Educational Testing Service v. Web Administrator
Claim Number: FA 1102001372778
Complainant is Educational Testing Service (“Complainant”), represented by Peter D. Vogl of Jones Day, New York, USA. Respondent is Web Administrator (“Respondent”), Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <托福考试.com> [xn--xpus03cvre3un.com], registered with GoDaddy.com, Inc.
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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2011; the National Arbitration Forum received payment on February 14, 2011.
On February 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <托福考试.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 February 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@xn--xpus03cvre3un.com. Also on February 16, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 7, 2011.
Complainant filed an Additional Submission that was received by the Forum on March 11, 2011. It was timely under the Forum’s Supplemental Rule 7.
On March 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is the owner of numerous world-wide registrations of the TOEFL mark and asserts also that it has had common law rights in the mark since at least 1964. Complainant also owns registrations for numerous domain names that incorporate the mark. Complainant contends that it has developed and administered tests for use in measuring abilities of applicants for Americans and citizens of other countries seeking college and graduate school admission, occupational licensing, and teacher certification in more than 180 countries at more than 9,000 locations. Testing sometimes includes evaluation of English language proficiency of foreigners. Complainant asserts that it also markets test preparation products and services.
Complainant alleges that the 托福 mark is the Chinese equivalent of the TOEFL mark, which is unique and exclusively owned by Complainant and well known within the United States and China. Complainant contends that Respondent’s domain name <托福考试.com> is essentially identical and confusingly similar to Complainant’s 托福 mark.
Complainant further contends that Respondent has no rights or legitimate interests in the <托福考试.com> domain name and that Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent, identified only as a web administrator with an address in Taiwan, denies that its domain name has any relationship to Complainant or Complainant’s TOEFL mark. Respondent contends that the disputed domain name <托福考试.com> is comprised of generic words and thus cannot be deemed identical or confusingly similar to Complainant’s mark. Respondent also contends that the term 托福考试 really means “Thanks to you (for helping me with) the exam,” “Wish me luck on the exam,” or “I did alright on the exam.” Respondent contends Chinese speakers would give the terms this meaning and not associate the domain name with Complainant. Respondent thus asserts rights and legitimate interests in the domain and denies that its registration and use was in bad faith. Respondent denies having any knowledge of Complainant’s mark and also denies having used the disputed domain name to obtain commercial gain. In fact, Respondent alleges it has simply parked the domain name.
C. Additional Submissions
In its additional submission, Complainant specifically alleges that it has registered its mark in Taiwan and that it actively markets its services in Taiwan, China and other Asian countries. Complainant contends that Respondent is responsible for enabling GoDaddy.com to place advertising on the domain name website and that this constitutes bad faith registration and use.
The disputed domain name and its PUNYCODE translation of <xn--xpus03cvre3un.com> are the same for purposes of this proceeding. See Damien Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007).
Complainant has obtained trademark registrations of its TOEFL and 托福 marks in many countries including China and Taiwan. The disputed domain name <托福考试.com> contains the mark entirely and merely adds the word 考试, which translates to “test” or “examination” in English. Respondent is not known by Complainant’s mark, and the mark does not appear to have any relationship to Respondent, which is identified in this proceeding only as “Web Administrator.” Complainant has not authorized Respondent to use its mark. Respondent is not directly using the disputed domain name to generate revenue but has authorized and enabled GoDaddy.com to do so. GoDaddy has used the disputed domain name for advertising that includes links to Complainant’s competitors and has done so to obtain “click-through” revenue.
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.
Complainant’s trademark registrations of the TOEFL and 托福 marks, including in Taiwan and China, establishes Complainant’s rights in its marks under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007). Respondent’s domain name <托福考试.com> merely adds the word “test,” using the additional Chinese character 考试. Because the disputed domain name includes Complainant’s mark and merely adds the descriptive term “test” and the generic top-level domain “.com,” the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶4(a)(i).
Complainant did not authorize Respondent to use its marks, and Respondent does not allege that it is commonly known by the disputed domain name. The term “Web Administrator” bears no resemblance to Complainant’s marks. Complainant has thus made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006). Because Respondent has offered no evidence to refute Complainant’s prima facie case, the Panel finds that Complainant has carried its burden to show that Respondent lacks rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent’s denial of knowledge of Complainant’s marks is not credible. Complainant’s marks are not only widely registered; they are used in pervasive worldwide marketing. Respondent’s use of the marks in a disputed domain name that essentially copies Respondent’s marks and adds the word “test” is not mere coincidence. The Panel finds that Respondent had actual notice of Complainant’s rights in the marks. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006).
Moreover, the Panel finds that Respondent is responsible for the contents of its website even though the disputed domain name was parked with the registrar. Respondent authorized the registrar to advertise on the website for profit, and the registrar did so. In doing so, the registrar generated click-through revenue including by links to Complainant’s competitors. This registration and use of the disputed domain name constitutes bad faith registration and use by Respondent within the meaning of Policy ¶4(a)(iii). See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007).
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <托福考试.com> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: March 29, 2011
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