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Generic Top Level Domain Name (gTLD) Decisions |
Educational Testing Service v. Sonny
Pitchumani and MLI Consulting, Inc.
Claim Number: FA0405000267504
PARTIES
Complainant
is Educational Testing Service (“Complainant”), represented by Lile H. Deinard, of Dorsey & Whitney LLP, 250 Park Avenue, New York, NY 10177. Respondent is Sonny Pitchumani and MLI Consulting, Inc. (“Respondent”),
1911 Grand Central, New York, NY 10163.
The
domain name at issue is <etsworldwide.us> registered with Tucows
Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Jeffrey
M. Samuels, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 3, 2004; the Forum received
a hard copy of the Complaint
on May 3, 2004.
On
May 4, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <etsworldwide.us>
is registered with Tucows Inc. and that Respondent is the current registrant of
the name. Tucows Inc. has verified that
Respondent is bound by the Tucows Inc. registration agreement and has thereby
agreed to resolve domain-name
disputes brought by third parties in accordance
with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the
“Policy”).
On
May 11, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 1,
2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for
usTLD Dispute Resolution Policy (the “Rules”).
A
timely Response was received and determined to be complete on May 26, 2004.
Complainant
submitted a timely and complete Additional Submission on June 1, 2004.
On
June 7, 2004, Respondent submitted a timely and complete Additional Submission.
On June 14, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Jeffrey M.
Samuels as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is the largest private not-for-profit educational research and measurement
institution in the world. Since its
formation in 1947, Complainant has been the leader in developing and
administering tests for measuring skills, academic
aptitude and achievement,
and occupational and professional competency for Americans and foreigners
seeking preparatory, college
and graduate school admission. Complainant
develops and administers more than 12 million tests worldwide and generates
more than
$600 million in annual revenue.
Complainant
has used, registered or applied to register the mark ETS and variations thereof
in the U.S. and around the world. (See
Exhibit 2 of Complaint for list of
Complainant’s U.S. trademark registrations for the mark ETS and variations
thereof.)
Complainant
contends that the <etsworldwide.us> domain name is essentially
identical and certainly confusingly similar to Complainant’s ETS mark. The primary element of the domain name – ets
– is identical to Complainant’s mark and the term “worldwide” is a descriptive,
geographic
reference. According to
Complainant, “[g]iven the fame[1]
of Complainant’s ETS trademark and the fact that Respondent’s domain name is
used in connection with the sale and offer for sale
of goods and services
identical to those of Complainant . . . , the domain name is likely to confuse
consumers into believing that
Respondent’s business is affiliated with or
endorsed by Complainant, or that Respondent’s use of the domain name is
authorized by
Complainant.”
Complainant
further argues that Respondent cannot demonstrate that it has any rights or
legitimate interests in the domain name.
It contends that it has not authorized Respondent to use the ETS
trademark, that Respondent has not made use of, or demonstrable preparations
to
use, the domain name in connection with a bona fide offering of goods or
services, that Respondent has not been commonly known
by the domain name, and
that Respondent is not making a legitimate noncommercial or fair use of the
domain name.
Anticipating that Respondent will argue that it uses the
designation “ets” fairly to identify its trade name “Educational Training
Services,” as well as the fact that it offers preparation courses and materials
relating to tests developed and administered by Complainant,
Complainant
maintains that, even if this was true, Respondent would have no legitimate
right to use the “ets” designation because
such use trades unfairly on
Complainant’s goodwill. Complainant
notes that Respondent uses the designations “ets” and “Educational Testing
Service,” but not “Educational Training Services,”
as metatags for its website
and contends that such action demonstrates that Respondent has no legitimate
rights or interests in the
“ets” designation but, instead, seeks to trade on
the goodwill of Complainant’s marks and divert Complainant’s consumers to its
website.
Complainant
further argues that Respondent registered the domain name in bad faith. According to Complainant, “there can be no
doubt that Respondent selected the Domain Name with full awareness of
Complainant’s famous
ETS trademark and the goods and services associated with
that mark.” Complainant submits that
Respondent registered the domain name with the specific intent to cause
consumer confusion and to free-ride
on the vast goodwill associated with
Complainant’s marks. Complainant maintains that it sent a “cease and desist”
letter (see Exhibit
10 to Complaint) to Respondent regarding the infringement
of the ETS and EDUCATIONAL TESTING SERVICE marks on August 24, 2000, well
prior
to the registration of the domain name in dispute.[2] Complainant further alleges that it filed
suit against Respondent for trademark infringement in Federal Court in Canada
on March 28,
2001, which is also prior to registration of the disputed domain
name. (See Exhibit 11 to Complaint for copy of the Statement of
Claim in the
Canadian action.)
