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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Domains by Proxy Inc. / Zhao Zhihui / Chen keqing

Case No. D2008-0993

 

1. The Parties

The Complainant is Educational Testing Service, of Princeton, New Jersey, the United States of America represented by Dorsey & Whitney, LLP, the United States of America.

The Respondents are Domains by Proxy Inc., of Scottsdale, Arizona, the United States of America; Zhao Zhihui, of Xian, China; and Chen keqing, of Xina, China respectively.

 

2. The Domain Names and Registrars

The disputed domain names <cntoefl.com>, <grecenter.com> and <newtoefl.net> are registered with GoDaddy.com, Inc. The disputed domain name <toeflsample.com> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2008 originally identifying Domains by Proxy, Inc. and Chen keqing as Respondents. On July 2, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names <cntoefl.com>, <grecenter.com> and <newtoefl.net>. On July 2, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response advising that Domain by Proxy, Inc. is not the registrant of these domain names. GoDaddy.com, Inc confirmed that the registrant of <cntoefl.com> and <grecenter.com> is Zhao Zhihui and the registrant of <newtoefl.net> is Chen keqing, and provided the contact details.

On July 2, 2008, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp a request for registrar verification in connection with the disputed domain name <toeflsample.com>. Due to a miscommunication by Xiamen eName Network Technology Corporation Limited dba eName Corp, the verification response was only finally completely transmitted to the Center on July 8, 2008 confirming that Chen keqing is listed as the registrant of <toeflsample.com> and providing the contact details.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 14, 2008. As the amended Complaint on July 14, 2008 contained an error, the Complainant filed a second amended Complaint on July 24, 2008. The Center verified that the Complaint together with the amended 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”).

On July 18, 2008 and July 21, 2008, the Center received three emails from the Respondents purporting to submit a Response to the Complaint in relation to <newtoefl.net>. The Center replied advising the Respondents that the administrative proceedings had yet to be formally commenced.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on July 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2008. The Respondents submitted a Response on August 2, 2008.

The Center appointed Soh Kar Liang as the sole panelist in this matter on August 11, 2008. 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.

On August 14, 2008, the Complainant submitted an unsolicited supplemental filing in reply to the Response. On August 15, 2008, the Respondent, Zhao Zhihui objected to the supplemental filing, commenting that he has difficulty responding to the supplemental filing within 20 days and expressed concern about further supplemental filings by the Complainant. After due consideration, the Panel issued Procedural Order No. 1 on August 19, 2008 to the effect that:

“… provided that the Complainant does not withdraw the supplemental filing within three days of the date of communication of this order, the supplemental filing shall be accepted and the Respondent may submit his supplemental filing in reply subject to the following conditions:

i) The Respondent’s supplemental filing in reply shall be limited to the matters contained in the Complainant’s supplemental filing;

ii) The Respondent shall have 30 days from the date of communication of this order to submit his supplemental filing in reply; and

iii) The parties shall not file any further supplemental filings thereafter. ”

The Complainant did not withdraw the supplemental filing within the deadline provided under Procedural Order No. 1 and the Complainant’s supplemental filing was accepted. On September 13, 2008, the Respondents submitted their supplemental filing.

 

4. Factual Background

The Complainant is a not-for-profit corporation organized and existing under the Education Law of the State of New York, United States of America. Its principal place of business is in Princeton, New Jersey, United States of America. The Complainant was founded on December 19, 1947 to take over the testing programs and activities of the American Council on Education, the Carnegie Foundation for the Advancement of Teaching and the College Entrance Examination Board. It has regional offices in California, Florida, Texas, Washington D.C. and Puerto Rico, as well as subsidiaries in the Netherlands and other countries.

The Complainant has been developing and administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for Americans and other nationalities seeking preparatory school, college and graduate school admission, licenses for technical and paraprofessional occupations, and teacher certification, including:

a) The TOEFL test (Test of English as a Foreign Language) since 1964. Colleges and universities in the United States of America and Canada require TOEFL test scores from their international applicants. Since 1964, nearly 20 million students have taken the TOEFL test in more than 110 countries, and over 6,000 institutions worldwide use scores from the TOEFL test. Over 650,000 people registered to take the TOEFL test between June 2004 and June 2005; and

b) The GRE tests (Graduate Record Examinations) since 1941. The majority of graduate schools in the United States of America and Canada require GRE test scores as part of their application procedure. Since 1964, the GRE tests have been administered nearly 13 million times in over 160 countries, and over 2,000 institutions worldwide use scores from the GRE tests.

