Baylor University v. Laksh Internet Solutions Private Limited
Claim Number: FA0805001189976
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Laksh Internet Solutions Private Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <baylormedicalhospital.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 13, 2008.
On May 29, 2008, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <baylormedicalhospital.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. 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 June
4, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 24, 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@baylormedicalhospital.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <baylormedicalhospital.com> domain name is confusingly similar to Complainant’s BAYLOR UNIVERSITY MEDICAL CENTER and BAYLOR marks.
2. Respondent does not have any rights or legitimate interests in the <baylormedicalhospital.com> domain name.
3. Respondent registered and used the <baylormedicalhospital.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered the BAYLOR UNIVERSITY MEDICAL CENTER mark with the United States Patent and Trademark Office (“USPTO”) for education services related to the training of medical personnel and for the provision of health care services to the general public. (Reg. No. 1,670,564 issued December 31, 1991). Complainant has operated a system of hospitals and medical centers under the BAYLOR mark since at least 1959. Complainant’s BAYLOR mark is also registered with the USPTO for education services in connection with Baylor University. (Reg. No. 1,465,910 issued Nov. 17, 1987).
Respondent’s <baylormedicalhospital.com> domain name was registered on July 10, 2006. It currently resolves to a parked web page, displaying various links related to hospitals and healthcare services unrelated to but in competition with Complainant. Additionally, when confronted by Complainant, Respondent demanded US $769, and threatened a suit in India if Complainant sought transfer of the disputed 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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has sufficiently established rights in the
BAYLOR UNIVERSITY MEDICAL CENTER and BAYLOR marks through registration with the
USPTO pursuant to Policy ¶ 4(a)(i). See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd.,
D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the
purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is
registered in a country other than that of the respondent’s place of business).
Respondent’s <baylormedicalhospital.com> domain name contains Complainant’s BAYLOR mark in its entirety. This mark is followed by the descriptive phrase “medical hospital” which not only describes the educational services offered under the BAYLOR mark, but closely corresponds to the BAYLOR UNIVERSITY MEDICAL CENTER mark and its related healthcare services. Also, the generic top-level domain (“gTLD”) “.com” is included in the disputed domain name. The use of a descriptive phrase, along with a complainant’s mark, which relates directly to the products or services offered under that mark, do not distinguish a disputed domain name from said mark. Further, it is well established that the inclusion of a gTLD is irrelevant in a Policy ¶ 4(a)(i) analysis. On these grounds, the Panel finds that the <baylormedicalhospital.com> domain name is confusingly similar to Complainant’s BAYLOR and BAYLOR UNIVERSITY MEDICAL CENTER marks pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no
rights or legitimate interests in the disputed domain name. See TotalFinaElf E&P USA, Inc. v. Farnes,
FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under
the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide
proof of valid, subsisting rights in a mark that is similar or identical to the
domain name in question.”). The Panel
finds that Complainant has demonstrated a prima
facie case and that the burden is accordingly shifted to Respondent to show
that it does have rights or legitimate interest in the <baylormedicalhospital.com> domain
name. 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”).
Respondent has failed to submit a response to the Complaint. Therefore, the Panel may presume that
Respondent has no rights or legitimate interest in the disputed domain name,
but will nonetheless examine the record in consideration of the factors listed
under Policy ¶ 4(c). See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence); see also
Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004)
(“Respondent’s failure to respond to the Complaint functions as an implicit
admission that [Respondent] lacks rights and legitimate interests in the
disputed domain name. It also allows the
Panel to accept all reasonable allegations set forth…as true.”).
Nothing in the record indicates that Respondent is or ever
was commonly known by the <baylormedicalhospital.com>
domain name. Moreover, Respondent’s
WHOIS registration name, “Laksh Internet
Solutions Private Limited,” bears no relation to the disputed domain name. Absent any additional evidence, the Panel
finds that Respondent is not or ever was commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The <baylormedicalhospital.com>
domain name resolves to a parked web page featuring various links to healthcare
providers and services. Many of these
links are to third-parties who operate in direct competition with
Complainant. The Panel finds that this
use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Seiko Kabushiki
Kaisha v. CS into Tech, FA 198795 (Nat.
Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products
relating to the famous SEIKO mark, to a website unrelated to the mark is not a
bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it
represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Gardens Alive, Inc. v.
D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the
respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use).
Respondent is willing to sell the <baylormedicalhospital.com> domain name. The Panel finds this to be further evidence that Respondent has no rights or legitimate interest in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
Upon confrontation by Complainant, Respondent demanded $769
for the disputed domain name and in the alternative threatened suit in Indian
courts. The Panel finds that this offer
to sell the disputed domain name for a certain value demonstrates Respondent’s
willingness to part with the <baylormedicalhospital.com>
domain name and thus establishes that Respondent registered and is using the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).”); see also
Prudential Ins. Co. of Am. v. TPB Fin., FA 105218 (Nat. Arb. Forum Apr.
8, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(i)
where the respondent offered to sell the domain name for $900, specifically
noting that it would cost the complainant more to enforce its rights legally
than to succumb to the respondent's attempted extortion).
Moreover, the <baylormedicalhospital.com> domain name resolves to a website featuring various links unrelated to Complainant. Many of these links redirect Internet users to third-parties who offer products and services in direct competition with those offered under Complainant’s BAYLOR and BAYLOR UNIVERSITY MEDICAL CENTER marks. The Panel finds this disruptive activity to be additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Finally, the Panel presumes that Respondent is commercially
benefiting by click-through fees for each misdirected Internet user who clicks
upon the various links displayed on the web page resolving from the disputed
domain name. The Panel finds this
financial benefit to Respondent to be further evidence of Respondent’s bad
faith registration and use of the <baylormedicalhospital.com>
domain name pursuant to Policy ¶ 4(b)(iv).
See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190
(Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives
click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical
to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s
domain name may become confused as to Complainant’s affiliation with the
resulting website. Thus, Respondent’s
use of the <phoenixcollege.com> domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylormedicalhospital.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 10, 2008
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