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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. S B

Case No. D2009-0600

1. The Parties

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

Respondent is S B of San Francisco, California, United States.

2. The Domain Names and Registrars

Each of the disputed domain names is registered with GoDaddy.com, Inc. ("GoDaddy"). They are:

<freetoefltest.com>

<gremagic.com>

<grewiki.com>

<grewiki.net>

<teofl.net>

<toeflcamp.com>

<toeflexam.com>

<toeflmagic.com>

<tofel.net>

<tofle.net>

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on May 6, 2009. On May 7, 2009, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the disputed domain names. On May 7, 2009, GoDaddy transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing contact details, and confirming other details of its registration agreement as to each of the domain names. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint and the proceedings commenced on May 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2009.

On May 14, 2009, the Center received e-mail notifications that its e-mail transmissions to the e-mail addresses for the various contacts for each domain name had failed because none of the "postmaster" e-mail addresses accepted mail. However, it appears transmission to one e-mail address common to each of the domain names (a "gmail" address) was successful and further, that the courier service used by the Center delivered a hard copy of the Complaint on May 18, 2009.

Respondent did not submit any Response. Accordingly, the Center notified the Respondent`s default on June 5, 2009.

On June 9, 2009, the Center received an email signed "SB" (from the "gmail" address mentioned above) stating: "I would like to explain why I am entitled to the domains in question." In reply, on June 10, 2009, the Center acknowledged receipt of the communication, indicated that no formal Response had been received by June 3, 2009, and advised the Respondent that consideration of any late Response would be at the discretion of the Panel. No further communications from Respondent were received by the Center.

The Center appointed Debra J. Stanek as the sole panelist in this matter on June 17, 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.

4. Factual Background

Complainant, which was founded in the 1940s as a not-for-profit educational research and measurement institute, has for many years developed and administering tests for measuring a variety of skills, aptitude and achievement, and competency. Those tests include the TOEFL test (i.e., Test of English as a Foreign Language) and the GRE tests (i.e., Graduate Record Examinations).

Complainant owns several United States federal trademark registrations for the marks TOEFL and GRE for a variety of goods and services, including educational testing, books and other printed materials related to testing (language proficiency testing in the case of the TOEFL mark and testing for admission to graduate program in the case of the GRE mark). The earliest of the TOEFL registrations was issued in 1978 and the earliest of the GRE registrations was issued in 1981. It has also registered and uses a number of domain names, each of which combine either the TOEFL or GRE mark with a generic top-level domain, and which resolve to the official website for TOEFL and GRE tests.

Respondent registered the domain names at varying times, as follows:

Domain Name

Date Registered

<teofl.net>

March 26, 2000

<tofel.net>

March 26, 2000

<tofle.net>

March 26, 2000

<toeflcamp.com>

March 7, 2001

<toeflexam.com>

March 7, 2001

<freetoefltest.com>

March 7, 2001

<gremagic.com>

September 26,2001

<toeflmagic.com>

September 26,2001

<grewiki.com>

September 8, 2004

<grewiki.net>

September 8, 2004

Each of the domain names currently resolves to a GoDaddy parking page that offers a variety of links, including to educational and test-preparation-related websites.

5. Parties` Contentions

A. Complainant

(1) Complainant has rights in the TOEFL and GRE marks

Complainant has used and registered the TOEFL mark in the United States and around the world for a variety of goods and services related to educational testing and testing services, specifically in the field of language proficiency testing, and including testing services, printed materials, and computer programs. Complainant has similarly used and registered the GRE mark for similar goods and services, specifically in the field of testing used in connection with admission to graduate education programs.

Complainant owns United States federal trademark registrations for the marks TOEFL and GRE. The earliest registration of TOEFL dates to 1978 and the earliest registration of GRE dates to 1981.

(2) Each of the domain names are essentially identical or confusingly similar to Complainant`s TOEFL or GRE marks

Each of the domain names either incorporates Complainant`s TOEFL or GRE mark in their entirety, or incorporates one of the marks with inconsequential typographic changes.

The domain names that incorporate one of the marks in their entirety also add a generic or descriptive term, such as "magic," "camp," "free," "exam," "test," or "wiki." The addition of these terms does not avoid confusion.

The other domain names constitute typosquatting вЂ“ whereby Respondent has deliberately introduced minor deviations into Complainant`s marks that result in domain names that are visually and phonetically similar to Complainant`s marks.

(3) Respondent has no rights or legitimate interest in respect of the domain names

Complainant`s rights in its marks predate Respondent`s registration of the domain names.

Respondent is not an authorized user of either the TOEFL or GRE marks.

In light of Complainant`s rights in its marks and their fame, Respondent could not use or have made preparations to use the domain names in connection with a bona fide offering of goods or services.

It appears that Respondent is commonly known as "S B" and not by any of the domain names.

Respondent is not making a legitimate noncommercial or fair use of any of the domain names. Five of them resolve to pay-per-click websites and five resolve to the "www.testmagic.com" website, which offers test preparation goods and services that compete with those offered by Complainant.

(4) Respondent acquired and is using the domain names in bad faith

Respondent has registered and is using the domain names in an effort to capitalize on the good will associated with Complainant`s well-known marks. Respondent must have been aware of Complainant`s rights and reputation in those marks at the time it registered the domain names.

This is particularly true where the domain names are used for pay-per-click websites that depend upon the notoriety of Complainant`s marks to attract traffic to the websites.

Respondent`s typosquatting evidences the bad faith registration of five of the domain names.

