DECISION

 

Educational Testing Service v. Sonny Pitchumani and MLI Consulting, Inc.

Claim Number: FA0405000267504

 

PARTIES

Complainant is Educational Testing Service (“Complainant”), represented by Lile H. Deinard, of Dorsey & Whitney LLP, 250 Park Avenue, New York, NY 10177.  Respondent is Sonny Pitchumani and MLI Consulting, Inc. (“Respondent”), 1911 Grand Central, New York, NY 10163.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <etsworldwide.us> registered with Tucows Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 3, 2004; the Forum received a hard copy of the Complaint on May 3, 2004.

 

On May 4, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <etsworldwide.us> is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On May 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 1, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

A timely Response was received and determined to be complete on May 26, 2004.

 

Complainant submitted a timely and complete Additional Submission on June 1, 2004.

 

On June 7, 2004, Respondent submitted a timely and complete Additional Submission.

 

On June 14, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant is the largest private not-for-profit educational research and measurement institution in the world.  Since its formation in 1947, Complainant has been the leader in developing and administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for Americans and foreigners seeking preparatory, college and graduate school admission. Complainant develops and administers more than 12 million tests worldwide and generates more than $600 million in annual revenue.

 

Complainant has used, registered or applied to register the mark ETS and variations thereof in the U.S. and around the world. (See Exhibit 2 of Complaint for list of Complainant’s U.S. trademark registrations for the mark ETS and variations thereof.)

 

Complainant contends that the <etsworldwide.us> domain name is essentially identical and certainly confusingly similar to Complainant’s ETS mark.  The primary element of the domain name – ets – is identical to Complainant’s mark and the term “worldwide” is a descriptive, geographic reference.  According to Complainant, “[g]iven the fame[1] of Complainant’s ETS trademark and the fact that Respondent’s domain name is used in connection with the sale and offer for sale of goods and services identical to those of Complainant . . . , the domain name is likely to confuse consumers into believing that Respondent’s business is affiliated with or endorsed by Complainant, or that Respondent’s use of the domain name is authorized by Complainant.”

 

Complainant further argues that Respondent cannot demonstrate that it has any rights or legitimate interests in the domain name.  It contends that it has not authorized Respondent to use the ETS trademark, that Respondent has not made use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services, that Respondent has not been commonly known by the domain name, and that Respondent is not making a legitimate noncommercial or fair use of the domain name.

 

Anticipating that Respondent will argue that it uses the designation “ets” fairly to identify its trade name “Educational Training Services,” as well as the fact that it offers preparation courses and materials relating to tests developed and administered by Complainant, Complainant maintains that, even if this was true, Respondent would have no legitimate right to use the “ets” designation because such use trades unfairly on Complainant’s goodwill.  Complainant notes that Respondent uses the designations “ets” and “Educational Testing Service,” but not “Educational Training Services,” as metatags for its website and contends that such action demonstrates that Respondent has no legitimate rights or interests in the “ets” designation but, instead, seeks to trade on the goodwill of Complainant’s marks and divert Complainant’s consumers to its website.

 

Complainant further argues that Respondent registered the domain name in bad faith.  According to Complainant, “there can be no doubt that Respondent selected the Domain Name with full awareness of Complainant’s famous ETS trademark and the goods and services associated with that mark.”  Complainant submits that Respondent registered the domain name with the specific intent to cause consumer confusion and to free-ride on the vast goodwill associated with Complainant’s marks. Complainant maintains that it sent a “cease and desist” letter (see Exhibit 10 to Complaint) to Respondent regarding the infringement of the ETS and EDUCATIONAL TESTING SERVICE marks on August 24, 2000, well prior to the registration of the domain name in dispute.[2]  Complainant further alleges that it filed suit against Respondent for trademark infringement in Federal Court in Canada on March 28, 2001, which is also prior to registration of the disputed domain name. (See Exhibit 11 to Complaint for copy of the Statement of Claim in the Canadian action.)

 

B. Respondent

 

Respondent submits in its Response that the mark ETS is an acronym for a generic descriptive, “Educational Testing Service,” and does not confer any rights on Complainant in respect of preparation for the test activities.  In support of such contention, Respondent submitted a list of 72 U.S. trademark registrations for the mark ETS, as used on or in connection with a wide number of products, including suntan lotion, mattresses, and microbiological analysis of alcoholic beverages. See Exhibit 2 of Response.

 

Respondent alleges that the ETS registrations owned by Complainant cover “test development and scoring activities” and do not apply to preparing a person ready for the test activities.  Respondent urges that its goods and services are not identical to those of Complainant in that Complainant is in the business of test development and scoring services whereas Respondent is in the business of training and preparing persons in educational skills and for test readiness. Respondent further argues that the term “worldwide” is not a geographical identifier but, instead, expresses the global spread of Respondent’s activities.

 

Respondent also maintains that it has legitimate interests in and rights to the disputed domain name by virtue of having registered and used the <etsworldwide.com> domain name for five years in connection with a bona fide offering of educational training and test preparation services and asserts that the <etsworldwide.us> domain name is a logical country specific TLD extension.

 

Respondent also alleges that it never received any “cease and desist” letter from Complainant and that the alleged court action in Canada was not brought against the instant Respondent.  Accusing the Complainant of fabricating the “cease and desist” letter, Respondent seeks a finding that Complainant is guilty of “reverse domain name hijacking.”

 

Respondent maintains that it is known as “Educational Training Services,” which is its trade name, and that the domain name in dispute is simply an acronym for such name.

 

Respondent also contends that it has made fair use of the domain name in connection with the bona fide offering of educational training and test preparation programs. According to Respondent, there is no attempt to divert Complainant’s customers because its customers are educational institutions, not the test takers.  Respondent notes that there is a prominent link from its website to the <ets.org> site owned by Complainant.

