Claim Number: FA0802001145651
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, 600 Congress Avenue, Suite 2120, Austin, TX 78701. Respondent is Domains by Proxy, Inc., a/k/a Mark Felton a/k/a Thomas Bassett a/k/a William Bunn a/k/a Fertility Specialists of Dallas a/k/a Becky Chatham a/k/a Amanda Scott a/k/a Nathan Flaga a/k/a Lisa Payne a/k/a Victor Weir III (“Respondent”), Scottsdale, AZ 85260.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bayloralumniliving.com>, <baylorcrave.com>, <baylorflorist.com>, <baylorfriscoivf.com>, <baylorhospital.mobi>, <baylorhospitals.mobi>, <baylorkehoe.com>, <baylorlocators.com>, <baylorsalsa.com>, <baylorsportstalk.com>, <baylorsportstalk.net>, and <baylorstudentliving.com>, registered with GoDaddy.com, 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.
Alan L. Limbury, Esq., as Panelist.
The Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2008 naming Domains by Proxy, Inc. as sole Respondent. The National Arbitration Forum received a hard copy of the Complaint on February 15, 2008.
On February 15, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that all the domain names at issue are registered with GoDaddy.com, Inc.and, as at February 15, 2008, were registered in the following names:
<baylorstudentliving.com> and <baylorlocators.com>: registrant Nathan Flaga, names created on November 21, 2006;
<baylorsportstalk.com> and <baylorsportstalk.net>: registrant Victor Weir III, names created on June 20, 2007;
<bayloralumniliving.com>: registrant Mark Felton, name created on July 7, 2007;
<baylorfriscoivf.com>: registrant Fertility Specialists of Dallas, name created on July 28, 2007;
<baylorflorist.com>: registrant William Bunn, name created on August 1, 2007;
<baylorcrave.com>: registrant Thomas Bassett, name created on September 3, 2007;
<baylorkehoe.com>: registrant Amanda Scott, name created on September 6, 2007;
<baylorsalsa.com>: registrant Lisa Payne, name created on September 12, 2007; and
<baylorhospital.mobi> and <baylorhospitals.mobi>: registrant Becky Chatham, names created on September 28, 2007.
GoDaddy.com, Inc. verified that each of those registrants is bound by the GoDaddy.com, Inc. 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 19, 2008, the National Arbitration Forum informed the Complainant:
As it appears there are multiple Respondents for the disputed domain names, the Complainant must choose which Respondent and corresponding domain name to remove from the complaint. Based upon that decision, the appropriate Respondent name and contact information must be provided. You may review the current Whois pages for reference.
On February 22, 2008, the Complainant amended its Complaint to name as one Respondent all those identified by GoDaddy, Inc. as registrants, each being named as alias the other. Domains by Proxy, Inc. was no longer named as a Respondent. However, the amended Complaint contended that Domains by Proxy, Inc. is the proper Respondent.
On February 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 19, 2008 by which the then registrants named as Respondent could file a Response to the Complaint, was transmitted to those registrants via e-mail, post and fax, to all entities and persons listed on each registration as technical, administrative and billing contacts, and by e-mail to email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org.
On March 18, 2008, a submission treated
On March 21, 2008, a submission treated
On March 25, 2008, an Additional Submission was received from Complainant within the time and in accordance with the National Arbitration Forum’s Supplemental Rule #7.
On March 26, 2008, a submission treated
On March 31, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L. Limbury Esq., as Panelist.
On April 1, 2008, a submission treated by the
In order for the Panel to consider the Complainant’s submission that Domains by Proxy is the proper Respondent, by Order dated April 8, 2008, pursuant to Paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel invited Complainant, within 5 calendar days, to file and serve an amended Complaint naming as Respondent: -
Domains by Proxy, a/k/a Mark Felton, a/k/a Thomas Bassett, a/k/a William Bunn, a/k/a Fertility Specialists of Dallas, a/k/a Becky Chatham, a/k/a Amanda Scott, a/k/a Nathan Flaga, a/k/a Lisa Payne, a/k/a Victor Weir III.
The Order also provided that, should Complainant so amend its Complaint, Domains by Proxy be invited, in its Response, without limiting the matters it may wish to address, to respond to Complainant’s assertion that Domains by Proxy registered some of the domain names at issue after having been notified of Complainant's trademark rights. [This was a misreading of the Complaint by the Panel. The Complainant did not make that assertion.] The time period for Decision was extended until further directive.
In response to a query on April 9, 2008 from Complainant to the National Arbitration Forum, the Panel agreed that it would be sufficient compliance with the Order for Complainant to send a hard copy and an electronic version of the amended complaint without exhibits to the aliases of Domains by Proxy and a hard copy of the amended complaint with exhibits to Domains by Proxy.
A duly amended Complaint in accordance with the Order was filed with the National Arbitration Forum on April 11, 2008 and served that day, in the manner described above, on Domains by Proxy Inc. and the persons named as aliases, together with a second Notification of Complaint and Commencement of Administrative Proceeding (the “Second Commencement Notification”), setting a deadline of May 1, 2008 by which the registrants named as Respondent could file a Response to the Complaint.
