registered a disputed domain name primarily for the purpose of disrupting the business of a competitor.
The fourth conditions is when a respondent, by using a disputed domain name, 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 your website.
Of these four conditions, Complainant has raised only the last, which is addressed below. The others will not be considered.
Complainant argues that Respondents are attempting to attract Internet users to its website because its marks were known to Respondents and because they are being used for pay-per-click websites showing links to other terms such as “Online School,” “Learn English,” “High School Diploma Online,” “GMAT,” “Colleges,” “Teaching Jobs,” “Online Computer Training,” “Online Training” and other pay-per-click links, such as “Real Estate Training” and “GED Test” among many others.
Complainant further argues that Respondents are not using the Disputed Domain Names, and this is sufficient to establish bad faith.
The <toeflchina.com> Disputed Domain Name is being used in a way that supports a finding that the Respondents are attempting to attract Internet users to their corresponding website, for Respondent’s commercial gain, by creating a likelihood of confusion with Complainant’s mark. The screen shot of Respondents’ website clearly shows the links noted above to “Online School,” “Learn English,” etc. These listings are the dominant feature of the screen shot and as such are the purpose of the website. It is not plausible for this website to have this purpose and Respondent’s not be attempting to attract Internet users to its website by creating a likelihood of confusion with Complaint’s mark. Otherwise, the website would involve flowers, or automobiles, or a myriad of other subjects. As has been noted, the website is a pay-per-click site and is therefore commercial and for Respondents gain.
The same is not true for the <托福.com> Disputed Domain Name and corresponding website. This website shows entries for “Online Computer Training,” “Stock Trading,” “Online Training,” “Stock Market Investing,” “Home Security,” and several other entries. These entries do relates to a myriad of other subjects, and these entries do not support an inference that Respondents are intentionally attempting to attract Internet users by creating a likelihood of confusion with the Complaints 托福 mark.
Complainant also argues that the use of its trademark for a website that is not active is sufficient to establish bad faith. Other panels may have reached this conclusion, but this Panel does not believe that a pay-per-click site is necessarily a non-use or, ipso facto, a bad faith use, and this Panel declines to so hold.
As such, Complainant has established this element of the Policy with respect to the <toeflchina.com> Disputed Domain Name, but not the <托福.com> Disputed Domain Name.
DECISION
Having established all three elements required under the ICANN Policy with respect to the <toeflchina.com> Disputed Domain Name, the Panel concludes that relief shall be GRANTED with respect thereto, and having not established all three elements required under the ICANN Policy with respect to the <托福.com> Disputed Domain Name, the panel concludes that relief shall be DENIED with respect thereto.
Accordingly, it is Ordered that the <toeflchina.com> domain name be transferred from Respondents to Complainant
Kendall C. Reed, Panelist
Dated: March 13, 2011
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