The Complainant offers commercially various test preparation products and services, including print publications, CD-ROMs, computer software and online writing exercises for taking the TOEFL and GRE tests, and TOEFL and GRE practice test questions. The Complainant maintains a website, accessible through the domain names <toefl.org>, <toefl.com>, <toefl.net>, <toefl.biz>, <toefl.us>, <gre.com>, <gre.org>, <gre.info>, <gre.biz> and <gre.us>, for providing these products and also general information about the TOEFL and GRE tests.

The Complainant owns various trade mark registrations incorporating TOEFL (the “TOEFL Marks”) and incorporating GRE (the “GRE Marks”) in the United States of America (“US”), China and around the world in Classes 9, 16, 41 and 42. The earliest US registrations for the TOEFL Marks and the GRE Marks in the evidence date back to 1978 and 1981 respectively. The earliest Chinese registrations for the TOEFL Marks and the GRE Marks in the evidence date back to 1994 and 1983 respectively.

The Complainant’s TOEFL marks and GRE marks were the subject matter of earlier panel decisions against other respondents (e.g., Educational Testing Service v. Mohamed Ahmed Aljarwan, WIPO Case No. D2008-1073; Educational Testing Service v. Caribbean Online International, Ltd., Keyword Marketing, Inc., Maison Tropicale, S.A. and Wan-Fu China, Ltd., WIPO Case No. D2007-0500; Educational Testing Service (ETS) v. International Names Ltd., WIPO Case No. D2007-0449; Educational Testing Service v. Hackers Language Institute / David Cho, Ph.D., WIPO Case No. D2006-1089; Educational Testing Service (ETS) v. Morrison Media LLC, WIPO Case No. D2006-1010; Educational Testing Service v. Park Jeong Foreign Language Institute, WIPO Case No. D2001-1064).

The disputed domain names <grecenter.com>, <newtoefl.net> and <toeflsample.com> were registered by the Respondents in October 2006. The disputed domain name <cntoefl.com> was registered on July 17, 2007. Although the WHOIS records obtained by the Complainant on June 30, 2008 indicated the registrant of <grecenter.com>, <newtoefl.net> and <cntoefl.com> as Domains by Proxy Inc, the Registrar of these domain names confirmed that the registrant of <grecenter.com> and <cntoefl.com> is Zhao Zhihui and the registrant of <newtoefl.net> is Chen keqing.

The Registrar of <toeflsample.com> has identified Zhao Zhihui as the administrative contact of <toeflsample.com>. The homepages of “www.newtoefl.net”, “www.grecenter.com” and “www.toeflsample.com” all list newtoeflnet@gmail.com as the contact email address. Chen keqing also lists newtoeflnet@gmail.com as his email address in relation to <newtoefl.net>.

The homepage to which <grecenter.com> resolves is hyperlinked to the website “www.newtoefl.net”. The homepage to which <toeflsample.com> resolves is hyperlinked to “www.newtoefl.net”. The homepage to which <newtoefl.net> resolves is hyperlinked to “www.grecenter.com” and “www.toeflsample.com”. <cntoefl.com> does not appear to resolve to any webpage.

 

5. Parties’ Contentions

A. Complaint

The Complainant’s main contentions are as follows:

1) The TOEFL Marks and GRE Marks are well-known trade marks and the disputed domain names are essentially identical and confusingly similar to the TOEFL Marks and GRE Marks. The disputed domain names differ from the TOEFL Marks and GRE Marks by generic and non-distinctive elements;

2) The Respondents have no rights or legitimate interests in the disputed domain names. They were not authorized by the Complainant to use the TOEFL Marks and GRE Marks in the disputed domain names. The Respondents have not used the disputed domain names in connection with a bona fide offering of goods or services, nor could they do so in the face of the notoriety of the TOEFL Marks and GRE Marks;

3) It is not necessary for the Respondents to incorporate the TOEFL Marks and GRE Marks as part of domain names in order to convey to the public that they provide information about TOEFL and GRE tests. Kaplan and The Princeton Review are examples of providers of preparations services for the TOEFL and GRE tests which do not include the TOEFL Marks and GRE Marks in their domain names;

