The Board of Regents, The
Claim Number: FA0804001176863
PARTIES
Complainant is The Board of Regents, The Univeristy of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universityoftexas.com>, registered
with Fabulous.com
Pty Ltd.
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 8, 2008; the
National Arbitration Forum received a hard copy of the Complaint on April 9, 2008.
On April 9, 2008, Fabulous.com Pty Ltd. confirmed by e-mail to
the National Arbitration Forum that the <universityoftexas.com> domain name
is registered with Fabulous.com Pty Ltd.
and that the Respondent is the current registrant of the name. Fabulous.com
Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 April 11, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 1, 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@universityoftexas.com by e-mail.
A timely Response was received and determined to be complete on April 30, 2008.
A timely Additional Submission was received from Complainant on May 2,
2008, and determined to be complete pursuant to Supplemental Rule 7.
A timely Additional Submission was received from Respondent on May 7,
2008, and determined to be complete pursuant to Supplemental Rule 7.
On May 8, 2008, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Terry F. Peppard as sole Panelist
in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends, among other things, that:
Complainant is a
The flagship institution within The University of Texas System is The University of Texas at Austin (“UT”), founded in 1883.
In addition to providing high-quality educational services, UT actively
participates in many collegiate sports, including football, baseball,
basketball, cross-country, golf, rowing, soccer, softball, swimming and diving,
tennis, track and field, and volleyball.
In connection
with its promotion of these activities, Complainant owns a number of trademark
registrations for the
The domain name at
issue in this proceeding is identical or confusingly similar to Complainant’s
Respondent has
no rights to or legitimate interests in the subject domain name.
Respondent has not used, nor made
any demonstrable preparations to use, the domain name or a name corresponding
to the domain name in connection with a bona
fide offering of goods or services.
Respondent uses the domain name in
connection with a search directory page displaying links with titles likely to
be associated with Complainant or its products and services, such as “
Respondent has ignored Complainant’s demands that it cease using the subject domain name, and has continued its infringing activity despite being given notice of Complainant’s trademark rights.
Respondent is not commonly known by the domain name at issue.
The domain name itself is highly likely to cause confusion among Internet users, and the website to which the subject domain name resolves displays links containing clear references to Complainant and its goods and services.
Respondent registered and uses the subject domain name in bad faith.
B. Respondent
Respondent contends, among other things, that:
Respondent acquired the subject domain name as part of a portfolio of
domains pursuant to a written agreement by which the seller represented and
warranted that the domains were not in violation of the intellectual property rights
of any third party.
The subject domain name was registered to be used in Respondent’s
Direct Navigation business model.
Respondent both registered and uses the domain name in good faith.
Respondent has no desire to retain the domain name or to interfere with
Complainant’s asserted mark.
Respondent therefore desires to transfer the domain name to
Complainant, and requests that this be done without further proceedings.
C. Additional Submissions
Complainant’s Additional Submission alleges, inter alia, that:
Respondent has engaged in a pattern of bad-faith registration and use
of domain names employing the trademarks of others.
Respondent’s attempt to justify its “cyber-squatting” as a “Direct
Navigation business model” is not legitimate.
Respondent does not contest that the subject domain name is identical
to Complainant’s registered
Respondent’s Additional Submission alleges, inter alia, that:
Complainant’s Additional Submission was
improperly filed.
Respondent acquires domain names because of
their generic or descriptive qualities, and, thus, their usefulness in a Direct
Navigation business model.
DISCUSSION
Paragraph 4(a) of the Policy requires that, in the ordinary course,
Complainant must prove each of the following to obtain from a Panel an order
that a domain name be transferred:
i.
the
domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights;
ii.
Respondent
has no rights or legitimate interests in respect of the domain name; and
iii.
the domain name
has been registered and is being used in bad faith.
Notwithstanding the foregoing, 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.”
Further, Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions (see Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Ar. Forum Jan. 13, 2004; see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum Jun. 24, 2005)).
DECISION
Respondent does not contest Complainant’s request that the disputed
domain name be transferred to Complainant. Indeed, Respondent asserts its
desire that the domain name be transferred to Complainant without further
proceedings. Thus the parties have effectively agreed in writing to a transfer
of the subject domain name from Respondent to Complainant without the need for
further proceedings.
Accordingly, it is Ordered that the <universityoftexas.com> domain name
be TRANSFERRED forthwith from
Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 12, 2008
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