Domain Name - Domain name dispute resolution - U.S. Trademark - U.S. Service
Mark - Supplemental User - Public Web Site - Identical - Confusingly similar - General offering - Bad faith registration - Bad faith use.

Complainant was a registrant of United States service mark and United States trademark.
Registrant registered the domain name, toefl.com. Complainant alleged that its registered trademark is identical and was registered for the purpose of extorting compensation.  Policy establishes that holding a valid trademark is a presumptive basis for redressing unfair competition in the registration and use of a domain name. The trade name may be invoked to prevent or redress unfair competition or practice. Complainant requests transfer of the domain name to itself.

Held, Domain Name Transferred

Complainant must establish bad faith registration and bad faith use.

The domain name 'toefl.com' is identical or confusingly similar to the registered trademark 'TOEFL' owned by the Complainant. Policy distinguishes between legitimate interests and circumstances which represent the abuse of a trade mark holder’s rights such as the bad faith registration and use of a domain name.  The Respondent has no rights, legitimate interest or bona fide purpose for the domain name and contributed no value-added to the Internet. This exploits a general rule of registration and serves to negate first-to-register benefits. The Respondent failed to dispute the allegations further constituting bad faith registration.

The domain name was registered on October 24, 1997 and offered for sale on
'tourdomain.com'  at a price based on the familiar name of the Complainant and in excess of any out of pocket costs of registration. This was the only evidential use of the name exercised by the Respondent.  Mere offering of a domain name for sale does not constitute a right or legitimate interest in the name. By attempting to capitalize on the recognized trademark name of the Complainant, the Respondent has demonstrated bad faith use. 

Policies referred to

Uniform Domain Name Dispute Resolution Policy (ICANN), adopted Aug. 26,
1999 (with implementing documents approved October 24, 1999).
WIPO, The Management of Internet Names and Addresses: Intellectual Property Issues, Report of the WIPO Internet Domain Name Process,
http://wipo2.wipo.int, Apr. 30, 1999, WIPO Pub. No. 439 (E).
Rules for Uniform Domain Name Dispute Resolution Policy (ICANN).
Paris Convention for the Protection of Industrial Property (1983, as revised at 
Stockholm, 1967, and amended 1979), art. 6bis.

Cases referred to

Avery Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. Lexis 19954.

Panel Decision referred to

Abbott, Panelist:

1. The Parties
The Complainant is Educational Testing Service, a not-for-profit corporation organized in the State of New York, United States of America (USA), with principal place of business in Princeton, New Jersey, USA.

The Respondent is TOEFL, with address in New York, New York, USA. 

2. The Domain Name(s) and Registrar(s)
The disputed domain name is "toefl.com".

The registrar of the disputed domain name is Network Solutions, Inc., with business        address in Herndon, Virginia, USA.

3. Procedural History
The essential procedural history of the administrative proceeding is as follows:

a.  The Complainant initiated the proceeding by the filing of a complaint by fax of February 7, 2000, received by the WIPO Arbitration and Mediation Center ("WIPO") on February 8, 2000, and by courier mail received by WIPO on February 10, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On February 10, 2000, WIPO completed its formal filing compliance requirements checklist.

b.  On February 11, 2000, WIPO transmitted notification of the complaint and initiation of the proceeding to the Respondent via e-mail, fax and courier. The fax notification was retransmitted by WIPO to Respondent on February 15, 2000, after notification by Respondent’s administrative contact that its fax machine had run out of paper during the initial fax transmission. 

c.  On February 11, 2000 WIPO transmitted notification of the complaint to ICANN, Network Solutions and Complainant’s authorized representative. 

d.  On March 2, 2000, WIPO transmitted notification to Respondent of its default in responding (to the complaint transmitted on February 11, 2000) by post, fax and e-mail. WIPO’s fax machine report indicates successful transmission of this notification to Respondent’s administrative contact.

e.  On March 2, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On March 2, 2000 the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

f.  On March 3, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. On March 3, 2000, the Panel received an e-mail transmission of the Complaint from WIPO, and WIPO dispatched its file in this matter by courier to the Panel. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by March 16, 2000. 

g.  The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the complaint). The proceedings have been conducted in English. 

4. Factual Background
Complainant has provided a copy (Exhibit B to its complaint) of its U.S. Patent and Trademark Office trademark and service mark registration dated October 3, 1978 for "TOEFL", number 1,103,427, on the Principal Register. Complainant states that the trademark and service mark (hereinafter "trademark") registration remains valid and subsisting. The validity of Complainant’s trademark registration for "TOEFL" has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of a valid trademark registration for "TOEFL" in the United States. 

Network Solutions’ WHOIS database query response (Complainant’s Exhibit A) indicates that TOEFL, with Administrative Contact at "Connections, Web" is the registrant of the domain name "TOEFL.COM". The record of this registration was created on October 24, 1997, and was last updated on October 8, 1999. 