No Response was submitted by Domains by Proxy, Inc.
On April 24, 2008, a further an informal communication was received from Fertility Specialists of Dallas in relation to the domain name <baylorfriscoivf.com> and was forwarded to the Panel to decide whether it should be considered.
Pursuant to the Second Commencement Notification, the due date for the Panelist’s decision was May 16, 2008.
By a procedural order made on May 16, 2008, due to exceptional circumstances, the time period within which the Panel was required to render its Decision was extended until May 26, 2008.
Complainant requests that the domain names be transferred from Respondent to Complainant.
As a preliminary issue, Complainant submits that Domains by Proxy, Inc. is the proper Respondent, since it purports to register domain names on behalf of anonymous customers, promising them anonymity by concealing their identity through its “privacy service.” The customers pay Domains by Proxy to use its own name on the WHOIS database instead of theirs, even though Domains by Proxy says on its website at <www.domainsbyproxy.com>:
[t]he law requires that the personal information you provide with every domain you register be made public in the “WHOIS” database.
Domains by Proxy promises that its services will “stop harassers” and “prying eyes” from discovering the customer’s true identity, and will “protect [the customer’s] ‘moonlighting’ identity.”
Complainant says Domains by Proxy admits that it intends to evade any type of responsibility once legal action is taken, as its “Domain Name Proxy Agreement” with customers indicates that it will change the WHOIS information to reveal their identity once legal proceedings commence.
However, as appears from an e-mail dated September 28, 2007 from Domains by Proxy to Complainant’s counsel, Domains by Proxy will not reveal its customers’ identities, even those that it knows to be violating others’ trademark rights, unless and until official legal proceedings commence. Under virtually identical facts, a prior UDRP panel found:
[S]ince the kind of service offered by the Registrar [GoDaddy.com, Inc.] and the Respondent [Domains by Proxy], which allows registrants to obtain domain names with anonymous contact information, encourages Cybersquatting, the Respondent, being informed of a trademark violation, should use best endeavors to support the UDRP system and the injured trademark owners. On the contrary, besides the attempt of Cyberflying, the Respondent covered the true owner of the domain name, engaged in Cybersquatting, disclosing false contact details and thus obstructing the UDRP system: Dr. Ing h.c. F. Porsche AG v. Domains by Proxy, Inc. & Putinov, D2004-0311 (WIPO July 1, 2004) (finding Domains by Proxy was the proper respondent and had acted in bad faith, and transferring the domain name <pornsche.com>).
Here, after Complainant filed and served its Complaint against Domains by Proxy on February 14, 2008, Domains by Proxy changed all of the WHOIS information to reveal its customers’ identity. This violated the Policy, paragraph 8(a) and has been termed “cyberflight” by UDRP panels. Those customers are listed in this revised Complaint as “aliases” of Domains by Proxy so that the Complaint may proceed undivided. Indeed, to find instead that each of the customers is the “true” respondent would require the grossly inequitable result that Complainant re-file this complaint against eight additional individuals, and would allow Domains by Proxy to side-step all responsibility for its deceptive and unfair conduct.
Accordingly, Complainant says Domains by Proxy is the proper Respondent in this case because: (1) as a corporate entity, it listed itself as the registrant of the domain names on the WHOIS record; (2) it concealed its customers by refusing to give up their identities or otherwise investigate when Complainant notified it of potential trademark violations on September 19, 2007; (3) it forced Complainant to expend considerable unnecessary expense to enforce its rights; and (4) it violated the Policy by changing the WHOIS information after Complainant’s original complaint was filed and served on February 14, 2008.
Complainant’s history and marks
Complainant (“Baylor”) was originally chartered
in 1845 by the
Baylor is the owner of and has long used
marks that include the term BAYLOR in connection with a wide range of goods and
services. Baylor owns a number of
trademark registrations in the
HEALTH CARE SYSTEM:
Baylor’s licensee Baylor Health Care System (“BHCS”) has been operating an extensive system of hospitals and medical centers under the BAYLOR marks since at least 1959 and Baylor’s licensee Baylor College of Medicine (“BCM”) has been operating an internationally well known medical school under the mark BAYLOR COLLEGE OF MEDICINE since at least 1969.
On its campus in
Baylor also actively participates in many collegiate sports, including football. Baylor uses the BAYLOR marks extensively in connection with these sports teams, and fans of Baylor and its athletic programs can purchase a wide variety of licensed products adorned with the BAYLOR marks. Baylor’s sports teams have been referred to as the “Baylor Bears” since the adoption of the bear as Baylor’s mascot in 1914.
Baylor’s licensee M & K Dove Investments, Inc., d/b/a “Baylor Balloons and Flowers” (“BBF”) has been operating a florist shop under the marks BAYLOR BALLOONS AND FLOWERS and <baylorballoonsandflowers.com> since at least as early as 2000.
