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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Educational Testing Service (ETS) v. Morrison Media LLC

Case No. D2006-1010

 

1. The Parties

The Complainant is Educational Testing Service (ETS), United States of America, represented by Dorsey & Whitney, LLP, United States of America.

The Respondent is Morrison Media LLC, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names: <acethepraxis.com>, <gre-secrets.com>, <praxis-secrets.com>, <toefl-secrets.com> and <toeic-secrets.com> are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2006. On August 9, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On August 9, 2006, Go Daddy Software 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, billing, 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 August 15, 2006. Upon Complainant’s request, the proceedings were suspended on August 23 through September 22, 2006, so the parties could negotiate a settlement. No settlement was reached and the proceedings resumed. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2006. The Response was filed with the Center on November 2, 2006.

The Center appointed Lawrence K. Nodine as the Sole Panelist in this matter on November 14, 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

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 citizens of other countries seeking preparatory school, college and graduate school admission; licenses for technical and paraprofessional occupations; and teacher certification, among others. The many well-known tests developed and administered by Complainant or its related companies include: the PRAXIS® tests; the TOEIC® test (Test of English for International Communication); the TOEFL® test (Test of English as a Foreign Language); and the GRE® tests (Graduate Record Examinations).

Complainant owns valid and subsisting United States trademark registrations for the mark PRAXIS, namely, Registration Nos. 1772125, 1772128, 1812590, 2713362, 2713263 and 2857289. Complainant also owns a registration for the domain name <praxis.org>.

Complainant owns valid and subsisting United States trademark registrations for the mark TOEIC, namely, Registration Nos. 1191669 and 2561226. Complainant also owns registrations for the domain names <toeic.com>, <toeic.org>, <toeic.net> and <toeic.us>.

Complainant owns valid and subsisting United States trademark registrations for the mark TOEFL, namely, Registration Nos. 1103426, 1103427 and 2461224. Complainant also owns registrations for the domain names <toefl.com>, <toefi.org>, <toefl.net> and <toefl.us>.

Complainant owns valid and subsisting United States trademark registrations for the mark GRE, namely, Registration Nos. 1146134, 1756582 and 1943796. Complainant also owns registrations for the domain names <gre.com>, <gre.org> and <gre.us>.

Respondent is a business selling test preparation materials titled TOEFL Secrets, TOEIC Secrets, Praxis Secrets and GRE Secrets.

Respondent registered <praxis-secrets.com> on September 7, 2002, <toeic-secrets.com> on October 25, 2002, <toefl-secrets.com> on October 21, 2002, <gre-secrets.com> on August 1, 2002, and <acethepraxis.com> on June 22, 2003.

 

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, Complainant contends that:

Complainant owns valid and subsisting trademark registrations for PRAXIS, TOEIC, TOEFL and GRE. Each mark has been used for numerous years in connection with Complainant’s testing services. The various tests have been administered to millions of students in numerous countries. In addition to the testing services, Complainant has developed numerous test preparation products and services including print publications, CD-ROMs, computer software and online writing exercises. Complainant offers these products and services for sale worldwide.

The PRAXIS, TOEIC, TOEFL and GRE trademarks are well known, enjoy a worldwide reputation and renown and serve to identify a single source, namely, Complainant and its products and services.

With respect to Paragraph 4(a)(ii) of the Policy, Complainant contends that:

Complainant has not authorized Respondent to use any of these marks.

Respondent has not made use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.

Respondent (as an individual, business or organization) has not been commonly known by the Domain Names.

Respondent is not making a legitimate noncommercial or fair use of the Domain Names without intent (1) for commercial gain to divert consumers misleadingly or (2) to tarnish the trademarks at issue.

Respondent operates commercial websites at “praxis-secrets.com”, “toeic-secrets.com”, “toefl-secrets.com” and “gre-secrets.com”, as discussed in further detail below, through which it sells and offers for sale PRAXIS, TOEIC, TOEFL and GRE test preparation publications, respectively. Such commercial use does not constitute fair use. Rather, such use infringes upon Complainant’s trademark rights.