 

With respect to the issue of “bad faith” registration or use, Respondent contends that there is no evidence that it wishes to sell the domain name registration to Complainant, that registration of the disputed name was never intended to prevent Complainant from using its trademark as its domain name, that there is no evidence of any attempt at disrupting Complainant’s activities, and that Respondent has not attempted to attract users to its website by creating confusion regarding the source, sponsorship, affiliation, or endorsement of such site.  On this point, Respondent contends that there is no overlap of customers in respect of the goods and services covered by Complainant’s marks.

 

C. Additional Submissions

 

On June 1, 2004, Complainant timely filed a “Reply to the Response.” In its reply, Complainant responds to Respondent’s allegation that Respondent never received the August 24, 2000 “cease and desist” letter.  Attached as Exhibit A to the reply is a September 6, 2000 letter from Respondent Pitchumani, which responds and refers to the August 24 letter.

 

With respect to Respondent’s contention that it was not involved in the Canadian proceeding, Complainant notes that the Complaint in that proceeding names Respondent Pitchumani and Maple Leaf International Consulting, Inc. as defendants. Upon information and belief, Complainant asserts that Respondent MLI Consulting, Inc. is controlled by Pitchumani and Maple Leaf International Consulting, Inc.  Attached, as Exhibit B to the reply, is a Dun & Bradstreet report showing that Pitchumani is the president of Maple Leaf International Consulting.

 

On June 7, 2004, Respondent filed a timely “Reply to the Complainant’s Reply.”  In it, Respondent accuses Complainant of continuing to “weave its tangled web of lies, deception, and fabrication.”  More specifically, Respondent asserts that the September 6, 2000, letter set forth in Exhibit A to Complainant’s reply is forged and fabricated and submit a letter from Respondent Pitchumani’s secretary in support of such assertion.  Respondent also reiterates that it is not the named parties in the Canadian action and never received any notice of the Canadian dispute.

 

On June 23, 2004, Complainant submitted additional evidence in the form of the decision by an ICANN panel in the proceeding entitled Educational Testing Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and MLI Consulting, Inc., WIPO Case No. D2004-0324 (June 18, 2004).  In that case, the ICANN panel ordered the domain names <etsworldwide.com>, <etsworldwide.org> and <etsworldwide.net> transferred to Complainant.

 

On June 24, 2004, Respondent filed a letter strongly objecting to the submission of Complainant’s additional information, noting that it was untimely pursuant to Paragraph 7 of the Supplemental Rules.[3]

 

FINDINGS

Based upon its review of the evidence of record, the Panel finds that the <etsworldwide.us> domain name is confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the domain name; and that the domain name has been registered or is being used in bad faith.

 

DISCUSSION

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;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

There can be little doubt that the disputed domain name is confusingly similar to Complainant’s ETS mark.  The name and mark both share the term “ets.” The term “worldwide” is merely descriptive in nature and, as such, its addition as part of the domain name is of little significance.  While both parties exerted time and effort in arguing about the similarities, or lack thereof, in the services they offer, such argument is irrelevant on the issue of confusing similarity.  

 

It is also clear that Complainant has rights in the ETS mark.  The U.S. registrations it owns for such mark or related marks is prima facie evidence that the mark is valid.  While Respondent urges that ETS is generic, the evidence presented does not support such a proposition.  The fact that the mark ETS is the subject of 72 live registrations for a gamut of products does not establish that ETS, as used by Complainant in connection with its goods and/or services, is generic. 

 

Rights or Legitimate Interests

 

The Panel determines that Respondent is not using the domain name in connection with a bona fide offering of goods or services.  Many ICANN panel decisions have held that where, as here, the domain name in issue is confusingly similar to a Complainant’s mark and is used for Respondent’s financial benefit, such use is not “bona fide.”  See, e.g., MSNBC Cable, LLC v. Tysys .com, D2000-1204 (WIPO Dec. 8, 2000).

 

Further, there is no evidence that Respondent is commonly known by the <etsworldwide.us> domain name as opposed to the trade name “Educational Training Services.” 

 

Finally, the evidence establishes that Respondent uses the disputed domain name commercially in connection with its educational and management training programs and that the domain name is being used in a manner akin to trademark use.  Thus,

Respondent cannot be found to be making a legitimate noncommercial or fair use of the domain name. 

 

Registration or[4] Use in Bad Faith

 

The Panel concludes that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of the services offered on such site.  As noted above, Respondent’s domain name is confusingly similar to Complainant’s ETS mark, which, if not famous, is certainly strong and, thus, deserving of a broad scope of protection. And, while the parties may not be direct competitors, their respective services are certainly related.  Indeed, Respondent’s website focuses on offering training for the GMAT exam, an exam administered by Complainant.  The disclaimer included on the bottom of Respondent’s home page, to the effect that Complainant is not affiliated with Respondent’s test preparation services, is not prominent enough to dispel any likelihood of confusion.

 

There is other evidence of “bad faith.”  The Panel finds that Respondent, prior to the registration of the disputed domain name, was clearly aware of Complainant’s objection to Respondent’ use of the designation “ETS.”  Respondent Pitchumani was a named defendant in the Canadian action and it appears from the evidence that Respondent MLI Consulting is, at a minimum, related to the other defendant in the Canadian action, Maple Leaf International Consulting, Inc.[5]

 

DECISION

Having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED[6].

 

Accordingly, it is Ordered that the <etsworldwide.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Jeffrey M. Samuels, Panelist
Dated: July 6, 2004[7]

 

 

 

 

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