As indicated in Complainant’s Exhibit F, constituting a download from the "tourdomain.com" website on January 30, 2000, the domain name "toefl.com" is offered for sale by its owner on said website for an asking price of $8,000. Respondent (by its default) has not disputed that it is responsible for such offering for sale. 

The Service Agreement in effect between Respondent and Network Solutions as of January 26, 2000 (Complainant’s Exhibit C) subjects Respondent to Network Solutions’ dispute settlement policy, which as of that date is the Uniform Domain Name Dispute
Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

5. Parties’ Contentions

A. Complainant

Complainant states that it is a "leader in developing and administering tests for measuring skills, academic aptitude and achievement, and occupational and professional competency for Americans and foreigners seeking preparatory school, college and graduate school admission, licenses for technical and paraprofessional occupations and teacher certification, among others" (Complaint, para. 16). Complainant indicates that its "‘Test of English as a Foreign Language’ (‘TOEFL’) is a test used by the U.S. government, U.S. industry and U.S. academic institutions to measure English-language proficiency of non-English speaking students seeking student visas". (Id., para. 17)

Complainant indicates that its registered "TOEFL" trademark is famous among "Americans in every field of endeavor" and that the TOEFL trademark is known to identify a "single source, namely, Complainant Educational Testing Service, and its respected products and services" (Id., para. 19). Complainant indicates that it has expended considerable resources in "promoting its products and services under the TOEFL mark throughout the United States" (Id., para. 21) and that the "goodwill symbolized by the TOEFL mark belongs exclusively to Complainant" (Id., para. 22).

Complainant states that Respondent has not made preparations to use or used the "toefl.com" domain name "in connection with a bona fide offering of goods or services", has no trademark or service mark rights in the "TOEFL" trademark, and is not making a legitimate non-commercial or fair use of the "toefl.com" domain name (Id., para. 23).

Complainant states that respondent registered the domain name "toefl.com" in "a blatant attempt to capitalize unfairly on the goodwill of the TOEFL mark" (Id., para. 24). It alleges that Respondent’s bad faith is evidenced by its placing of the domain name for sale on the "tourdomain.com" website at a price ($8,000) that "far exceeds its out-of-pocket costs and thus has violated Paragraph 4(b)(i) of the Policy" (Id., para. 25). Complainant indicates that Respondent’s "target audience" for its offer of sale "undoubtedly was and is Complainant" (Id., para. 25). It alleges that Respondent has no bona fide purpose for the domain name, and "has deliberately attempted to extort compensation from Complainant". Complainant argues that an offer to sell the domain name for a price in excess of its costs constitutes bad faith registration of the name (Id., para. 25).

Complainant requests that the domain name "toefl.com" be transferred to it (Id., para. 27). 

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999) is addressed to resolving disputes concerning allegations of abusive domain name registration. The subject matter scope of the administrative proceedings by which such disputes may be resolved is carefully circumscribed, reflecting a cautious approach to a novel form of dispute resolution that was designed to address a rapidly evolving technological environment. This approach was largely developed through the WIPO Internet Domain Name Process and reflects the balancing and synthesis of a wide range of perspectives regarding governance of the Internet environment 1. Administrative Panels established by authorized dispute resolution service providers should confine themselves to findings of fact that are necessary to rendering decisions within their limited subject matter jurisdiction.

A "domain name" is a human-friendly form of Internet address 2. The domain name shares characteristics with traditional forms of business identifiers, principally trademarks, service marks and trade names. The domain name differs from the trademark (and by analogy, the service mark). The trademark identifies the source of goods in commerce. The domain name does not generally appear on goods as an indication of source 3; rather, it may – but does not necessarily – identify a producer or supplier of goods by its location on the Internet. The domain name is closely related to a trade name that identifies a particular business. The trade name may be invoked, in appropriate circumstances, to prevent or redress unfair competition.

Because the holding of a valid trademark evidences a link between a sign or symbol on goods in commerce and a particular producer or supplier, the Policy establishes the holding of a valid trademark as a presumptive basis for redressing unfair competition in the registration and use of a domain name. However, the Policy recognizes that parties other than the trademark holder may have legitimate interests in the use of its sign or symbol in a domain name. It distinguishes such legitimate interests from a set of
circumstances which are likely to represent abuse of the trademark holder’s rights. It is only the "bad faith" registration and use of a domain name that is prohibited by the Policy. 

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or
service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; 
and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

As there is no evidence on the record that Respondent has undertaken any act regarding the disputed domain name other than to offer it for sale, the Panel infers that the offering for sale was Respondent’s purpose for the registration. If the Respondent’s offer for sale is determined to be in bad faith, then the registration will also be deemed to be in bad faith.