Respondent’s use of the Domain Names constitutes a breach of the Registration Agreement, as well as the Policy, under which Respondent warranted that, to the best of its knowledge and belief, neither the registration of the Domain Names nor the manner in which it intended to use the Domain Names would directly or indirectly infringe the legal rights of a third party.

With respect to Paragraph 4(a)(iii) of the Policy, Complainant contends that:

Respondent has registered the Domain Names without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of Complainant’s well-known trademarks.

It is highly unlikely that Respondent selected the Domain Names without being aware of Complainant’s well-known PRAXIS, TOEIC, TOEFL and GRE trademarks, given that Respondent uses the Domain Names to sell and offer for sale products related to the PRAXIS, TOEIC, TOEFL and GRE tests. To proceed with registration in the face of such knowledge clearly demonstrates bad faith on the part of the Respondent. Respondent also is using the Domain Names in bad faith.

Respondent uses the domain names <praxis-secrets.com>, <toeic-secrets.com>, <toefl-secrets.com> and <gre-secrets.com> to route traffic to its websites through which it sells and offers for sale test preparations publications for the PRAXIS, TOEIC, TOEFL and GRE tests.

Use of the <praxis-secrets.com>, <toeic-secrets.com>, <toefl-secrets.com> and <gre-secrets.com> domain names in this manner creates a strong likelihood of confusion between the source or sponsorship of Respondent’s products and those offered by Complainant, especially since the products offered by both Respondent and Complainant overlap.

Respondent’s passive holding of the domain name <acethepraxis.com> also constitutes bad faith use.

Given the renown of the distinctive PRAXIS, TOEIC, TOEFL and GRE marks, Respondent could not have registered the Domain Names at issue without knowledge of Complainant’s rights in the marks, and no use of the Domain Names by Respondent can constitute a bona fide business or commercial use.

Respondent’s use of the Domain Names suggests a false designation of origin or sponsorship for Respondent’s goods and services and those of the businesses listed in its online directories.

Respondent chose the Domain Names: (1) in an effort to free-ride on the goodwill associated with the distinctive PRAXIS, TOEIC, TOEFL and GRE trademarks in which Complainant enjoys exclusive rights; and/or (2) for the purpose of creating the false impression that Respondent is an authorized agent, licensee or representative of Complainant, which Respondent is not.

Therefore, Respondent has registered and is using the Domain Names in bad faith.

B. Respondent

With respect to Paragraph 4(a)(i) of the Policy, Respondent contends that:

Complainant’s trademarks refer to the test itself, and services related to the test. By definition, they cannot refer to test preparation, as effective test preparation is antithetical to the idea of a standardized test.

The Domain Names at issue are antithetical to the trademarks at issue, and thus cannot be confusingly similar, as no reasonable person can believe that a trademark holder would own or promote such domain names.

With respect to Paragraph 4(a)(ii) of the Policy, Respondent contends that:

There is no dispute that Respondent is a legitimate business selling test preparation materials titled, respectively, as TOEFL Secrets, TOEIC Secrets, Praxis Secrets and GRE Secrets.

Respondent has invested significant resources in advertising and developing its products. The domains correspond to the titles of books published by Respondent to help students prepare for the exams in question.

Respondent’s case involves nearly identical facts to the National Arbitration Forum case FA0501000408094 wherein the complainant, SSAT Board, Inc., had a longstanding trademark in the term SSAT.

Respondent’s websites are clearly labeled with Respondent’s contact information and even a photograph of the author of the books. There is no consumer confusion or attempt to steal legitimacy from the Complainant’s marks.

With respect to Paragraph 4(a)(iii) of the Policy, Respondent contends that:

The domain names at issue are nominative fair use of the Complainant’s trademarks, since Respondent is not seeking to provide its own standardized test, but rather provides preparation for these tests. In addition, Mr. Morrison, a principal of Respondent, is an author with fair use rights as a critic of Complainant’s business practices.