Further, because the links on Respondent`s websites include links to third parties who provide goods and services related to Complainant`s TOEFL test and GRE tests, consumers are likely to be confused into believing that Respondent and the parties listed on the websites are affiliated with or endorsed by Complainant or that Complainant has authorized Respondent`s use of the domain names.

Use of the domain names disrupts Complainant`s business by depriving it of the right to use the domain names.

B. Respondent

Respondent did not make any substantive response to the Complaint.

6. Discussion and Findings

A. Procedural Matters

(1) Word Limit

The Supplemental Rules, paragraph 10(a) establish a word limit of 5,000 words for the portion of the complaint described in paragraph 3(b)(ix) of the Rules. Paragraph 3(b)(ix) is generally deemed to apply to Section V of a complaint, which is to set out the specific grounds on which the complaint is made, with reference to the three elements of the Policy (discussed in Section 6.B below).

The Complaint exceeds that limit. Under other circumstances, it might have been appropriate to either dismiss the proceeding without prejudice to the refiling of the Complaint or require the Complainant to amend the Complaint to comply with the Supplemental Rules. The Panel does not do so here both because, under the specific circumstances presented, the amount by which the Complaint exceeded the limit was not great and the Complaint deals with ten different domain names. By doing so, the Panel in no way suggests that the same result would be obtained in another case (even if the circumstances were similar) or that failure to comply with the Supplemental Rules ought to be overlooked.

(2) Multiple Domain Names

The Complaint seeks relief as to ten domain names. The Rules provide that: "The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." See paragraph 3(c) of the Rules. Here, each of the domain names at issue is registered in the name of "S B."

(3) Respondent`s Communication

In light of Respondent`s communication to the Center following the issuance of the Notification of Respondent Default, the Panel considered whether Respondent was afforded adequate notice of this proceeding. Having reviewed the case file, including the record of e-mail transmission and courier delivery of the Complaint to Respondent, the Panel concludes that Respondent had adequate notice of these proceedings and that the Center fulfilled its duty, under paragraph 2(a) of the Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent".

B. Substantive Discussion

In order to prevail, Complainant must prove, as to each of the disputed domain names, that:

(i) It is identical or confusingly similar to Complainant`s mark.

(ii) Respondent has no rights or legitimate interests in respect to it.

(iii) It has been registered and is being used in bad faith.

Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent`s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent`s bad faith registration and use, see Policy, paragraph 4(b).

(1) Identical or Confusingly Similar

Complainant has established its rights in the marks TOEFL and GRE by virtue of the evidence of its United States federal trademark registrations.

None of the disputed domain name is identical to Complainant`s marks.

(A) <gremagic.com>, <grewiki.com>, <grewiki.net> <toeflcamp.com>, <toeflexam.com>, <toeflmagic.com>, and <freetoefltest.com>

Three of the domain names consist of Complainant`s GRE mark in its entirety, followed by the terms "magic" or "wiki." Three of the domain names consist of Complainant`s TOEFL mark in its entirety followed by the terms "camp," "exam," or "magic." A fourth consists of Complainant`s TOEFL mark preceded by "free" and followed by "test."

The Panel agrees that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark, although such a finding is not automatic. Here, the addition of generic or descriptive terms after Complainant`s mark (even absent the space between the terms and the addition of various generic top-level domains, which are not relevant for these purposes) does nothing to effectively differentiate or distinguish the domain names from Complainant`s marks, which remain the dominant portion of each of the domain names.

(B) <teofl.net>, <tofel.net>, and <tofle.net>

The remaining three domain names consist of variants of Complainant`s TOEFL mark. In each, the letters making up Complainant`s mark do not appear in the same order: "teofl," "tofel," and "tofle." In the Panel`s view, each of these domain names incorporates a very slight variation of Complainant`s mark. The appearance of each domain name is very close to Complainant`s mark (again, noting that the absence of spaces and addition of a generic top-level domain is not considered for these purposes). The pronunciation of each of these domain names and the mark is also quite similar. The overall impression of each domain name is that it is simply a misspelling of Complainant`s mark.

Accordingly, the Panel finds that each of the domain names is confusingly similar to a mark in which Complainant has rights.

(2) Rights or Legitimate Interests

The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once a complainant makes prima facie case, a respondent has burden of showing rights or legitimate interests in the domain name).

Paragraph 4(c) of the Policy sets out the following examples:

(i) before any notice to you of the dispute, your use of, or 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It does not appear that Respondent engaged in any legitimate use of any of the domain names. There is no reason to believe, from the WhoIs record or otherwise, that Respondent is commonly known by any of the domain names.

It does not appear that Respondent is making a legitimate noncommercial or fair use of any of the domain names. To the contrary, it appears that the domain names are being used to generate click-through revenue for Respondent or the registrar or to drive traffic to the "www.testmagic.com" website.

The Panel finds that Complainant has made a prima facie showing that has not been rebutted by Respondent.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain names.

(3) Registered and Used in Bad Faith

Under the Policy, Complainant must establish that each of the disputed domain names was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):

(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).

(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).

(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).

(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant`s mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).

Complainant`s rights in its marks, which are well established, long predate Respondent`s registration and use of the domain names. In the present circumstances, it seems highly unlikely that Respondent was not aware of Complainant`s marks at the time the domain names were registered.

Further, the Panel has already concluded that Respondent has no rights or legitimate interests in the domain name and that the use of the domain name was not in connection with a bona fide offering of goods or services.

Under these circumstances, the Panel finds that Complainant has established that Respondent has registered and is using the domain names 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 all the domain names (listed below) be transferred to the Complainant: