Claim Number: FA0803001163868
PARTIES
Complainant is
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <baylorpsychiatrist.com> and <baylorpsychiatry.com>,
registered with Wild West Domains, Inc.
PANEL
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.
David P. Miranda, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 17, 2008; the
National Arbitration Forum received a hard copy of the Complaint on March 18, 2008.
On March 18, 2008, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <baylorpsychiatrist.com> and <baylorpsychiatry.com>
domain names are registered with Wild West
Domains, Inc. and that the Respondent is the current registrant of the
names. Wild
West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 March 19, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 8, 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 postmaster@baylorpsychiatrist.com and
postmaster@baylorpsychiatry.com by e-mail.
A timely Response was received and determined to be complete on April 7, 2008.
Additional Submissions were received on April 15, 2008 and April 22,
2008, and are in compliance with Supplemental Rule 7.
On April 14, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
·
BAYLOR,
Reg. Nos. 1,465,910, 1,468,436, 1,858,559, and 1,936,714
·
·
·
BAYLOR
HEALTH CARE SYSTEM, Reg. No. 1,515,737
·
BAYLOR
SURGICARE, Reg. No. 1,640,840
·
·
BAYLOR
HEART SCAN, Reg. No. 3,098,570
·
Complainant’s BAYLOR marks are used in connection with medical-related
services and education, primarily through Baylor’s licensees Baylor Health Care
System (“BHCS”) and Baylor College of Medicine (“BCM”).
Baylor’s licensee BCM has been operating a medical school under the
mark BAYLOR COLLEGE OF MEDICINE since at least 1969. It consistently ranks among the top medical
schools in the
The Department of Psychiatry and Behavioral Sciences at BCM offers an
array of residency opportunities for new doctors, research and educational
programs for its medical students, and mental health
care for the community through its clinical services.
BHCS offers psychiatric services to meet behavioral health care needs
such as bipolar disorder, depression, and schizophrenia. The domain names at issue in this
complaint are identical or confusingly similar to Complainant’s BAYLOR
marks. Each contains the identical mark
BAYLOR — a famous mark strongly associated with
Complainant further contends Respondent’s bad faith is evidenced by the fact that it owns no trademark or other intellectual property rights in the domain names; the domain names do not consist of the legal name of or a name commonly used to identify Respondent. Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website <findcounseling.com/texas>.
The Complainant requests that the Panel issue a decision that the
domain name registrations be transferred.
B. Respondent
Respondent does not contest Complainant’s trademarks, or the famousness
of the marks. Respondent contends that it has a legitimate
interest in the domain names, which were registered in reference to Baylor
County Texas, not
C. Additional Submissions
Complainant contends that Respondent was aware of
FINDINGS
The Panel finds that Complainant is the owner of multiple federally registered marks for BAYLOR and marks that include the term BAYLOR, in connection with a wide range of goods and services, and that the domains at issue are confusingly similar to Complainant’s marks. Respondent has not demonstrated any rights or legitimate interests in the disputed domain names and the disputed domain names have been registered, and are being used in bad faith. The Panel directs that the domain names be transferred to Complainant.
DISCUSSION
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
asserts ownership of registrations for various service marks and trademarks
with the United States Patent and Trademark Office (“USPTO”) for various marks
related to its University. Applicable to
the instant dispute is the registration for the BAYLOR service and trademarks
(Reg. No. 1,645,910 issued November 17, 1987).
The Panel finds that Complainant’s registrations sufficiently confer
rights for the purposes of Policy ¶ 4(a)(i).
The
<baylorpsychiatrist.com>
and <baylorpsychiatry.com> domain names are confusingly similar to Complainant’s BAYLOR
mark under Policy ¶ 4(a)(i). Complainant contends that the disputed domain
names contain Complainant’s mark in its entirety, along with the addition of
either the term “psychiatrist” or “psychiatry,” which Complainant contends has
a direct relationship to Complainant’s medical school. The addition of the generic top-level domain
“.com” is irrelevant as all domain names are required to have a top-level
domain. See Constellation
Wines
Respondent does not address the elements of
Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
There is no evidence in the record that Respondent has ever been commonly known by the <baylorpsychiatrist.com> and <baylorpsychiatry.com> domain names, or authorized by Complainant to use the BAYLOR mark. Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name); see also eLuxury.com, Inc. v. Sandulli, FA 960178 (Nat. Arb. Forum June 7, 2007) (finding that the respondent was not commonly known by the <eluxury.mobi> domain name where it was not known by the name at the time of registration and the complainant had not given the respondent a license). Complainant contends that Respondent has previously used the disputed domain names to advertise services in direct competition with those offered by Complainant’s medical school. Respondent has not established use of the <baylorpsychiatrist.com> and <baylorpsychiatry.com> domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark); see also Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant
argues that Respondent has offered the <baylorpsychiatrist.com> and <baylorpsychiatry.com>
domain names for sale through the websites that resolve from the disputed
domain names. Respondent disputes that
it has offered for “sale,” but admits its intention is to make the domains
“available” to paying members of its service who might want them in the
future. See Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Serv., FA 95685
(Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain
name, even if no certain price is demanded, are evidence of bad faith”). Respondent also admits that it has registered multiple
domain names containing the famous trademarks of others.
The hyperlinks
that are and that have previously been displayed on the websites that resolve
from the disputed domain names are alleged to be in competition with
Complainant and its services, and a disruption of Complainant’s business under
Policy ¶ 4(b)(iii). See Marriott
Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus
operates in the same business as the Complainant. The parties can
therefore be considered as competitors. The Panel thus finds that the
Respondent registered the domain name primarily for the purpose of disrupting
the business of a competitor, which constitutes evidence of registration and
use in bad faith under Policy 4(b)(iii).”); see
also Classic Metal Roofs, LLC v.
Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding
that the respondent registered and used the <classicmetalroofing.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet
users to the respondent’s competing website).
The <baylorpsychiatrist.com>
and <baylorpsychiatry.com> domain names and resulting
websites are capable of causing confusion as to Complainant’s source,
sponsorship, affiliation or endorsement with the disputed domain names and
corresponding websites. ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat.
Arb. Forum May 25, 2006) (finding that the respondent’s use of the
<arizonashuttle.net> domain name, which contained the complainant’s
ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website
offering competing travel services violated Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and
used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylorpsychiatrist.com> and <baylorpsychiatry.com>
domain names be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: April 30, 2008
National
Arbitration Forum