Identity and confusing similarity
Complainant says the disputed domain names are identical or confusingly similar to Complainant’s BAYLOR marks. Each contains the identical mark BAYLOR, a famous mark strongly associated with Baylor University, and many merely add generic or descriptive term(s) that would be associated with Baylor and/or its licensees. Hence:
the domain names <baylorhospital.mobi>, <baylorhospitals.mobi>
and <baylorfriscoivf.com> are
highly likely to be associated with Baylor through its licensee BHCS and/or its
medical facilities. BHCS operates a
number of hospitals in
· the domain names <baylorsportstalk.com> and <baylorsportstalk.net> are highly likely to be associated with Baylor’s many athletics programs;
· the domain names <baylorlocators.com>, <baylorstudentliving.com> and <bayloralumniliving.com> are highly likely to be associated with Baylor’s housing offerings; and
· the domain name <baylorflorist.com> is highly likely to be associated with Baylor through its licensee BBF.
Rights and legitimate interests
Complainant says Respondent has no rights or legitimate interests in the domain names at issue.
Respondent has not used, nor made any demonstrable preparations to use, the domain names or a name corresponding to these domain names in connection with a bona fide offering of goods or services. On September 19, 2007, Baylor’s attorneys sent a cease-and-desist letter to Respondent’s e-mail addresses: email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com.
Respondent responded with an e-mail addressing only <baylorsportstalk.com> and <baylorsportstalk.net> stating;
Domains by Proxy had forwarded your complaint to the customer. However, we have not received a response within the allotted timeframe. As such, we are considering the matter closed.
Subsequently, Baylor learned that Respondent had registered seven more domain names that incorporate the BAYLOR mark: <bayloralumniliving.com>, <baylorflorist.com>, <baylorcrave.com>, <baylorhospital.mobi>, <baylorhospitals.mobi>, <baylorkehoe.com> and <baylorsalsa.com>. Respondent continues to use the domain names in violation of Baylor’s rights. Most of the domain names are used in connection with parking pages that appear to relate to Baylor or its licensees, yet divert traffic to third-party websites not affiliated with Baylor. Specifically:
the website at <baylorsalsa.com> includes links entitled, “
the website at <baylorkehoe.com> included links entitled “Baylor University
Alumni,” and “
· the website at <baylorcrave.com> includes links entitled, “Baylor University Waco Tx,” and “Baylor Bears Store,” among many other links incorporating the BAYLOR marks;
the website at <baylorlocators.com> is entitled BAYLORLOCATORS.COM and
displays a number of links relating to housing in
· the website at <baylorstudentliving.com> is entitled “BAYLORSTUDENTLIVING.COM” and displays a number of links relating to financial aid and education-related services;
· the website at <baylorsportstalk.com> includes links entitled “Baylor Bears Tones” and “Baylor Football,” among many other links incorporating the BAYLOR marks;
· the website at <baylorsportstalk.net> includes a link entitled “Baylor Bears Tones” among various other links relating to football and collegiate sports;
the website at <baylorfriscoivf.com> includes links relating to
· the websites located at <baylorhospitals.mobi> and <baylorhospital.mobi> are parking pages entitled “baylorhospitals.mobi” and “baylorhospital.mobi,” respectively, with links to the Registrar’s websites.
The remaining domain names are used for the websites of competitors of Baylor or its licensee. Specifically:
the website at <bayloralumniliving.com> is used for a website offering
housing services in
the website at <baylorflorist.com> is used for a website for a
Complainant further says Respondent is not commonly known by the domain names at issue and is not making a legitimate noncommercial or fair use of the domain names.
Complainant says Respondent registered the domain names at issue in bad faith.
Complainant says Respondent’s privacy service, by its very nature, is evidence of bad faith: Dr. Ing h.c. F. Porsche AG v. Domains by Proxy, Inc. & Putinov, D2004-0311 (WIPO July 1, 2004). Respondent conceals the identity of its customers, engages in cybersquatting, ignores the demands of trademark owners and discloses false contact details, thereby obstructing the UDRP system.
registration of domain names that incorporate the BAYLOR marks which are used
in connection with websites which provide pay-per-click links is registration
and use in bad faith: See, e.g.,
Respondent’s registration of domain names that incorporate the BAYLOR marks which are used for the websites of competitors of Baylor and its licensees is registration and use in bad faith: Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003).
Respondent’s alteration of the WHOIS records to reflect its customers’ identities after receiving notice of Complainant’s original UDRP complaint (“Cyberflying”) violates ICANN Policy and is evidence of bad faith: Dr. Ing h.c. F. Porsche AG v. Domains by Proxy, Inc. & Putinov, D2004-0311 (WIPO July 1, 2004).
Respondent has engaged in a pattern of bad faith registration and use of others’ trademarks as domain names. Searches of the WIPO database show 29 UDRP decisions against Respondent resolving in favor of Complainant. Complainant believes that there are many more decisions against Respondent. However, UDRP panel decisions will typically employ the name of the Domains by Proxy customer as the Respondent once Domains by Proxy changes the WHOIS information, without questioning whether it is procedurally appropriate: See e.g., Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007). However, pursuant to paragraph 8(a) of ICANN Policy, the true identity of the Respondent is that which is recorded in the WHOIS database as of the filing date of the UDRP complaint, and any alteration of this information or transfer of the domain name violates this provision: Dr. Ing h.c. F. Porsche AG v. Domains by Proxy, Inc. & Putinov, D2004-0311 (WIPO July 1, 2004).
