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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Educational Testing Service v. Netkorea Co.
Case No. D2000-0415
1. The Parties
Complainant: Educational Testing Service of Rosedale Road, Princetown, New Jersey, USA represented by Greenberg Traurig LLP of Metlife Building, 200 Park Avenue, New York, NY 10166, USA.
Respondent: Netkorea Co. of 403 Mansuk b/d, 3th Chungmuro, Jungku, Seoul, 100-013, (South) Korea.
2. The Domain Name(s) and Registrar(s)
Domain Name: toefl.net
Registrar: Network Solutions Inc.
3. Procedural History
The Complaint was filed on May 11, 2000. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with Rules, paragraph 2(a) and no Response was filed by the Respondent. The Respondent is in default.
The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel’s decision was July 7, 2000.
4. Factual Background
The Complainant is the owner of registered trade marks for TOEFL in many countries worldwide including the USA and South Korea.
5. Parties’ Contentions
The Complainant states that:
i) It is the largest not for profit educational research and measurement institution in the world and has been a leader in its field since 1947 when it was formed;
ii) Since 1978, it has been at the forefront of evaluating the ability of prospective students to comprehend and communicate in the English language through its "Test of English as a Foreign Language" ("TOEFL"). The TOEFL test is used by virtually every higher educational institution in the USA;
iii) The TOEFL Mark is famous and enjoys a prestigious worldwide renown among the educational and academic sectors of many countries and the goodwill in that mark belongs exclusively to the Complainant;
iv) The Respondent is not making any legitimate use of the Domain Name. The Complainant searched the South Korean Register and found no trade marks for TOEFL in the name of the Respondent.
v) The Respondent registered the domain name on October 17, 1998, the same day that it registered TOEIC.NET. TOEIC being another famous mark belonging to the Complainant. TOEIC.NET was transferred back to the Complainant in previous proceedings between the Parties under the Policy - Case No D2000 0087.
vi) In a letter dated February 9, 1999, exhibited to the Complaint, Jingsu Han, President of the Respondent offered to transfer the domain name to the Respondent "if ETS will pay an appropriate price". The Complainant also asserts that the Respondent refused subsequently to transfer the domain for a nominal sum representing his out of pocket expenses.
The Respondent has not filed a Response and is in default.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; 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 confusing similarity
It is prima facie obvious that the Domain Name is virtually identical to the Complainant’s TOEFL mark and therefore that they are confusingly similar.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name.
C. Bad Faith
Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including "the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name". In the absence of a Response from the Respondent, there appears to be no explanation of the facts other than that the Respondent registered the Complainant’s trade marks as domain names with an intent to use them to demand unwarranted profit in bad faith and that the Respondent has so used the Domain Name in question.
In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainant’s trade mark and the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and used in bad faith.
Accordingly, in the light of the above, the panelist requires that the registration of the Domain Name TOEFL.NET BE TRANSFERRED to the Complainant.
Dated: July 3, 2000