URS DEFAULT DETERMINATION


Educational Testing Service (ETS) v. Privacy Protect, LLC (PrivacyProtect.org)
Claim Number: FA2008001908823


DOMAIN NAME

<toeic.store>


PARTIES


   Complainant: Educational Testing Service (ETS) of Princeton, NJ, United States of America
  
Complainant Representative: Jones Day Spencer K Beall of Washington, DC, USA

   Respondent: Domain Admin / Privacy Protect, LLC (PrivacyProtect.org) of Burlington, MA, US
  

REGISTRIES and REGISTRARS


   Registries: DotStore Inc.
   Registrars: PDR Ltd. d/b/a PublicDomainRegistry.com

EXAMINER


   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 Examiner in this proceeding.
   Ahmet Akguloglu, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: August 18, 2020
   Commencement: August 19, 2020
   Default Date: September 3, 2020
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION


   Procedural Findings:  
      Multiple Complainants: The Complaint does not allege multiple Complainants.
      Multiple Respondents: The Complaint does not allege multiple Respondents.

   Findings of Fact: The Complainant stated that the Complainant is the world’s largest private nonprofit educational testing and assessment organization. The Complainant also asserted that The Complainant has administered the TOEIC test, scores from which are used today by nearly 14,000 organizations in 160 countries. The Complainant further stated that the Complainant also offers TOEIC test preparation products and services worldwide, including on the websites at <ets.org/toeic>, <toeic.com>, <toeic.net> and <toeic.org>. The Complainant claimed that the Complainant owns hundreds of valid trademark registrations worldwide for its famous TOEIC trademark, which is currently in use and registered with the Trademark Clearinghouse. The Complainant stated that the disputed domain <toeic.store> is identical to the Complainant’s trademark. The Complainant further stated that the Respondent holds no legitimate interest in the trademark TOEIC and is not licensed or authorized by Complainant to use the trademark. The Complainant further claimed that the Respondent is using the disputed domain to attract users to its website for commercial gain by creating a likelihood of confusion with the trademark and the Complainant’s sponsorship of products offered on the website. The Complainant also claimed that the Respondent is attempting to profit by creating a likelihood of confusion with the Complainant’s mark. Based on the above, the Complainant further claims that the Respondent has obtained registration of the disputed domain name in bad faith. The Respondent provided no response to the complaint.

  

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


It is clear that the Complainant has met its burden by clear and convincing evidence that the generic term “store” does not serve to distinguish from the Complainant’s trademark but only consolidates the assumption that the disputed domain relates to an authorized service channel, that the domain name is therefore indistinguishably similar to the word mark TOEIC for which the Complainant holds valid and current international registration which is in use.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Complainant did not authorize the Respondent for use of the TOEIC trademark. The Respondent did not submit any response or evidence to the contrary that it has legitimate interest for usage of the TOEIC trademark. Therefore, it is understood that the Respondent does not have any right or legitimate interest over the disputed domain name.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the 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 documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Registrant's web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


Given the well-known status of the Complainant’s trademark the Respondent was clearly well aware of the Complainant and of their rights on the trademark when they registered the domain name. Besides, the Respondent has proceeded to register and use the domain name in order to attract intentional commercial gain from internet users by way of presenting the similar products and services. Accordingly, the Examiner finds that the Respondent registered and used the disputed domain name in bad faith.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. toeic.store

 

Ahmet Akguloglu
Examiner
Dated: September 9, 2020

 

 

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