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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Educational Testing Service (“ETS”) v. Spiral Matrix

Case No. D2006-0505

 

1. The Parties

The Complainant is Educational Testing Service (“ETS”), Princeton, New Jersey, United States of America, represented by Dorsey & Whitney, LLP, New York, New York, United States of America.

The Respondent is Spiral Matrix, Eldoret, Kenya.

 

2. The Domain Names and Registrar

The disputed domain names <taketoefl.com>, <toeflets.com> and <toefltse.com> are registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2006. On April 21, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On April 21, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2006.

The Center appointed Thomas Hoeren as the sole panelist in this matter on May 26, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Since 1964, the Complainant has developed and administered the TOEFL test, the leading text procedure for evaluating the English proficiency of people whose native language is not English. Since 1986, nearly 20 million students have taken the TOEFL test in more than 165 countries. In addition, the Complainant created and administered other well-known test tools, such as the TSE (Test of Spoken English), the most widely used assessment of English to communicate effectively. The Complainant finally uses the term “ETS” as an abbreviation of its company name “Educational Testing Services”, one of the largest private not-for-profit educational research institutions in the world.

The Complainant is - among others - owner of the following registered trademarks:

- The United States trademark TOEFL no 1103427, registered on March 10, 1978, for educational testing services (Class 41) and information manuals dealing with educational services (Class 16);

- The United States trademark TOEFL & Design no 1103426 registered on March 10, 1978, for educational testing services (Class 41);

- The United States trademark TOEFL no 2461224 registered on June 19, 2001, for computer programs for use in the field of language proficiency testing (Class 9);

- The United States trademark TSE no 1309987 registered on December 18, 1984, for testing materials (Class 16);

- The United States trademark TSE no 1323151 registered on May 3, 1985, for testing materials (Class 16);

- The United States trademark ETS & Design no 0558879 registered on May 13, 1952, for testing materials (Class 42);

The United States trademark ETS & Design no 0559686 registered on June 3, 1952, for printed publications pertaining to education (Class 16); and,

- The United States trademark ETS no 1166461 registered on August 25, 1981, for tests booklets etc. (Class 16).

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following allegations: The primary elements of the domains names in question are identical to its trademarks. The domains names <toeflets.com> and <toefltse.com> are merely combinations of two of the Complainant’s trademarks (TOEFL and ETS, TOEFL and TSE). The domain name <taketoefl.com> is the mere addition of the descriptive term “take” with the trademark TOEFL. All these combinations increase the likelihood of confusion because the terms falsely suggest that the goods and services offered by Respondent are authentic TOEFL goods or services or that are at least sponsored or endorsed by Complainant.

Furthermore, the Complainant also submits that the Respondent has no rights or legitimate interests in respect of the domain names in dispute: The Respondent is not a franchisee or otherwise affiliated with the Complainant; its address and telephone number are identical to those of Kentech Inc., a domain seller.

Finally, the Complainant submits that the disputed domain names were registered and are being used in bad faith by the Respondent. By registering a domain name that is identical to the Complainant’s existing TOEFL trademarks, Respondent intentionally has attempted to capitalize unfairly on the goodwill of Complainant’s well-known trademarks. It is the business of the Respondent to sell domain names. The Respondent uses the domain names to operate pay-per-click websites from which it derives substantial revenue through Internet advertising. The disputed domain names are thus registered and used primarily for the purpose of disrupting the Complainant’s business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:

“A Panel shall 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 states that, for a complaint to be granted, the complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to the trademarks or service marks in which the complainant has rights; and

(ii) that the respondent has no rights or no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

The domain names in question are identical or confusingly similar to the trademarks registered by the Complainant. The domain name <toefltse.com> only combines “toefl” and “tse” and is thus identical with two of the Complainant’s well-known trademarks. The same applies to the domain name <toeflets.com>, a combination of “toefl” and “ets”. The domain name <taketoefl.com> is confusingly similar to the trademark TOEFL. The addition of the generic term “take” is insufficient to avoid confusion (See Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Philipp Morris USA Inc. v. n/a, WIPO Case No. D2004–0462). The term “take” instead increases the risks of confusion as consumers might now think that the domain name <taketoefl.com> relates to authentic TOEFL goods or services.

B. Rights or Legitimate Interests

The Respondent has not filed any Response to the Complaint. Consequently, the Respondent has not alleged any facts or elements to justify prior rights or legitimate interests in the said domain names. Furthermore, the Complainant does not appear to have authorized the Respondent to use its trademarks and, in particular, to register a domain name composed of the Complainant’s trademarks.

Thus, and considering the evidence in the case file, the Panel concludes that the Complainant has demonstrated a prima facie case of Respondent’s lack of rights or legitimate interests. Consequently, the second element of the Policy has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out that certain circumstances may, “in particular but without limitation”, be evidence of bad faith.

First, it has been noted that the Respondent has been involved in a number of UDRP proceedings where WIPO panelists have decided against the Respondent and stated that it had registered and used protected trademarks as part of domain names in bad faith; See PRL USA Holdings Inc. v. Spiral Matrix, WIPO Case No. D2006-0189; Finaxa S.A. v. Spiral Matrix, WIPO Case No. D2005-1044; Deutsche Telekom AG v. Spiral Matrix, WIPO Case No. D2005-1145.

Secondly, the Respondent apparently is the same entity as Kentech Inc. a/k/a Kentech Company Ltd. Websites like “http://www.kenytech.com/domains/toeflets.com” reveal that the address, post office box number and telephone number for both Spiral Matrix and Kentech are identical. Further, the three domain names in question are listed as available domain names for sale through the Kentech website (“www.kenytech.com/domains/search.php”). Kentech is another company known as a bad faith domain user in several UDRP cases (Sociйtй des Hotels Meridien v. Spiral Matrix / Kentech Inc., WIPO Case No. D2005-1196; Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890).

Thirdly, the Respondent registered and is using the domain names in question with the specific intent to cause consumer confusion. Its online directories feature links to third parties who provide goods and services related to tests developed and administered by the Complainant. Consumers might believe that Respondent and the business listed in its online directories are affiliated with or endorsed by the Complainant. Furthermore, the Respondent is free-riding on the goodwill associated with the Complainant’s trademarks. This is demonstrated by the fact that the Respondent uses the domain names to operate pay-per-click websites that depend upon the notoriety of the ETS, TOEFL and TSE trademarks. This is evidence of bad faith under paragraph 4(b)(iv) of the Policy (see Dollar Rent A Car Inc. v. Albert Jackson, NAF Case No. FA187421).

The Panel is thus satisfied that the Respondent registered and is using the domain names at issue in bad faith in accordance with the criteria set out under paragraph 4(b)(iv) of the Policy.

Thus, the Panel concludes that the disputed domain names were registered and are being used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <taketoefl.com>, <toeflets.com> and <toefltse.com> are to be transferred to the Complainant.

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Thomas Hoeren
Sole Panelist

Dated: June 6, 2006