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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. Tatsuya Koshi

Case No. D2008-1981

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 Respondent is Tatsuya Koshi, Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <toeic.mobi> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2008. On December 24, 2008, the Center transmitted by email to GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com a request for registrar verification in connection with the disputed domain name. On December 26, 2008, GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com transmitted by email to the Center its verification response confirming that the language of the registration agreement is in Japanese and that the Respondent is listed as the registrant and providing the contact details.

On January 7, 2009, the Center sent an email to the parties a notification of language of proceeding. The Complainant submitted an email communication on January 12, 2009, requesting the Panel to set English as the language of the proceeding. On January 14, the Respondent submitted an email communication not only to the issue of language of proceeding, but the substance of the Complaint as a whole. On January 15, 2009, the Complainant proposed that the parties be permitted to submit filings in their native language.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2009. The Response was filed in Japanese by email with the Center on February 18, 2009.

The Center appointed Haig Oghigian as the sole panelist in this matter on February 27, 2009. 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.

From January 6, 2009 to February 2, 2009, the parties have addressed several communications by email to the Center.

Supplemental filings were submitted on March 10, 2009 and March 11, 2009 by the Complainant and the Respondent respectively.

4. Factual Background

The following facts are taken from the Complaint and generally accepted as true.

The Complainant is a not-for-profit corporation organized and existing under the Education Law of the State of New York, with its principal place of business in Princeton, New Jersey, USA.

The Complainant has used, registered or applied to register the trademark TOEIC and variations thereof in the United States Patent and Trademark Office (“USPTO”) and in jurisdictions around the world for a number of goods and services, such as educational testing services, namely, administering tests dealing with language proficiency; information manuals dealing with educational testing; and computer programs for use in the field of language proficiency testing. E g. Reg. No. 1191669 registered at USPTO in 1982.

The Complainant also owns registrations for various domain names such as <toeic.com>, <toeic.org>, <toeic.net>, <toeicjapan.com> and <toeic.co.jp>.

The Toeic test is made available worldwide by the Complainant and administered by authorized institutions and/or through Toeic test program representatives under contract with Complainant. In Japan, the Toeic test is specifically used by Japanese businesses to evaluate English proficiency.

The disputed domain name was registered on September 26, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the domain name <toeic.mobi> be transferred from the Respondent to the Complainant.

The Complainant submitted that the Respondent’s domain name is essentially identical and certainly confusingly similar to Complainant’s TOEIC trademark, as it incorporates Complainant’s distinctive TOEIC trademark in its entirety. The only difference between the domain name <toeic.mobi> and the Complainant’s trademark is the mere addition of the generic toplevel domain name “.mobi”, which does not diminish the identical and confusing nature of the domain name in dispute.

The Respondent cannot demonstrate that he has any rights or legitimate interests in the domain name in dispute. The Complainant’s registrations for the TOEIC trademark evidence its exclusive rights in such marks with respect to the goods and services specified therein, and the Complainant has not authorized the Respondent to use the TOEIC mark.

In addition, the disputed domain name is not currently active and therefore there is no evidence that the Respondent is using or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Further, the Respondent has not been commonly known by the domain name.

The Complainant submitted that prior UDRP panels have held that bad faith is found if it is unlikely that the registrant would have selected the domain name without knowing of the reputation of the trademark in question. Such a finding is particularly apt where the Complainant’s trademark is well-known, as is the case with the TOEIC trademark. In the present case, it is highly unlikely that Respondent selected the domain name without being aware of the Complainant’s well-known TOEIC trademark. Therefore, the Respondent registered the domain name in bad faith.

The Complainant argued that the Respondent undoubtedly chose the domain name: (1) in an effort to free-ride on the goodwill associated with the distinctive TOEIC trademark in which Complainant enjoys exclusive rights; and/or (2) for the purpose of creating the false impression that the Respondent is an authorized agent, licensee or representative of Complainant, which the Respondent is not. Therefore, the Respondent has registered and is using the domain name in bad faith.

B. Respondent

The Respondent requested that the Complainant’s claim be rejected.

The Respondent submitted that due to the capital strength of the Complainant and the fact that half of the Toeic exam takers are Japanese, the conduct of the proceeding in Japanese will not create substantial burden on the Complainant. On the other hand, the Respondent does not have the capital strength and does not have the English ability to understand English. In the spirit of fairness, the proceeding should be conducted in Japanese.

The Respondent argued that although the Complainant could not have been unaware of the offering of registration of “.mobi” as gTLD, the Complainant has not registered the domain name <toeic.mobi> between June 22, 2006 and September 26, 2006, the Complainant therefore has waived the priority right to register the domain name <toeic.mobi>. Further, for 2 years after the Respondent’s registration of the domain name, until the Complainant’s filing of the Complaint at the end of December 2008, the Complainant did not contact the Respondent in any way. The Complainant’s submissions therefore should not be admitted due to its inactions.

The Respondent claimed that out of 2221 results through a keyword search of the word “Toeic” on amazon.co.jp, only 7 books were published by the Complainant. Yet, the consumers would not assume erroneously that the books were published by the Complainant. Therefore, even if information concerning Toeic education is provided through the domain name <toeic.mobi>, it will not infringe the Complainant’s trademark. Further, as the Complainant owns several domain names connected with the word “toeic”, there will be no interference to the Complainant’s provision of services as they can be provided through other domain names. There is no support to the Complainant’s argument that it owns the right to all domain names containing the word “toeic”.