Respondent has refused to address Baylor’s demands and continued its infringing activity despite being given notice of Baylor’s trademark rights.
Not only are the domain names at issue themselves highly likely to cause confusion but many display unauthorized link titles on their websites that are obvious references to Baylor and/or its licensees.
Respondent’s bad faith is further evidenced by the fact that it owns no trademark or other intellectual property rights in the domain names at issue; the domain names do not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the domain names in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the domain names; and Respondent’s domain names incorporate exactly the highly distinctive and famous mark BAYLOR, and most also include generic or descriptive terms closely associated with Baylor and its licensees. See 15 U.S.C. § 1125(d)(1)(B)(i).
The fact that Respondent registered at least twelve domain names that contain the BAYLOR marks also is evidence of bad faith: Schwab v. Stanley, FA 95038 (Nat. Arb. Forum July 17, 2000) (“the registration of numerous domain names reveals bad faith,” finding three domain names sufficient).
As mentioned, no Response was submitted by Domains by Proxy, Inc. Four of its customers did, however, make
submissions which the
In relation to this domain name, Ms. Payne contended that all three
elements should be determined against Complainant because “Baylor” is the name
of her son, a 10-year old 5th grade student in Indiana who simply wanted
a domain name to reflect his name and his favorite food, “salsa.” The site is not connected with
As part of her submission Ms. Payne annexed a copy of the free parked
page at <baylorsalsa.com>, “courtesy
GoDaddy.com,” which contained ten sponsored listings, the first of which is “
In relation to
this domain name, Ms. Scott contended that all three elements should be
determined against Complainant because the
domain name <baylorkehoe.com>
is not confusingly similar to the “Baylor” mark.
The domain name <baylorkehoe.com> was purchased on September 6, 2007. On the same day, as evidenced by the receipt from Godaddy.com, Ms. Scott also purchased another domain, <merrittkehoe.com>. This was to post children’s pictures relating to Ms. Scott and her significant other, Michael Kehoe. The domain name has been “parked” using GoDaddy.com since September 6, 2007. Ms. Scott has no control over what links are posted on <baylorkehoe.com> while the site is parked. <baylorkehoe.com> was also registered privately using Domains by Proxy to protect the privacy of Ms. Scott and family. Due to the nature of the content planned for <baylorkehoe.com>, Ms. Scott feels it is necessary to protect privacy.
In relation to
this domain name, Dr. Jerald S. Goldstein of Fertility Specialists of Dallas
wrote informally to the Forum on March 19, 2008 to say it is in the process of
negotiating a lease next to the
In relation to this domain name, William Bunn wrote that he agreed in a conversation with Complainant’s attorney not to re-register the name <baylorflorist.com> when it comes up for renewal and to transfer the name to the attorney as soon as he was given directions on how to do so.
C. Additional Submission
While the Forum’s Supplemental Rules permit the filing of submissions in addition to the Complaint and Response, they cannot require the Panel to consider them because to do so would be inconsistent with paragraph 12 of the Rules, which does not contemplate unsolicited submissions after the Complaint and Response and gives the Panel the "sole discretion" as to acceptance and consideration of additional submissions. See Eskimos, Inc. v. Phillips, FA 105950 (Nat. Arb. Forum May 15, 2002); Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) and Alain-Martin Pierret v. Sierra Tech. Group, LLC, FA 472135 (Nat. Arb. Forum July 1, 2005).
In this case, the Panel admits Complainant’s additional submission insofar as it addresses matters raised in the submissions from the customers of Domains by Proxy that it could not reasonably have anticipated.
As regards <baylorkehoe.com>, Complainant says that because Ms. Scott used the Domains by Proxy “privacy service,” Complainant had no knowledge of her intention to use the domain name for a personal site relating to a child named Baylor Kehoe until she filed her Response. Complainant’s attorneys then proposed that if she would she agree to use the domain name only for personal use as she had described and to contact GoDaddy.com to remove the parked page, Complainant would no longer seek transfer of the domain name. At first she agreed to this but subsequently withdrew from that agreement. Complainant suggests Ms. Scott’s refusal to agree to use the domain name for personal use as she claims undermines her claim of legitimate interest. Likewise her refusal to remove the parked page indicates bad faith.
As regards <baylorsalsa.com>, Complainant says that, contrary to Ms. Payne’s claim that the domain name is not used for any content, at the time of filing the Complaint and currently, the domain name is used for a parking page with links entitled “Baylor University,” “Baylor College,” and “Baylor Bears,” among other links that clearly reference Complainant. Complainant also opposes what it perceives as a suggestion that the Panel make a finding of Reverse Domain Name Hijacking.
Domains by Proxy, Inc. is the appropriate Respondent. The submissions of its customers, although strictly inadmissible, have been taken into account in the interests of fairness.
It is unnecessary to make a finding in relation to the domain names <baylorfriscoivf.com> and <baylorflorist.com> since Fertility Specialists of Dallas and William Bunn effectively consent to transfer.
Complainant has established all elements entitling it to the relief it seeks in relation to all the other disputed domain names.
Preliminary Issue: Who is the correct Respondent?