B.
Respondent
Respondent
submits in its Response that the mark ETS is an acronym for a generic
descriptive, “Educational Testing Service,” and does
not confer any rights on
Complainant in respect of preparation for the test activities. In support of such contention, Respondent
submitted a list of 72 U.S. trademark registrations for the mark ETS, as used
on or in connection
with a wide number of products, including suntan lotion,
mattresses, and microbiological analysis of alcoholic beverages. See Exhibit
2
of Response.
Respondent
alleges that the ETS registrations owned by Complainant cover “test development
and scoring activities” and do not apply
to preparing a person ready for the
test activities. Respondent urges that
its goods and services are not identical to those of Complainant in that
Complainant is in the business of test
development and scoring services whereas
Respondent is in the business of training and preparing persons in educational
skills and
for test readiness. Respondent further argues that the term
“worldwide” is not a geographical identifier but, instead, expresses
the global
spread of Respondent’s activities.
Respondent
also maintains that it has legitimate interests in and rights to the disputed
domain name by virtue of having registered
and used the
<etsworldwide.com> domain name for five years in connection with a
bona fide offering of educational training and test preparation services and
asserts
that the <etsworldwide.us> domain name is a logical
country specific TLD extension.
Respondent
also alleges that it never received any “cease and desist” letter from
Complainant and that the alleged court action in
Canada was not brought against
the instant Respondent. Accusing the
Complainant of fabricating the “cease and desist” letter, Respondent seeks a
finding that Complainant is guilty of “reverse
domain name hijacking.”
Respondent
maintains that it is known as “Educational Training Services,” which is its
trade name, and that the domain name in dispute
is simply an acronym for such
name.
Respondent
also contends that it has made fair use of the domain name in connection with
the bona fide offering of educational training
and test preparation programs.
According to Respondent, there is no attempt to divert Complainant’s customers
because its customers
are educational institutions, not the test takers. Respondent notes that there is a prominent
link from its website to the <ets.org> site owned by Complainant.
With
respect to the issue of “bad faith” registration or use, Respondent contends
that there is no evidence that it wishes to sell
the domain name registration
to Complainant, that registration of the disputed name was never intended to prevent
Complainant from
using its trademark as its domain name, that there is no
evidence of any attempt at disrupting Complainant’s activities, and that
Respondent has not attempted to attract users to its website by creating
confusion regarding the source, sponsorship, affiliation,
or endorsement of
such site. On this point, Respondent
contends that there is no overlap of customers in respect of the goods and
services covered by Complainant’s
marks.
C.
Additional Submissions
On June 1, 2004, Complainant timely filed
a “Reply to the Response.” In its reply, Complainant responds to Respondent’s
allegation
that Respondent never received the August 24, 2000 “cease and
desist” letter. Attached as Exhibit A
to the reply is a September 6, 2000 letter from Respondent Pitchumani, which
responds and refers to the August
24 letter.
With respect to Respondent’s contention
that it was not involved in the Canadian proceeding, Complainant notes that the
Complaint
in that proceeding names Respondent Pitchumani and Maple Leaf
International Consulting, Inc. as defendants. Upon information and
belief,
Complainant asserts that Respondent MLI Consulting, Inc. is controlled by
Pitchumani and Maple Leaf International Consulting,
Inc. Attached, as Exhibit B to the reply, is a
Dun & Bradstreet report showing that Pitchumani is the president of Maple
Leaf International
Consulting.
On June 7, 2004, Respondent filed a
timely “Reply to the Complainant’s Reply.”
In it, Respondent accuses Complainant of continuing to “weave its tangled
web of lies, deception, and fabrication.”
More specifically, Respondent asserts that the September 6, 2000, letter
set forth in Exhibit A to Complainant’s reply is forged and
fabricated and
submit a letter from Respondent Pitchumani’s secretary in support of such
assertion. Respondent also reiterates
that it is not the named parties in the Canadian action and never received any
notice of the Canadian dispute.
