Educational Testing Service v. FREETOEIC.COM / Privacy--protect.org
Claim Number: FA1103001378961
Complainant is Educational Testing Service (“Complainant”), represented by Peter D. Vogl of Jones Day, New York, USA. Respondent is FREETOEIC.COM / Privacy--Protect.org (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freetoeic.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 18, 2011; the National Arbitration Forum received payment on March 21, 2011. The Complaint was submitted in both English and Finnish.
On March 24, 2011, Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <freetoeic.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) LTD d/b/a
HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD d/b/a HebeiDomains.com 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 March 30, 2011, the Forum served the Finnish language Complaint and all Annexes, including a Finnish language Written Notice of the Complaint, setting a deadline of April 19, 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@freetoeic.com. Also on March 30, 2011, the Finnish language 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <freetoeic.com> domain name is confusingly similar to Complainant’s TOEIC mark.
2. Respondent does not have any rights or legitimate interests in the <freetoeic.com> domain name.
3. Respondent registered and used the <freetoeic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Educational Testing Service, uses its TOEIC mark in connection with the provision of printed publications dealing with language testing, such as brochures, pamphlets, test booklet and answer sheets, and educational testing services, including developing and administering tests dealing with languages. Complainant owns multiple trademark registrations for its TOEIC mark with both China’s State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 771,629 issued November 14, 1994) and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,191,669 issued March 9, 1982).
Respondent, FREETOEIC.COM / Privacy--protect.org, registered the disputed domain name on November 23, 2005. The disputed domain name resolves to a pay-per-click website featuring links to test preparation and practice test materials in competition with Complainant.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 asserts rights in its TOEIC mark based on its registrations of the mark with governmental trademark authorities such as the USPTO (e.g., Reg. No. 1,191,669 issued March 9, 1982) and China’s SIPO (e.g., Reg. No. 771,629 issued November 14, 1994). The Panel finds that Complainant’s trademark registrations for its TOEIC mark are sufficient evidence that Complainant has rights in the mark for the purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant argues that Respondent’s <freetoeic.com> domain name is confusingly similar to Complainant’s TOEIC mark. The disputed domain name adds the generic term “free” and the generic top-level domain (“gTLD”) “.com.” In The Proctor & Gamble Company v. Daniel Khesin, FA 234368 (Nat. Arb. Forum March 15, 2004), the panel found that the addition of the word “free” to the complainant’s SWIFFER mark rendered the <freeswiffer.com> domain name confusingly similar. Likewise, in Guthy-Renker LLC v. Jim Perkins, FA 1283906 (Nat. Arb. Forum Oct. 28, 2009), the panel found the respondent’s <freeproactive.net> domain name confusingly similar to the complainant’s PROACTIV mark, based on the addition of the generic word “free.” Therefore, the Panel finds that Respondent’s addition of the word “free” to the entirety of Complainant’s TOEIC mark, subject to the above precedent, results in a domain name that is confusingly similar to Complainant’s mark. Additionally, the Panel finds that a gTLD is required in every domain name and, as such, Respondent’s addition of “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <freetoeic.com> domain name is confusingly similar to Complainant’s TOEIC mark.
The Panel finds that the elements of Policy ¶ 4(a)(i) are satisfied.
Complainant must first make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Based on the allegations contained in the Complaint, the Panel finds that Complainant has established a prima facie case. The Panel also infers that Respondent’s failure to submit a Response is additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel will examine the record in light of the Policy ¶ 4(c) factors in order to make a complete determination as to Respondent’s rights or legitimate interests in the disputed domain name, if any.
Complainant indicates that Respondent is not a licensee of, or otherwise affiliated with, Complainant. Complainant has never authorized or otherwise condoned or consented to Respondent’s registration of the <freetoeic.com> domain name. Additionally, the WHOIS information fails to establish any link between Respondent and the disputed domain name. For these reasons, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c)(ii), as Respondent is not commonly known by the <freetoeic.com> domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent is using the disputed domain name to operate a pay-per-click website featuring links to test preparation and practice test materials. Complainant submits evidence indicating several of the links on Respondent’s resolving website feature products and services in competition with those of Complainant, such as: “Free TOEFL Practice Tests,” “Learn to Speak English,” “ESL Test,” and “TOEFL Software,” among others. Respondent presumably receives click-through revenue from the displayed links. Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with either a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that the elements of Policy ¶ 4(a)(ii) are satisfied.
The Panel finds that Respondent registered and is using the disputed domain name in order to disrupt Complainant’s business of offering language testing products and services. Respondent’s resolving website features links to third-party websites in direct competition with Complainant and Internet users may purchase these competing products and services rather than those of Complainant based on Respondent’s display of competing links. Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent presumably benefits monetarily through the receipt of click-through fees each time an Internet user selects one of the displayed links. Respondent’s incorporation of Complainant’s TOEIC mark in the disputed domain name seems to have been done with the intent to confuse Internet users as to Complainant’s association with, or sponsorship of, the disputed domain name, resolving website and competing links. Therefore, the Panel finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that the elements of Policy ¶ 4(a)(iii) are satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freetoeic.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: May 5, 2011
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