4) The Respondents feature pay-per-click advertisements at “www.grecenter.com”, “www.toeflsample.com” and “www.newtoefl.net”. These websites divert traffic intended for the Complainant’s website and infringes the Complainant’s trade mark rights;

5) The Respondents have registered and are using the disputed domain names in bad faith. The Respondents must have known of the Complainant’s trade mark rights when they registered the disputed domain names;

6) The Respondents registered the disputed domain names to ride on the goodwill associated with the TOEFL Marks and GRE Marks. Whether the Respondents charge a fee for access to their website content is immaterial. The Respondents manner of deriving fees from drawing traffic to their websites by pay-per-click advertisements is commercial in nature. Many pay-per-click advertisements on the websites at “www.grecenter.com”, “www.toeflsample.com” and “www.newtoefl.net link” to sites of the Complainant’s competitors; and

7) The Respondent’s websites at “www.grecenter.com” and “www.newtoefl.net” infringe copyright in content owned by the Complainant.

B. Response

The Respondents’ main contentions are:

1) The disputed domain names are not confusingly similar to the TOEFL Marks;

2) The Respondents’ website at “www.newtoefl.net” contains a link to the Complainant’s official website and includes the following statement on every webpage:

“TOEFL is a registered trademark of Educational Testing Service (ETS). This website is not endorsed or approved by ETS”.

3) The fact that <newtoefl.com> was held by a Korean individual, Jongwoo Nam, indicates that <newtoefl.net> is not confusingly similar to the Complainant’s trade marks;

4) The Respondents have a right and legitimate interest in the disputed domain names. The Respondents do not attract traffic to their websites by confusion or association with the Complainant. The Respondents provide materials for TOEFL and GRE test candidates on the respective websites at “www.newtoefl.net” and “www.grecenter.com”. The website at “www.toeflsample.com” provides a free sample essay for teaching TOEFL test candidates. The materials are provided noncommercially and in good faith without charge and user registration. The website at “www.newtoefl.net” is used by many TOEFL test candidates, has top Google search ranking, and is well-known among TOEFL test candidates;

5) The Complainant does not have a Chinese website and the disputed domain name <cntoefl.com> is intended to be used in relation to a Chinese language website for introducing the TOEFL test;

6) It was necessary to incorporate the TOEFL Marks and GRE Marks in the disputed domain name to indicate that the Respondents provide content relating to the TOEFL and GRE tests. The TOEFL test is only one among many other activities of Kaplan. Unlike the Respondents, Kaplan has no need to use the TOEFL Marks in their domain name. It is not necessary to obtain the Complainant’s permission to incorporate the TOEFL Marks in domain names;

7) The disputed domain name <newtoefl.net> is not registered or used in bad faith. The Respondents have no intention to sell, rent or transfer <newtoefl.net> for profit. The pay-per-click advertisements on the Respondents’ website have yet to display advertisements for IELTS, the Complainant’s competitor. The advertisements are under the control of Google; and

8) The Respondents’ websites publishes the content of the Complainant’s website without modification. Links are provided to the Complainant’s website for additional information on the TOEFL tests and therefore does not cause confusion to TOEFL test candidates. The reproduction of content relating to the TOEFL test is not copyright infringement. The information should be free for all to use. The Respondents are prepared to remove such content if the Complainant requires.

 

6. Discussion and Findings

6.1 Dispute involving multiple domain names

Paragraph 3(c) of the Rules permits a complaint to relate to more than one domain name provided that the domain names should be registered by the same domain name holder. The registrant of <cntoefl.com> and <grecenter.com> is different from the registrant of <newtoefl.net> and <toeflsample.com>. This does not comply with the literal reading of paragraph 3(c).

The Complainant has requested in the Complaint that the Respondents be regarded as one domain name holder and the disputed domain names be addressed together. In support of the request, the Complainant referred to Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc., WIPO Case No. D2003-0283 which observed that “situations may arise in which multiple domain name holders should be equated with one domain name holder … so that a complaint against more than one domain name holder should be allowed.” The learned panelist went on to determine a complaint against multiple domain names held by different registrants. The learned panelist must have been mindful of paragraph 10(c) of the Rules which requires that administrative proceedings take place with due expedition. Under the circumstances of that case it would have been abjectly burdensome and unnecessary for the complainant to incur the cost and delay of splitting up proceedings.

The situation before this Panel is not identical. The Respondents have filed a Response. In addition, the Registration Agreements for <cntoefl.com>, <grecenter.com> and <newtoefl.net> are in English while that for <toeflsample.com> is in Chinese. The difference in language suggests that it could have been more expedient to deal with <toeflsample.com> separately from the other domain names.

Nevertheless, having regard to the following special circumstances, this Panel is of the view that dealing with all the disputed domain names in a single Complaint will be more expedient:

1) The evidence shows that the Respondents are so closely intertwined with each other in relation to the disputed domain names that a conclusion of common control and ownership of the disputed domain names is inescapable;

2) The Respondents did not object to the consolidation of the disputed domain names under the Complaint. Further the Respondents jointly communicated with the Center and jointly submitted the Response in relation to all the disputed domain names; and

3) Despite the Registration Agreement for <toeflsample.com> being in a different language, the Parties were able to understand and respond to the contents of the documents filed by each other even though the Complainant used English while the Respondent used both English and Chinese.

Therefore, this Panel shall, in exercise of its discretion under paragraph 10 of the Rules and paragraph 4(f) of the Policy, proceed to deal with and render a single decision in relation to all the disputed domain names.

6.2 Language of the proceedings

As the Registration Agreement of <cntoefl.com>, <grecenter.com> and <newtoefl.net> is in English in accordance with paragraph 11(a) of the Rules, the default language of the proceedings for these disputed domain names should have been English. The Registration Agreement for <toeflsample.com> is in Chinese and the default language of the proceedings in relation to <toeflsample.com> should have been Chinese.

The present proceeding is unusual as both Parties did not adhere to paragraph 11(a) of the Rules. The Complaint was submitted in English. The Complainant formally requested for English to be the language of this proceeding in relation to <toeflsample.com>. The Response was filed in a mix of English and Chinese in relation to all the disputed domain names. The Complainant’s supplemental filing was submitted in English. The Respondents’ supplemental filing was submitted in Chinese. Although the Respondents indicated in communication with the Center that Chinese is their preferred language, they did not request for Chinese to be the language of the proceeding. Despite the use of both English and Chinese in this proceeding, the Parties appear to exhibit no difficulty in understanding each other and were able to address their respective submissions.

Be that as it may, paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to the circumstances. Having considered the circumstances, in particular the following, this Panel determines that English shall be the language of this proceeding:

1) It is important to ensure fairness to the Parties. This Panel has to ensure that the proceeding is efficient. Particularly, language requirements should not unduly burden to the Parties or unduly delay proceedings (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593);

2) The Respondents have demonstrated a clear grasp of the English language. This is evident in:

(a) the manner in which the Response and the Respondents’ supplemental filing were able to address the Complaint and the Complainant’s English supplemental filing;

(b) the English-language content posted at the websites to which the disputed domain names resolve;

(c) the Respondents purporting to offer test preparation services for English language proficiency tests;

(d) the communication from the Respondents to the Center in English and the portions of the Response written in English; and

(e) the common control of disputed domain names (see section 6.1 above) and the majority of the disputed domain names (3 out of 4) being registered under English Registration Agreements;

3) The Respondent has neither requested for the language of the proceedings for all four domain names to be Chinese nor specifically objected to the use of English; and

4) It is not foreseeable in this Panel’s view that the Respondent will be prejudiced by the adoption of English as the language of the proceedings.

In view of the volume of documents submitted by the parties, it will lead to undue burden to the Parties and further delay to the proceedings if the Parties were required to produce English and/or Chinese translations. Further, the parties have exhibited competent bilingualism. Just as the Respondents were able to deal with the English language submissions of the Complainant, the Complainant was also able to deal with the Chinese language submissions of the Respondent. In the circumstances, pursuant to the general discretion under paragraph 10 of the Rules, this Panel further determines that the Chinese language submissions of the Respondent be allowed without the need for English translations.

6.3 The Panel’s decision in relation to the disputed domain names

In order to succeed in these proceedings, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

1) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

2) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

3) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The TOEFL Marks and the GRE Marks precede the registration of all the disputed domain names by many years. They are accordingly trade marks in which the Complainant has rights.

In accordance with established practice, the top level domain portion, “.com” and “.net”, may be ignored in comparing a domain name with a trade mark (e.g., see Gerling Beteiligungs – GmbH (GBG) v. World Space Corp, WIPO Case No. D2006-0223; DZ Bank AG v. Bentz, WIPO Case No. D2006-0414).

Disregarding the “.net” portion, the only difference between the TOEFL Marks and <newtoefl.net> is the prefix “new” in the disputed domain name which is a descriptive word and non-distinctive element. Combining it with a trade mark does not create a domain name that is sufficiently distinguishable from the trade mark as the essential nature of the trade mark remains unchanged (see F. Hoffmann-La Roche AG v. DrugFaq Canada, WIPO Case No. D2005-1281 relating to the suffix “faq”; Educational Testing Service v. Seung Suk Ha, WIPO Case No. D2001-1063 relating to the suffix “tests”; Educational Testing Service v. Jong-Cheol Seo, WIPO Case No. D2006-0056 relating to the prefix “real”; Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462 relating to the prefix “cheap”).

On the facts, the inclusion of a link on the Respondents’ website to the Complainant’s website and/or a statement that the Respondents’ website is not endorsed or approved by the Complainant did not help to distinguish <newtoefl.net> from the TOEFL Marks. The Respondents’ further argument that <newtoefl.com> was previously held by another party is irrelevant. Whether a domain name is confusingly similar to a trade mark is determined on its own merits.

The broad principle is that a domain name which incorporates a trade mark in its entirety is not distinguishable from the trade mark by addition of descriptive and generic elements and remains confusingly similar to the trade mark (see Compagnie Gervais Danone v. Joseph Welter, WIPO Case No. D2008-0594; The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758).

Similarly, the addition of the descriptive suffix “sample” to TOEFL does not render <toeflsample.com> distinguishable from the TOEFL Marks. Neither does addition of the descriptive word “center” to form <grecenter.com> change the essential nature of the GRE Marks. This Panel is of the view that <grecenter.com> is confusingly similar to the GRE Marks.

The letters “cn” is a common two-letter country code for China. It is also used as the country-code Top Level Domain for China. The Respondents admit to selecting the letters “cn” for the purpose of denoting a Chinese website about the TOEFL test. In view of the descriptiveness of the letters “cn”, its addition to the word “toefl” does not create a distinguishable combination in <cntoefl.com>. Past panels have consistently held the same view regarding the addition of country codes to trade marks to form domain names (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu(HK) electrical applicance co. ltd, WIPO Case No. D2008-0293; Educational Testing Service v. TOEFL USA, WIPO Case No. D2002-0380; Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678).

In summary, the Panel holds that the disputed domain names are confusingly similar to the Complainant’s trade marks and the first limb of paragraph 4(a) of the Policy is established in relation to all the disputed domain names.

B. Rights or Legitimate Interests

The evidence before this Panel establishes that:

1) TOEFL Marks and GRE Marks are well-known trade marks;

2) The Respondents are not associated with the Complainant and have not been authorized by the Complainant to use the TOEFL Marks and the GRE Marks, or register any domain names incorporating them. The Respondents have also admitted that their website at “www.newtoefl.net” is not endorsed or approved by the Complainant; and

3) There is no evidence that the Respondents have ever used the terms “toefl” or “gre” prior to the disputed domain name registrations or have ever been known under these names.

The above raises a prima facie inference that the Respondents have no rights or legitimate interests in the disputed domain names. The Respondents have made various arguments in support of the contrary. These are discussed below.

1) Necessity

The Respondents argue that it was necessary to incorporate the words “toefl” and “gre” in the disputed domain names to indicate that they provide (or in the case of <cntoefl.com>, that it is intended to provide) content relating to the TOEFL and GRE tests.

This Panel is unable to understand this argument. Surely the Respondents are free to adopt any multitudes of domain names that do not incorporate the words “toefl” and “gre”. There are other avenues other than the domain name itself that may be used to indicate the nature of the content of websites. Kaplan is such an example.

The case Educational Testing Service (ETS) v. Morrison Media LLC, WIPO Case No. D2006-1010 is distinguishable. Although the domain names in that case were derived from the titles of books which preceded the domain name registrations. As such, it was necessary to adopt the domain names to market these books.

The case Educational Testing Service v. Hackers Language Institute / David Cho, Ph.D., WIPO Case No. D2006-1089 is also distinguishable. The Complainant failed in that case because of the long use of the domain names over 7 years and because of the lack of conclusive evidence of the absence of the respondent’s rights and legitimate interests.

2) Not for profit

The Respondents argue that their websites do not offer any products commercially. They provide materials for TOEFL test candidates on their website in good faith without charge and user registration.