The Policy under which this dispute is to be determined has been adopted by all ICANN-accredited domain name Registrars and is incorporated by reference into and therefore forms part of a contract between the Registrar (in this case GoDaddy.com) and its customer (the domain name holder or registrant): See Notes 2 and 3 to and paragraph 1 of the Policy. I n this case it is unclear whether GoDaddy.com entered into such a contract with Domains by Proxy. According to GoDaddy.com, Domains by Proxy’s customers entered into registration agreements with it binding them to the Policy.
When the Policy was introduced in 1999, there were no privacy or proxy services. Early Panel decisions took the clear and unequivocal position that there is no place for beneficial ownership under the Policy:
The register maintained by an ICANN
registrar must provide accurate information as to the identity of domain
registrants. The human person or other
legal entity shown as the registrant must be assumed to be such by third
parties seeking to ascertain a registrant’s identity by such means as a Whois
search. There is no place for the
registration of bare trustees or agents for unnamed beneficiaries, principals
or would-be purchasers. In that respect,
a domain name register is like the register for land and shipping under the
See also Gloria-Werke H. Schulte-Frankenfeld GmbH & Co. v. Internet Dev. Corp. & MacKenzie, D2002-0056 (WIPO Apr. 26, 2002) and Rug Doctor L.P. v. Bourdage, DTV2003-0002 (WIPO May 14, 2003).
With the introduction of proxy services the concept of “beneficial,” “underlying,” or “true” ownership has been somewhat hesitantly recognized, as has the potential for abuse by cybersquatters: see WWF-World Wide Fund for Nature v. Moniker Online Services LLC & Ricks, D2006-0975 (WIPO Nov. 1, 2006) and the thorough analysis in iFranchise Group v. Bean / MDNH, Inc. / Moniker Privacy Servs. , D2007-1438 (WIPO Dec. 18, 2007).
Unlike many proxy cases in which, upon being informed of the change in registrant details following the filing of the complaint, the complainant amends the complaint so as to name the “true owner” as sole or joint respondent without raising any objection, such as in F. Hoffmann-La Roche AG v. PrivacyProtect.org, Contact Id 1328832, Alexey Dronin, D2008-0417 (May 5, 2008), Complainant here has protested at being required to amend its complaint and maintains that Domains by Proxy is the proper Respondent. That question must therefore be addressed, since Complainant seeks to rely on asserted bad faith and lack of rights or legitimate interests on the part of Domains by Proxy. That is why the Panel invited Complainant to amend further, so as to name Domains by Proxy as Respondent, as it had in the Complaint as filed, with Domains by Proxy’s customers named as aliases.
Under the current ICANN Registrar Accreditation Agreement, section 3.3, the Registrar is required to maintain or take responsibility for an interactive web page and a port 43 WHOIS service providing free public query-based access to up-to-date (i.e., updated at least daily) data concerning all active Registered Names sponsored by the Registrar for each TLD in which it is accredited. That database is required to contain, inter alia, the name and postal address of the Registered Name Holder.
One reason why the postal address shown in the WHOIS database is important is because, in order for the Policy to work as intended, a Respondent against whom an order is made by the Panel must be able to initiate court proceedings in a jurisdiction to which the Complainant has submitted. Accordingly, under paragraph 3(xiii) of the Rules, the Complaint must state that the Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the courts in at least one specified “Mutual Jurisdiction,” defined in paragraph 1 of the Rules as:
a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s Whois database at the time the complaint is submitted to the Provider.
F. Hoffmann-La Roche AG v. PrivacyProtect.org, Contact Id 1328832, Alexey
(WIPO May 5, 2008), the registrant used a privacy service in the Netherlands
and did not submit to the jurisdiction of the
courts at the principal office of the registrar. The complainant amended the complaint, naming
the newly disclosed registrant and submitting to “the jurisdiction of the
courts at the location of the domain-holder’s address as shown for the
registration of the domain name in Registrar’s Who-Is database at the time when
we submitted the Complaint to [the Provider].” The Panel found that this was a submission to
the courts of the
Paragraph 1 of the Rules defines Respondent as “the holder of a domain-name registration against which a complaint is initiated.” Paragraph 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Paragraph 3(v) requires a complainant to “provide the name of the Respondent (domain name holder)” and all contact information known to the complainant, in sufficient detail to allow the Provider to fulfill its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to Respondent of the complaint.”
In Padberg v. Eurobox Ltd., D2007-1886 (WIPO Mar. 10, 2008), the panelist said:
So who is the Respondent for the purposes of 3(b)(v) of the Rules? In the Panel’s opinion the only sensible answer to this question is that it is prima facie the entity that is recorded in the registrar’s register as revealed by a Who-Is search. There may be cases where it is believed by the complainant that this is a false address or pseudonym for the “true” or “real” owner of the domain name, and in such a case if the complainant believes it knows who the “true” or “real” owner is, this should be disclosed. However, in a case where this is not known to the complainant, it is sufficient that it simply identifies the individual or entity recorded in the Who-Is search results at the time the Complaint is filed. In such a case, the complaint is compliant so far as this aspect of the Rules is concerned.
