Educational Testing Service v 蔡子龙 (Zilong Cai)

WIPO Case No. D2022-0074

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Educational Testing Service v. 蔡子龙 (Zilong Cai)

Case No. D2022-0074

1. The Parties

The Complainant is Educational Testing Service, United States of America (“United States” or “U.S.”), represented by Jones Day, United States.

The Respondent is 蔡子龙 (Zilong Cai), China.

2. The Domain Name and Registrar

The disputed domain name <toefltricks.com> (the “Domain Name”) is registered with Domain International

Services Limited (China) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2022. On January 11, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 12, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 12, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint in English on January 12, 2022.

On January 12, 2022, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On January 12, 2022, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the

proceeding.

The Center verified that the Complaint together with the amendment to 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on January 19, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2022.

The Center appointed Karen Fong as the sole panelist in this matter on February 16, 2022. 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

The Complainant is one of the world’s largest non-profit educational testing and assessment organization. It develops, administers, and scores more than 50 million tests per year in more that 190 countries and 9,000 locations worldwide. One of these tests is known as the “TOEFL” test. This is one of the leading tests used in many countries around the world, including China, to evaluate English language proficiency. Since 1964, more than 30 million students have taken the “TOEFL” test in more than 180 countries, and over 10,000

institutions worldwide use scores from the test. Globally the “TOEFL” test is available at more than 4,500
testing centers in 165 countries.

The Complainant has a large number of trade mark registrations for TOEFL all over the world. The earliest trade mark registration submitted in evidence is U.S. trade mark registration no. 1,103,427, registered on October 3, 1978; and the earliest trade mark in China submitted in evidence is Chinese trade mark registration no. 176265, registered on April 30, 1983 (individually and collectively, the “Trade Mark”).

The Complainant also has a large portfolio of domain names which comprise the Trade Mark. These include

<toefl.org>, <toefl.com>, <toeflgoanywhere.org>, and <toeflgoanywhere.com>.

The Domain Name was registered on June 29, 2021. The Domain Name resolved to a website which
displayed pornographic material (the “Website”). Following complaints to Chinese law enforcement and the

Registrar, the Website was taken down on or about January 5, 2022 and remains disabled.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the
Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain
Name has been registered and is being used in bad faith. The Complainant requests transfer of the Domain

Name to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the
Complainant must prove each of the following, namely that:

(i)        The Domain Name is identical or confusingly similar to a trade mark or service mark in which the

Complainant has rights; and

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(ii)       The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      The Domain Name was registered and is being used in bad faith.

B. Language of the Proceeding

The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the

administrative proceeding. According to the information received from the Registrar, the language of the

Registration Agreement for the Domain Name is Chinese.

The Complainant submits that the language of the proceeding should be English for the following reasons:

- the Domain Name is in Latin characters indicating the Respondent’s awareness of the English

language; and

- the Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence in Chinese, which would cause undue delay.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.

The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In view of all the circumstances, the Panel determines that English be the language of the proceeding.

C. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.

The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.

In this case, the Domain Name contains the Complainant’s Trade Mark in its entirety with the addition of the word “tricks”. The addition of this word does not prevent a finding of confusing similarity. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the

Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a
standard registration requirement (section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected
UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights, and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

D. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the domain name by demonstrating any of the following:

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(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or

service mark rights; or

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

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does not come forward with such allegations and evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that there is no evidence that the Respondent is commonly known by the Domain Name nor has any trade mark rights to the Trade Mark. Further, it has not authorised, licensed, sponsored, or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. The Respondent’s unauthorised use of the Trade Mark in the Domain Name in relation to pornography is not bona fide or legitimate noncommercial or fair use of the Domain Name.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any explanation of its rights or legitimate interests in relation to the Domain Name, and the Panel is unable to conceive of any basis upon which the Respondent could

sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

E. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Name has been registered and is being used in bad faith.

The Panel is satisfied that the Respondent was aware of the Trade Mark when it registered the Domain Name given the reputation of the Trade Mark and the fact that it has no common dictionary significance other than that of the name of the Complainant’s brand. It is therefore implausible that the Respondent was unaware of the Complainant when it registered the Domain Name.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in
circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a
respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers),
panels have been prepared to infer that the respondent knew, or have found that the respondent should
have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further
factors including the nature of the domain name, the chosen top-level domain, any use of the domain name,
or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s

mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice

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of the Domain Name (clearly targeting the Complainant’s Trade Mark) is also a significant factor to consider
(as stated in section 3.2.1 of the WIPO Overview 3.0). The Domain Name falls into the category stated
above and the Panel finds that registration is in bad faith.

The Panel also finds that the actual use of the Domain Name is in bad faith. The Website was a pornographic website. These services have been set up for the commercial benefit of the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser or finding it through a search engine would have been looking for a website operated by the Complainant or connected to the Complainant rather than the Respondent’s pornographic website.

The Domain Name is likely to confuse Internet users trying to find the Complainant’s official website. Such connected to the Domain Name instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Domain Name is somehow connected to the Complainant.

confusion will inevitably result due to the complete incorporation of the Trade Mark in the Domain Name.

The Panel therefore concludes that the Domain Name was registered and is being used in bad faith both under paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <toefltricks.com>, be transferred to the Complainant.

/Karen Fong/ Karen Fong Sole Panelist Date: March 15, 2022