The Respondent stated that it intended to provide educational information concerning TOEIC in a way that won’t mislead people, his use of the domain name is legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark .

The Respondent submitted that the domain name registration does not contain any expressions such as “for rent” or “for sell” on its domain name registration data, nor did he ever engage in any activities for the sell, rent, and transfer of the disputed domain name. In addition, the Respondent has not registered any other domain name with the word “toeic”, therefore he has not engaged in a pattern of such behavior and his action does not prevent “the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. The Respondent further claimed that as it is just an individual, there is no issue of competition, and there is no unjust use of <toeic.mobi> as it does not constitute disruption of the business of a competitor. The Respondent therefore has not registered or used the domain name in bad faith. Finally, the Respondent claimed that its nonuse precludes a finding of bad faith.

6. Discussion and Findings

6.1 Language of the proceeding

As the Registration Agreement of <toeic.mobi> is in Japanese, in accordance with paragraph 11(a) of the Rules, the default language of the proceeding should be in Japanese. Be that as it may, paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to the circumstances. Having considered the circumstances, in particular the following, the Panel determines that English shall be the language of the proceeding.

1) The Panel has to ensure both fairness to the parties and the efficiency of the proceeding. In particularly, the language requirement should not unduly burden the Parties or unduly delay proceedings (eg. Whirlpool Corporation, Whirlpool Properties, Inc. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293);

2) The Respondent has demonstrated a functional grasp of the English language. While the Respondent argued that he has no understanding of the English language, he is seemingly able to provide counter arguments to certain claims raised by the Complainant. In addition, the Respondent has submitted his main responses in both the English and the Japanese language;

3) The Respondent is apparently able to conduct research on the WIPO site and point out that the Complainant has been a repeat user of the system and has been involved in at least 30 domain name cases.

4) The (seemingly inactive) website at the disputed domain name contains elements in both English and Japanese. The Panel is satisfied that the Respondent has not in the circumstances been unduly prejudiced by the Complaint being in English. The Panel further notes that the Center has communicated with both parties in English and Japanese, and that the Respondent has had an opportunity to submit its Response in Japanese.

In view of the above facts, it will lead to undue delay to the proceedings if the Panel decides to require the Complainant to produce Japanese translation to all documents submitted by it. In the circumstances, pursuant to the general discretion under paragraph 11 of the Rules, and in view of the Complainant’s submission on January 15, 2009 that the parties be allowed to make submissions in their native language, the Panel further determines that the Japanese submissions of the Respondent be allowed without the need for English translations.

6.2 Supplemental Filing

The Panel notes that supplemental filings were submitted by both parties. No express provision is made for supplemental filings, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. The Panel therefore has sole discretion to determine the admissibility of supplemental filing received from either party. The Panel has reviewed the supplemental filing submitted by the parties and have given due consideration to the claims made by the parties respectively.

6.3 Discussions and Findings

Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:

(i) The domain name is identical or confusingly similar to the trade mark; and

(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.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which a Complainant has rights. In line with such provision, the Complainant must prove that it enjoys the trademark right, and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.

It is established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (Magnum Piercing, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D 2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

It is clear on the given evidence that the Complainant has a longstanding use of the name “Toeic” and that it has registered trademarks that incorporate those words in many parts of the world, especially Japan where the Respondent resides, and the reputation of TOEIC in Japan is recognized by the Respondent.

The subject domain name differs from the Complainant’s name and mark only by the addition of the top level domain “.mobi”. The Panel is satisfied that the domain name is identical or confusingly similar to the Complainant’s name and mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances can be:

- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

The Panel is of the opinion that the Complainant has established on the balance of probabilities that the Respondent has no rights or legitimate interests in the domain name at issue.

The Complainant has no relationship with the Respondent and has not authorized the Respondent to use the domain name <toeic.mobi>. There is no indication in the case file that the Respondent is known under the disputed domain name.

The Panel is is unable to see on the current record how the use of a domain name which incorporates the trade mark of another without authorization (especially a well-known mark as in the current case) could be subject to a right or legitimate interest simply because the use is alleged to be noncommercial in nature, and simply because the Respondent states, without submitting proof, he intend to use the domain name in a way that won’t mislead people.

Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4 (a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is not convinced that just because the Respondent has not engaged in the sale, rent or transfer of the domain name containing the Complainant’s trademark that the Respondent has not acted in bad faith. Neither does the lack of active use of the domain name prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. In Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003, it was established that “inaction can constitute bad faith use,” and the Telstra decision has since been cited numerous times for that proposition and followed by subsequent UDRP panels. In Telstra, the panel decided that whether “inaction” could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.

In the current case, considering the reputation of the mark, the Respondent’s stated purpose for offering TOEIC related information, the registration of the domain name within a very short period after the .mobi top level domain is open for registration all indicate the Respondent’s bad faith in its registeration and use of the domain name.

Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4 (a)(iii) of the Policy.

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 name <toeic.mobi> be transferred to the Complainant.

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Haig Oghigian
Sole Panelist

Dated: March 30, 2009