Although the definition of Respondent in the Rules does not include the words “at the time the complaint is submitted to the provider,” the National Arbitration Forum’s Supplemental Rule 1(d) defines “The Holder of a Domain Name Registration” as used in the Rules as “the single person or entity listed in the WHOIS registration information at the time of the filing of the Complaint with the Forum; and once the Registrar has verified the information, is limited to the single person or entity as verified by the Registrar.”
Here there is no dispute that, at the time of the filing of the Complaint on February 14, 2008, all the domain names at issue were registered in the name of the single entity Domains by Proxy, Inc., as shown in the Registrar’s WHOIS registration information. This reflects the arrangement contemplated by the Domains by Proxy “Domain Name Proxy Agreement” with its customers, which provides in Section 1:
When you subscribe to DBP’s private registration service through a DBP -affiliated Registrar, each and any available domain name registration that You designate will thereafter be registered in the name of DBP, as Registrant.
In conformity with the National Arbitration Forum’s Supplemental Rule 4(e), Complainant transmitted a copy of the Complaint to the Registrar at the same time as the Complaint was sent to the Forum. Complainant so certified in paragraph 8 of its Complaint. By the next day, February 15, 2008, the WHOIS registration information had been changed to name each of those named as aliases in the amended Complaint as registrants of their respective domain names. This is the information that the Registrar “verified.” It did not verify the WHOIS registration information as at the time of the filing of the Complaint.
Having regard to the language of
the Forum’s Supplemental Rule 1(d), the correct interpretation of the words
“once the Registrar has verified the information” is that the information which
the Registrar is required to verify is the WHOIS registration information at
the time of the filing of the Complaint. This approach is supported by
paragraph 8(a) of the Policy, which prohibits a “transfer” of a domain name
registration during a pending proceeding, i.e. a proceeding that has been
initiated by the filing of a Complaint. See
Disney Enters., Inc. v. Zuccarini,
Although paragraph 3 of the Policy permits a Registrar to make changes to a domain name registration in certain specified circumstances including “in accordance with the terms of your Registration Agreement,” any provision of a Registration Agreement inconsistent with the Policy and the Rules would be ultra vires the Registrar. Having regard to paragraphs 3 and 8(a) of the Rules and the definitions previously mentioned, It is hard to see any basis, within the language of the Policy, the Rules and the Forum’s Supplemental Rules, (none of which were devised with proxy services in mind) for a change to be made by the Registrar, after the filing of a Complaint, to the domain name holder’s name in the WHOIS database, merely because the registrant has agreed to act as proxy for the “true” or “beneficial” owner.
It follows that a Complaint which identifies as the respondent the person or entity named as the registrant in the WHOIS registration information at the time of the filing of the Complaint is not administratively deficient and does not require amendment in order for it to be forwarded to the respondent by the Provider and considered by the Panel.
The practice of Providers in seeking from Registrars confirmation of the identity of the registrant is not required under the Policy or the Rules but is prudent and appropriate, having regard to the responsibility of Providers under paragraph 4(a) of the Rules to review the Complaint for administrative compliance with the Policy and the Rules before forwarding it to the Respondent. However, the practice of Registrars in permitting or themselves effecting changes to the WHOIS registration information after receiving a copy of the Complaint at the time of its filing and purporting to “verify” that information, rather than the information as at the time of the filing of the Complaint, is not in keeping with the intent nor within the language of the Policy, the Rules or the Forum’s Supplemental Rule 1(d).
[…] Recent WIPO panel decisions have pointed out that a privacy shield should not be used to protect cybersquatting practices. Panels have recognized legitimate uses of such services, but also make it clear that the shielding of information can create difficulties for panelists, parties and providers in determining the identity of the domain name registrant for cases brought under the UDRP (WIPO Case No. D2007-1438) […]
[…] In certain instances the intended functioning of the UDRP is frustrated by […] ‘cyberflight’- related or other modifications to registrant data after a complaint is filed […] Rights holders, panels and the Center have felt the effects of the increasing complexity posed by these developments.
For the purpose of enabling trademark owners to identify the appropriate Respondent and to determine to which jurisdiction they should agree to submit, this Panel considers that the Policy, the Rules and the Forum’s Supplemental Rules all require that the Respondent be the domain name holder whose name and postal address appear in the Registrar’s WHOIS registration information at the time the Complaint is submitted to the Forum, even if that person or entity be a proxy.
Accordingly, the Panel finds that Domains by Proxy is the proper Respondent in this case since it was the Registrant named in the WHOIS registration information in relation to all of the disputed domain names when the Complaint was filed.
That does not mean, however, that Respondent’s customers, having been identified, should not, as a matter of fairness, be afforded an opportunity to make submissions and to have them taken into account. Treating them as aliases of Respondent is one (cumbersome) way by which they may be brought into the proceeding, to receive copies of the Complaint and to make submissions, which, by bending over backwards, the Panel may choose to treat as being made by Respondent for the purposes of paragraphs 10 and 12 of the Rules.
Because proxy services were not contemplated when the Policy was adopted, leading to the strained interpretations that various panels (including this one) have placed on the Policy and Rules in order to cope with this phenomenon, it is respectfully suggested that ICANN consider making suitable amendments to the Policy and the Rules to accommodate and regulate proxy services so as to serve the legitimate interests of both trademark owners and domain name registrants. The suggestions made in Fifth Third Bancorp v. Secure Whois Info. Serv., D2006-0696 (WIPO Sept. 14, 2006), mentioned below, might provide a useful starting point.
Consents to Transfer
The submissions of William Bunn in relation to <baylorflorist.com> and Fertility Specialists of Dallas in relation to <baylorfriscoivf.com> amount to consents to the transfer of those domain names to Complainant. Since Respondent Domains by Proxy has acted as a proxy for those customers, their consent to transfer may be taken to be its consent. Under these circumstances it is unnecessary to engage in the traditional UDRP analysis and the panel may order transfer: See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003); Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) and Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005).
What follows relates only to the remaining domain names at issue.
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 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.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 20, 2000). See also Microsoft Corp. v. Freak Films Oy, D2003-0109 (WIPO Mar. 31, 2003); SSL Int’l plc v. Freeman, D2000-1080 (WIPO Nov. 15, 2000); Alta Vista Co. v. Grandtotal Fins. Ltd.., D2000-0848 (WIPO Oct. 26, 2000); Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) and Talk City, Inc. v. Robertson, D2000-0009 (WIPO Mar. 3, 2000).
However, in the particular circumstances of this case, the Panel has considered the submissions of Respondent’s customers and, by bending the Rules to breaking point, has treated those submissions as having been made by Respondent, in order to do justice to those who actually paid for the domain names and chose to use Respondent’s proxy service to shield their identities.
Each of the disputed domain names wholly incorporates Complainant’s registered
trademark BAYLOR, Reg. No. 1,465,910 issued Nov. 17, 1987, together with
other words. The Panel finds that none
of those other words is sufficient to distinguish the domain name from
Complainant’s mark and that all the domain names are confusingly similar to
Complainant’s mark. See Arthur Guinness Son & Co. (
Complainant has established this element in relation to each of the domain names.
Neither Respondent Domains by Proxy nor any of its customers appear to be known by any of the domain names at issue and none have Complainant’s permission to use its distinctive mark in registering any of the domain names. These circumstances and Complainant’s evidence (by way of Exhibits to the Complaint) as to the uses to which the domain names have been put are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain names on the part of Respondent and its customers. The evidentiary burden therefore shifts to Respondent and (by way of indulgence from the Panel) its customers, to show by concrete evidence its or their rights or legitimate interests in those names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and the cases there cited.
In the absence of any Response from Domains by Proxy and any submissions from Nathan Flaga in relation to <baylorstudentliving.com> and <baylorlocators.com>; Victor Weir III in relation to <baylorsportstalk.com> and <baylorsportstalk.net>; Mark Felton in relation to <bayloralumniliving.com>; Thomas Bassett in relation to <baylorcrave.com> and Becky Chatham in relation to <baylorhospital.mobi> and <baylorhospitals.mobi>, the Panel finds that neither Respondent Domains by Proxy nor any of those persons has any rights or legitimate interests in those domain names.
As to <baylorsalsa.com>, there is no evidence before this Panel
that “Baylor” is the name of Ms. Payne’s son. The website at <baylorsalsa.com> includes links entitled “
Ms. Payne says she did not authorize GoDaddy.com to park this page here, as the
person who chose the domain name, the Registrar and the privacy service, Ms.
Payne must be held responsible for the use to which the domain name is put, on
the principle Qui facit per alium facit
per se. See
Grundfos A/S v.
The Panel finds that neither Respondent Domains by Proxy nor its customer, Ms. Payne have any right or legitimate interest in this domain name.
The domain name <baylorkehoe.com> was purchased by Ms. Scott on September 6, 2007. On the same day, as evidenced by the receipt from Godaddy.com, Ms. Scott also purchased the domain <merrittkehoe.com>. Ms. Scott has shown that she shares a home with her partner, Mr. Kehoe. However, there is no evidence to support Ms. Scott’s assertion that they plan to use <baylorkehoe.com> to post children’s pictures belonging to Ms. Scott nor that Baylor is a child’s name relating to Ms. Scott.
The domain name
has been “parked” using GoDaddy.com since September 6, 2007. The website at <baylorkehoe.com>
included links entitled “Baylor University Alumni,” and “
Accordingly the Panel finds that neither Domains by Proxy nor any of its customers have any rights or legitimate interests in any of the disputed domain names.
Complainant has established this element.
In holding that proxy registration is not necessarily a sign of illegitimate purpose, the Panel in Fifth Third Bancorp v. Secure Whois Info. Serv., D2006-0696 (WIPO Sept. 14, 2006) said:
“Domain privacy” is an understandable objective, particularly for individuals who do not want to have their physical and electronic addresses exposed on the Internet. However, ICANN policies are designed to preserve accountability for unlawful acts on the Internet, including the UDRP for resolving claims of abusive domain name registrations. A balance between domain privacy and accountability might be achieved by listing the actual registrant’s name with a proxy service’s mail-forwarding address, which is what some proxy service providers offer. Other proxy service providers list the domain in their own name but provide, by contract, that the domain reverts to the real party in interest in the event of a claim. Some service contracts also expressly provide that the proxy service provider may disclose the name and address of the real party in interest to a court, arbitrator, or administrative panel.