Complainant alleges that Respondent’s offer to sell "toefl.com" on the "tourdomain.com" website was specifically intended as an offer for sale to Complainant. It characterizes Respondent’s act as a deliberate attempt to extort compensation from Complainant.

The panel is unwilling to draw such an inference from Respondent’s offer of the domain name for sale on a website that is open to any party with access to the Internet. Complainant alleges that "TOEFL" is a test widely used by various institutions in the United States. This suggests that there might well be parties other than Complainant that would find a "toefl.com" website commercially useful, such as parties offering to train individuals preparing for "TOEFL" tests in the United States, or offering to train such individuals in foreign countries. 

Furthermore, while parties offering services related to "TOEFL" tests might be competitors of Complainant – thereby bringing them within another class of parties to whom offering the domain name for sale would constitute bad faith use – they might not be competitors of Complainant. On the basis of the Complaint, the Panel cannot conclude that Complainant is the only party that may legitimately train individuals in preparation for TOEFL tests, nor that Complainant would necessarily have persuasive grounds for complaint if another party used the "TOEFL" trademark in a domain name that directed Internet users to its own test preparation services.

If in fact the Respondent considered the Complainant its sole "target audience" for sale of "toefl.com", it might have more efficiently sent an offer letter directly to Complainant, rather than pursuing the circuitous route of posting its offer for sale on a publicly accessible website.

The panel is thus unwilling to draw the inference that offering the "toefl.com" domain name for sale on a publicly accessible website to any party willing to pay its price constitutes an offer to sell the domain name to the Complainant or to a competitor of the Complainant. Certainly the Complainant and its competitors are potential purchasers. However, if the drafters of paragraph 4(b)(i) of the Policy had intended to broadly cover offers to any and all potential purchasers as evidence of bad faith, it would have been a simple matter to refer to all offers to sell the domain name, and not offers to sell to specific parties or classes of parties.

This does not, however, end our inquiry regarding the element of bad faith, since the Policy indicates that its listing of bad faith factors is without limitation. Thus we must still ask whether a general offer for sale in the circumstances of this case constitutes bad faith use of the domain name.

The value which Respondent seeks to secure from sale of the domain name is based on the underlying value of Complainant’s trademark. This value is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services. Respondent has failed to establish any legitimate domain name-related use for Complainant’s trademark, in a context in which such legitimization might be possible. The Respondent having failed to present any such justification, the Panel may reasonably infer that Respondent neither intended to make nor has made any legitimate use of Complainant’s trademark in connection with the "toefl.com" domain name.

In light of the undisputed record in this proceeding, the Panel concludes that the Respondent did in fact register and use the "toefl.com" domain name in bad faith. It has made no use of the domain name other than to offer it for sale at a price that is likely to substantially exceed its out-of-pocket costs of registration, and the price that the domain name commands would largely be based on the trademark of the Complainant. Although a supplemental, as opposed to competitive, user of the domain name might be willing to pay the price sought by Respondent, there is no reason based on the record to award this price to Respondent. The Respondent was the first-to-register, and in circumstances of legitimate registration and use this may secure its right to the domain name. However, because Respondent is contributing no value-added to the Internet – it is merely attempting to exploit a general rule of registration – the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it.

The Panel finds that the Respondent has registered and used the domain name "toefl.com" in bad faith, and that the Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration. 

By requesting transfer of the domain name to itself, Complainant has effectively requested registration of the "toefl.com" domain name. Although there might be other legitimate users of the domain name that would seek registration subsequent to a cancellation of Respondent’s registration, Complainant’s request for registration should reasonably take precedence under a general first-in-time principle applicable to legitimate requests for registration. 

The Panel will therefore direct the registrar to transfer the domain name "toefl.com" to the Complainant.

7. Decision

Based on its finding that the Respondent, TOEFL, has engaged in an abusive registration of the domain name "toefl.com" within the meaning of paragraph 4(a) of the Policy, the Panel directs the registrar to transfer the domain name to the Complainant, Educational
Testing Service.
 

Frederick M. Abbott
Sole Panelist
Dated: March 16, 2000
  Footnotes:
1. WIPO, The Management of Internet Names and Addresses: Intellectual
Property Issues, Report of the WIPO Internet Domain Name Process,
http://wipo2.wipo.int, Apr. 30, 1999, WIPO Pub. No. 439 (E)[hereinafter WIPO
Report], at paras. 163-77.
2. Id., at page (v).
3. When a domain name is used on goods, it takes on the characteristics of
a trademark.
4. See, e.g., Avery Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App.
LEXIS 19954.
5. Id.
6. Paris Convention for the Protection of Industrial Property (1883, as
revised at Stockholm, 1967, and amended 1979), art. 6bis .