This Panel is unable to see how the use of a domain name which incorporates the trade mark of another without authorization (especially the well-known marks in this case) could be subject to a right or legitimate interest simply because the use is alleged to be noncommercial in nature. The Respondents have not developed their argument sufficiently for this Panel’s consideration.

In any event, this Panel seriously doubts that the disputed domain names are used in a noncommercial manner. The Respondents have admitted to incorporating pay-per-click Google advertisements on their websites at “www.newtoefl.net”, “www.toeflsample.com” and “www.grecenter.com”. These undoubtedly generate income. With the purported high search Google hit-rate and traffic attracted by the websites as claimed by the Respondents, it raises a reasonable suspicion whether the Respondents have a commercial revenue model based on pay-per-click advertisements using free content as traffic bait.

3) No permission required

The Respondents argue that no permission is required from the Complainant to use their trade marks as part of domain names. This argument goes counter to the weight of authority of past panel decisions. Even resellers of trade marked goods may not have a right to register and use domain names containing the trade mark (e.g., Hoffman-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, WIPO Case No. D2003-0793; and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

In view of the above, this Panel concludes that the second limb of paragraph 4(a) of the Policy has been established in relation to all the disputed domain names.

C. Registered and Used in Bad Faith

The TOEFL Marks and GRE Marks are well-known worldwide and in China. The websites at “www.newtoefl.net”, “www.toeflsample.com” and “www.grecenter.com” acknowledge the TOEFL Marks and GRE Marks as registered trade marks. It is inconceivable that the Respondents were not aware of the TOEFL Marks and GRE Marks prior to registering the disputed domain names.

Use of a well-known mark as a domain name by persons unconnected to products identified by the well-known mark to attract Internet traffic for commercial gain is evidence of opportunistic bad faith registration and use (e.g., F. Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956). Even though the Respondents may not charge a fee for accessing their website content, they have a potential, if not actual, revenue channel through pay-per-click advertisements generated by traffic drawn to their websites. Links on the pay-per-click advertisements also appear to lead to sites of other test providers (e.g., IELTS). An inference of bad faith use and registration on the part of the Respondents clearly arises in relation to <newtoefl.net>, <toeflsample.com> and <grecenter.com>. Considering the pattern of behavior in relation to these three domain names, it is foreseeable that <cntoefl.com> was also registered and intended to be used in a similar manner. The circumstances point to the conclusion that the Respondents registered the disputed domain names to ride on the goodwill associated with the TOEFL Marks and GRE Marks.

The Respondents argue that the pay-per-click advertisements on their websites have yet to display advertisements for IELTS, the Complainant’s competitor. This is contradicted by the printout of the website at “www.newtoefl.net” in the Complaint showing a pay-per-click advertisement for IELTS. Although Google, may have control over the advertisements, the Respondents ought to have known that pay-per-click advertisements generated by Google could potential link to competitors of the Complainant. More importantly, the Respondents always have the overriding option to stop having pay-per-click advertisements on their websites altogether. The key question is not how much editorial control the Respondents exercised over their web-content but whether they have exhibited opportunistic bad faith registration and use in registering the disputed domain names and using them to attract Internet traffic for commercial gain. On the face, this appears to be the case with the pay-per-click advertisements and the Respondents have not shown otherwise.

Further, the Respondent’s websites at “www.grecenter.com” and “www.newtoefl.net” reproduce content found on the Complainant’s websites without the Complainant’s permission. The Complainant alleges that such use infringes its copyright in the content. Unfortunately, there is insufficient information for this Panel to determine whether there is copyright infringement which in any event is wholly outside the scope of the policy. Regardless of whether there was copyright infringement, substantial copying of content by the Respondents is not in doubt since the Respondents admit to doing so. Having adopted the Complainant’s trade marks in the disputed domain names under which such copied content is accessible, the conclusion of bad faith use is further strengthened.

Finally, the Respondents made a desperate argument that information on the TOEFL test should be free for all to use. The Respondents appear to misapprehend the purpose and nature of intellectual property rights. The Respondents offer to remove the copied content does not avoid the conclusion that there was bad faith use and registration in relation to the disputed domain names.

 

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, <cntoefl.com>, <grecenter.com>, <newtoefl.net> and <toeflsample.com> be transferred to the Complainant.

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Soh Kar Liang
Sole Panelist

Dated: October 3, 2008