Even with such provisions, proxy registration can be abused by cybersquatters, as the panel concluded in Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311 (finding bad faith on the part of the proxy service provider as well as by the real party in interest):
“finally the Panel cannot disregard the fact that, since the kind of service offered by the Registrar and the Respondent, which allows registrants to obtain domain names with anonymous contact information, encourages Cybersquatting, the Respondent, being informed of a trademark violation, should use best endeavours to support the UDRP system and the injured trademark owners. On the contrary, besides the attempt of Cyberflying, the Respondent covered the true owner of the Domain Name, engaged in Cybersquatting, disclosing false contact details and thus obstructing the UDRP system.””
Not every change of registrant information following the filing of a Complaint amounts to Cyberflying, a term not used in the Policy or Rules and first defined as occurring “where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding”: British Broad. Corp. v. Data Art Corp. / Stoneybrook, D2000-0683 (WIPO Oct. 2, 2000).
It is clear that in this case the changes in registration information were intended to reveal the identities of the customers of Domains by Proxy, not to disrupt the proceeding. Those changes did not constitute cyberflying.
The service offered by Domains by Proxy is a privacy service designed to “stop domain-related spam; deter identity theft and fraud; stop harassers, stalkers and data miners cold in their tracks; protect your “moonlighting” identity; and maintain the privacy of you and your family.” Section 2 of Domains by Proxy’s Domain Name Proxy Agreement provides that: “Although DBP will be the Registrant […] you will retain the full benefits of domain name registration…” including “The right to control the use of each domain name registration, including designating the primary and secondary domain name servers to which each domain name points.” However, the benefits are all subject to “DBP’s Section 4 rights. These include DBP’s right under sub-section 4(i) “to either …
(ii) reveal Your name and personal information that You provided to DBP when required by law, in the good faith belief that such action is necessary in order to conform to the edicts of the law, or to comply with a legal process served upon DBP;
(iii) resolve any and all third party claims, whether threatened or made, arising out of Your use of a domain name registered by DBP on Your behalf; or
(iv) take any other action DBP deems necessary…
D. To comply with ICANN’s Dispute Resolution Policy; […]
F. If the domain name DBP registers on your behalf violates or infringes a third party’s trademark, trade name or other legal rights […]”
Sub-section 4(iii) provides:
You further acknowledge and agree that if DBP is named as a defendant in, or investigated in anticipation of, any legal or administrative proceeding arising out of Your domain registration or your use of DBP’s services, Your private domain name registration will automatically revert back to You and Your identity will therefore be revealed in the Whois directory as Registrant.
In this case, Complainant’s counsel wrote to Domains by Proxy on September 19, 2007, putting it on notice of its BAYLOR trademark rights; alleging the registration and use of the domain names <baylorlocators.com>, <baylorstudentliving.com>, <baylorsportstalk.com>, <baylorsportstalk.net>, <baylorfriscoivf.com> and two others not at issue in this proceeding violated U.S. trademark law and the Policy; and demanding that Domains by Proxy agree to transfer to Complainant those domain names and any others owned by Domains by Proxy containing the word BAYLOR or any other confusingly similar mark.
Instead of automatically revealing the identity of its customers in the WHOIS directory as Registrants, Domains by Proxy replied on September 28, 2007 in relation to the domain names <baylorsportstalk.com> and <baylorsportstalk.net>:
Domains by Proxy had forwarded your complaint to the customer. However, we have not received a response within the allotted timeframe. As such, we are considering the matter closed. If you decide to pursue the matter through legal methods, please submit a copy of the legal complaint and/or refer to our subpoena policy found at the link below…
That same day, more than a week after having been put on notice of Complainant’s trademark rights, Domains by Proxy registered the domain names <baylorhospital.mobi> and <baylorhospitals.mobi>. The Panel finds that Respondent Domains by Proxy registered those domain names in bad faith, with full knowledge of Complainant’s BAYLOR trademark.
domain name resolves to a website offering housing services in
This constitutes evidence of both bad faith registration and
bad faith use pursuant to the Policy ¶ 4(b)(iv). That paragraph
does not require the owner of the domain name to be the entity that
commercially gains from the diversion. See V&S Vin&
Accordingly the Panel finds that all the domain names were registered and are being used in bad faith. Complainant has established this element.
Noting the consents to transfer of William Bunn in relation to <baylorflorist.com> and Fertility Specialists of Dallas in relation to <baylorfriscoivf.com> and noting that Complainant has established all three elements required under the ICANN Policy in relation to the other domain names at issue, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bayloralumniliving.com>, <baylorcrave.com>, <baylorflorist.com>, <baylorfriscoivf.com>, <baylorhospital.mobi>, <baylorhospitals.mobi>, <baylorkehoe.com>, <baylorlocators.com>, <baylorsalsa.com>, <baylorsportstalk.com>, <baylorsportstalk.net>, and <baylorstudentliving.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Esq., Panelist
Dated: May 26, 2008
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