On June 23, 2004, Complainant submitted
additional evidence in the form of the decision by an ICANN panel in the
proceeding entitled
Educational Testing
Service v. Educational Training Services, Sonny Pitchumani, Randal Nelson and
MLI Consulting, Inc., WIPO Case No. D2004-0324 (June 18, 2004). In that case, the ICANN panel ordered the
domain names <etsworldwide.com>, <etsworldwide.org> and
<etsworldwide.net>
transferred to Complainant.
On June 24, 2004, Respondent filed a
letter strongly objecting to the submission of Complainant’s additional
information, noting that
it was untimely pursuant to Paragraph 7 of the
Supplemental Rules.[3]
FINDINGS
Based upon its review of the evidence of
record, the Panel finds that the <etsworldwide.us> domain name is
confusingly similar to a mark in which Complainant has rights; that Respondent
has no rights or legitimate interests
in respect of the domain name; and that
the domain name has been registered or is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain
name should be cancelled or
transferred:
(1)
the domain name registered by Respondent is identical or confusingly similar to
a trademark or service mark in which Complainant
has rights;
(2)
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw
upon UDRP precedent as
applicable in rendering its decision.
There can be little doubt that the
disputed domain name is confusingly similar to Complainant’s ETS mark. The name and mark both share the term “ets.”
The term “worldwide” is merely descriptive in nature and, as such, its addition
as part
of the domain name is of little significance. While both parties exerted time and effort in arguing about the
similarities, or lack thereof, in the services they offer, such argument
is
irrelevant on the issue of confusing similarity.
It is also clear that Complainant has
rights in the ETS mark. The U.S.
registrations it owns for such mark or related marks is prima facie evidence
that the mark is valid. While
Respondent urges that ETS is generic, the evidence presented does not support
such a proposition. The fact that the
mark ETS is the subject of 72 live registrations for a gamut of products does
not establish that ETS, as used by
Complainant in connection with its goods
and/or services, is generic.
The
Panel determines that Respondent is not using the domain name in connection
with a bona fide offering of goods or services. Many ICANN panel decisions have held that where, as here, the
domain name in issue is confusingly similar to a Complainant’s mark
and is used
for Respondent’s financial benefit, such use is not “bona fide.” See, e.g., MSNBC Cable, LLC v. Tysys .com, D2000-1204 (WIPO Dec. 8, 2000).
Further,
there is no evidence that Respondent is commonly known by the <etsworldwide.us>
domain name as opposed to the trade name “Educational Training Services.”
Finally,
the evidence establishes that Respondent uses the disputed domain name
commercially in connection with its educational and
management training programs
and that the domain name is being used in a manner akin to trademark use. Thus,
Respondent
cannot be found to be making a legitimate noncommercial or fair use of the
domain name.
The Panel concludes that Respondent, by
using the disputed domain name, has intentionally attempted to attract, for
commercial gain,
Internet users to its website by creating a likelihood of
confusion with Complainant’s mark as to the source, sponsorship, affiliation,
or endorsement of Respondent’s website or of the services offered on such
site. As noted above, Respondent’s
domain name is confusingly similar to Complainant’s ETS mark, which, if not
famous, is certainly strong
and, thus, deserving of a broad scope of
protection. And, while the parties may not be direct competitors, their
respective services
are certainly related.
Indeed, Respondent’s website focuses on offering training for the GMAT
exam, an exam administered by Complainant.
The disclaimer included on the bottom of Respondent’s home page, to the
effect that Complainant is not affiliated with Respondent’s
test preparation
services, is not prominent enough to dispel any likelihood of confusion.
There is other evidence of “bad
faith.” The Panel finds that
Respondent, prior to the registration of the disputed domain name, was clearly
aware of Complainant’s objection
to Respondent’ use of the designation
“ETS.” Respondent Pitchumani was a
named defendant in the Canadian action and it appears from the evidence that
Respondent MLI Consulting
is, at a minimum, related to the other defendant in
the Canadian action, Maple Leaf International Consulting, Inc.[5]
DECISION
Having
established all three elements required under the Policy, the Panel concludes
that relief shall be GRANTED[6].
Accordingly, it is Ordered that the <etsworldwide.us>
domain name be TRANSFERRED from Respondent to Complainant.