Baylor University v. Maybelle Bailey
Claim Number: FA2205001994797
Complainant is Baylor University (“Complainant”), represented by Dardoh Skinner, Texas, USA. Respondent is Maybelle Bailey (“Respondent”), District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylor-baby.com>, registered with GoDaddy.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 3, 2022; the Forum received payment on May 3, 2022.
On May 4, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <baylor-baby.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 5, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@baylor-baby.com. Also on May 5, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Baylor University, operates the oldest institution of higher education in Texas, and the largest Baptist university in the world. Complainant has rights in the BAYLOR mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,465,910, registered Nov. 17, 1987). Respondent’s <baylor-baby.com> domain name is identical or confusingly similar to Complainant’s BAYLOR mark as it incorporates the mark in its entirety, merely adding a hyphen, the generic term “baby,” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <baylor-baby.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the BAYLOR mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but rather to host a website displaying adult-oriented, pornographic material.
Respondent registered and uses the <baylor-baby.com> domain name in bad faith. First, Respondent uses the disputed domain name to host pornographic content. Complainant also contends that Respondent’s use may tarnish Complainant’s BAYLOR mark, further evidence of bad faith. Additionally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BAYLOR mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <baylor-baby.com> domain name.
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; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the BAYLOR mark based on registration with the USPTO (e.g., Reg. No. 1,465,910, registered Nov. 17, 1987). Registration of a mark with a nation’s trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also Zoosk, Inc. v. Brock Linen, FA 1811001818879 (Forum Jan. 28, 2019) (”The Panel here finds that Complainant’s registration of the ZOOSK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).”). Complainant has provided evidence of its registration with the USPTO. The Panel finds that Complainant has rights in the BAYLOR mark under Policy ¶ 4(a)(i).
Complainant then argues that Respondent’s <baylor-baby.com> domain name is identical or confusingly similar to Complainant’s BAYLOR mark. The disputed domain name incorporates Complainant’s entire BAYLOR mark, merely adds a hyphen and the generic term “baby,” and the “.com” gTLD. Such changes may not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). The Panel finds that the disputed domain name is confusingly similar to Complainant’s BAYLOR mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <baylor-baby.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the BAYLOR mark. When response is lacking, Panels may look to relevant WHOIS information to determine whether a Respondent is commonly known by a disputed domain name within the meaning of Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use another’s mark may further demonstrate that a registrant is not known by a disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies “Maybelle Bailey” as the domain name registrant, and nothing within the record indicates Complainant has authorized Respondent’s use of the BAYLOR mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant then argues that Respondent fails to use the <baylor-baby.com> domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but rather to display adult-oriented and pornographic material. Such use may not qualify as either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”); see also Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA1730673 (Forum June 1, 2017) (holding that “Respondent is not using the disputed domain name for any bona fide offering of goods or services or a legitimate non-commercial fair use because Respondent uses the domain name to host a pornographic website.”). Complainant has provided screenshots of the resolving website for the disputed domain name as evidence Respondent uses the disputed domain name to display pornographic and adult-oriented material. The Panel finds that Respondent fails to use the disputed domain name for any bona fide offer or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <baylor-baby.com> domain name in bad faith because Respondent resolves the disputed domain to a website hosting adult-oriented and pornographic material. Complainant argues that Respondent’s use qualifies as bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Notably, Panels have recognized that using a domain name to host pornographic content generally demonstrates bad faith under Policy ¶ 4(a)(iii) rather than any of the non-exhaustive examples of bad faith listed in Policy ¶ 4(b). See Constellation Brands U.S. Operations, Inc. and Constellation Brands, Inc. v. Alice White / xoxoAliceWhite, FA1512001650830 (Forum Jan. 15, 2015) (noting that although Complainant argues that use of the disputed domain name qualifies as bad faith under Policy ¶ 4(b)(iii), bad faith is better established under Policy ¶ 4(a)(iii)); see also Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). Complainant has provided screenshots of the resolving website. This is evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
Complainant also contends that Respondent’s use of the <baylor-baby.com> domain name is likely to tarnish Complainant’s BAYLOR mark. Past Panels have held that using a famous mark within a domain name in a tarnishing way may qualify as bad faith under Policy ¶ 4(a)(iii). See EnginePoint Marketing, LLC v. TOM SOLDO, FA1208001457681 (Forum Sept. 17, 2012) (finding that Respondent registered and used the disputed domain name in bad faith where Respondent’s use tarnished Complainant’s mark and was likely to cause significant harm to Complainant’s business reputation). Complainant here operates a Baptist university, and Respondent’s use of the domain to host pornographic material which is directly opposed to Complainant’s values. The Panel finds that Respondent’s use of the disputed domain name tarnishes Complainant’s BAYLOR mark. This is evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the <baylor-baby.com> domain name with actual knowledge of Complainant’s rights in the BAYLOR mark. Pursuant to Policy ¶ 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s trademark rights is sufficient to establish bad faith, and may be demonstrated by the notoriety of Complainant’s mark and Respondent’s use of the disputed domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”)., Complainant contends that it is the largest Baptist university in the world, and Respondent uses the disputed domain name to host adult-oriented, pornographic material which may tarnish Complainant’s BAYLOR mark. The Panel finds Respondent had actual knowledge of Complainant’s rights in its mark and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <baylor-baby.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
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