No reasonable consumer would confuse the domains or the website, and the respondent has not received any evidence of said confusion from either the public or from the Complainant.

Previous panels have held that passive holding of domains related to an existing bona fide business like Respondent’s are legitimate. Respondent plans to develop the “acethepraxis.com” website in the future when it has the resources.

Respondent has never claimed endorsement by Complainant, but rather specifically identifies ownership of the websites at the very top of the page.

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Given the Panel’s finding under the second element of the Policy, it is not necessary for the Panel to make a finding under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the Domain Names.

The Panel finds that Respondent has been conducting, since well before he received notice of this dispute, a legitimate business selling test preparation materials entitled, respectively, as TOEFL Secrets, TOEIC Secrets, Praxis Secrets and GRE Secrets. The disputed Domain Names (except <acethepraxis.com>) correspond to the titles of books published by Respondent to help students prepare for the exams in question. Respondent has used the slogan “How to Ace the Praxis” at least on the <praxis-secrets.com> website beginning sometime before this dispute arose. Accordingly, with respect to paragraph 4(c)(i) of the Policy, the Panel finds that the Respondent, before any notice of the dispute, used or prepared to use the domain names <praxis-secrets.com>, <toeic-secrets.com>, <toefl-secrets.com> and <gre-secrets.com> or a name corresponding to the domain name in connection with a bona fide offering of goods or services. With respect to <acethepraxis.com>, Respondent has not conducted a business under the Domain Name, he has made a bona fide use of the slogan “How to Ace the Praxis” in connection with the promotion of his <praxis-secrets.com> Domain Name and the corresponding book of the same title.

The Panel also finds that Respondent has made a fair use of the Complainant’s marks. Under the law of the United States of America the following test has been adopted in determining whether use of others’ marks qualifies as nominative fair use:

“First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonable necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.”

See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d 302,308 (9^th Cir. 1991). Using this test, the Panel finds, after viewing the websites to which four of the five domain names refer, namely, <praxis-secrets.com>, <toeic-secrets.com>, <toefl-secrets.com> and <gre-secrets.com> that: (1) It is necessary for the Respondent to make use of the Complainant’s trademarks in order to identify Respondent’s test preparation products and services; (2) The Respondent’s websites do not make excessive use of Complainant’s trademarks; and (3) Respondent does nothing to suggest sponsorship by or a relationship with Complainant. Although the picture of Mr. Morrison’s, the principal of the Respondent does not appear on each website, each website clearly identifies Respondent’s company name, Morrison Media LLC, and its address at the top of each opening page. Respondent does not purport to be associated with, sponsored or endorsed by the Complainant. Accordingly, the Panel finds that Respondent’s use of Complainant’s trademarks for its various tests is a nominative fair use of the marks. Secondary School Admission Test Board, Inc. v. Joanna Severino and Richard Hosko, NAF Case Number FA0501000408094 (March 24, 2005) concerning the domain name <prepssat.com>, the use of which was nominative fair use of the SSAT trademark to describe test preparation business).

With respect to paragraph 4(c)(iii) of the Policy, the Panel finds that Respondent is making a legitimate fair use of the Domain Names <praxis-secrets.com>, <toeic-secrets.com>, <toefl-secrets.com> and <gre-secrets.com> and is using the Domain Names in connection with a bona fide offering of goods or services.

The Panel finds that Complainant had not proved that the Respondent has no rights or legitimate interests in respect of the Domain Names <praxis-secrets.com>, <toeic-secrets.com>, <toefl-secrets.com>, <gre-secrets.com> and <acethepraxis.com>.

C. Registered and Used in Bad Faith

Because Complainant failed to establish that Respondent had no rights or legitimate interests in the Domain Names, this Panel does not need to resolve the question whether the Domain Names at issue were registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Lawrence K. Nodine
Sole Panelist

Dated: December 5, 2006