Claim Number: FA0801001141911
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <baylorbears.biz> and <baylorbears.name>, registered with Tierra Net Inc. d/b/a Domain Discover, and <baylorbears.net>, <baylorbearssuck.com>, and <baylorbears.tv>, registered with Domaindiscover.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Joel M. Grossman, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 1, 2008.
On February 5, 2008, Tierra Net Inc. d/b/a Domain Discover confirmed by e-mail to the National Arbitration Forum that the <baylorbears.biz> and <baylorbears.name> domain names are registered with Tierra Net Inc. d/b/a Domain Discover, and that the Respondent is the current registrant of the names. Tierra Net Inc. d/b/a Domain Discover has verified that Respondent is bound by the Tierra Net Inc. d/b/a Domain Discover registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 5, 2008, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <baylorbears.net>, <baylorbearssuck.com>, and <baylorbears.tv> domain names are registered with Domaindiscover, and that the Respondent is the current registrant of the names. Domaindiscover has verified that Respondent is bound by the Domaindiscover registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 26, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on February 25, 2008.
On March 3, 2008, an Additional Submission was timely submitted by Complainant.
On March 3, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq. as Panelist.
On March 10, 2008, an Additional Submission was timely submitted by Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Respondent asserts that the Complainant’s registered trademark is
stylized, and therefore Respondent’s use of the mark is not identical or
confusingly similar. Further, Respondent contends that he acquired the names
for a business purpose and that he intended to develop a social networking
website using these names. He notes that in July, 1993 he had filed for the
assumed name “Bear Paws,” and that in May, 2001 he filed for the assumed name
“Central Texas Classifieds.” According to Respondent, in 2007 he acquired the domain
names with the intention of creating a social networking website akin to MySpace
C. Additional Submissions
In its Additional Submission Complainant challenges Respondent’s contentions that it acquired the domain names in connection with plans to start a legitimate business. Complainant points out that there cannot be a connection between the 2007 acquisition of these domain names and its earlier acquisition of the assumed names “Bear Paws,” and “Central Texas Classifieds.” Further, Complainant notes that each of the domain names is being used for the sole purpose of redirecting the user to the website of another university, Texas A&M, Baylor’s competitor, thus disrupting Complainant’s business. Regarding the domain name <baylorbearssuck.com>, Complainant acknowledges that while on occasion “gripe sites” that use a trademarked name followed by the word “sucks” might be a legitimate noncommercial use, in the instant case the site is not being used for any such purpose; rather, it immediately redirects users to the Texas A&M site, just as the other four domain names do. Complainant further asserts that the domain names were registered and are being used in bad faith not only due to the fact that Respondent is attempting to sell them, but also because Respondent is, as a joke, redirecting users to the Texas A&M website. Complainant notes that an article in the Texas A&M student newspaper regarding this proceeding Respondent is quoted as saying: “…after they filed and paid the fees to have the hearing, I redirected the addresses to the Aggie athletics website as a joke. Now I can say that I transferred the domain names Baylor wanted to the Texas Aggies.” Treating these proceedings as a joke is evidence of bad faith.
In Respondent’s Additional Submission, he asserts that the newspaper
article in the Texas A&M school newspaper is hearsay, and should not be
considered. He also asserts that Complainant cannot produce any evidence that
its business was disrupted by Respondent’s redirecting users to the Texas
A&M site, and there was no such disruption. Respondent states that there is
a long history of rivalry and pranks between
The Panel finds that (a) the domain names are identical or confusingly similar to the Complainant’s mark; (b) Respondent has no legitimate interests in the name; and (c) the names were registered and are being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant’s near-century use of the name Baylor Bears for its athletic teams, along with its registered trademarks, show that it has rights in the name. Each of the domain names is identical to or confusingly similar to Complainant’s mark, adding only a different gTLD such as “.net” or “.biz.” These different generic top-level domains are irrelevant for purposes of this issue, and the Panel concludes that each of the domain names is confusingly similar to or identical to Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007). As for the domain name <baylorbearssuck.com> the Panel finds that the domain name wholly incorporates the mark and therefore it is identical to or confusingly similar to Complainant’s mark. See Vivendi Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001); see also ADT Servs. AG v. ADT Sucks.com D2001-0213 (WIPO Apr. 23, 2001) (concluding that the term “sucks” added to a mark does not defeat the complainant’s confusing similarity argument, even if it may defeat the complainant’s argument on the other issues in the case). Finally, Respondent’s point that the Complainant’s trademark involves a stylized form of the words Baylor Bears is irrelevant as it is the words, not the style, that are confusing.
Respondent asks the Panel to believe that he
acquired these domain names as part of a business plan to create a MySpace-type
There is no doubt that Respondent was aware
of Complainant’s mark at the time of the registration of these names, and this
fact alone supports a finding of bad faith. See
Digi Int’l v. DDI Sys. FA 94313 (Nat. Arb. Forum Oct. 24, 2002).
Additionally, the Panel finds that the domain names were acquired for resale at
prices significantly greater than Respondent’s out-of-pocket costs, further
establishing bad faith. See Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003).
Additionally, Respondent’s playful joke of redirecting visitors to each of the
five sites to the website of Texas A&M shows that Respondent is
contemptuous of these proceedings, and views them merely as an opportunity to
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <baylorbears.biz>, <baylorbears.name>, <baylorbears.net>, <baylorbearssuck.com>, and <baylorbears.tv> domain names be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Esq., Panelist
Dated: March 14, 2008
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