national arbitration forum

 

DECISION

 

Board of Regents, The University of Texas System v. Domain Admin c/o University of Texas

Claim Number: FA0806001208350

 

PARTIES

Complainant is Board of Regents, The University of Texas System (“Complainant”), represented by Susan J. Hightower, Texas, USA.  Respondent is Domain Admin c/o University of Texas (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <texaslonghornbasketball.com>, <texaslonghornchecks.com>, <texaslonghorne.com>, <texaslonghornmerchandise.com>, <texaslonhorn.com>, <universitoftexas.com>, <universityoftexasatarlington.com>, <universityotexas.com>, <universitytexasaustin.com> and <universtiyoftexas.com>, registered with Nameview, 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.

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2008.

 

On June 16, 2008, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <texaslonghornbasketball.com>, <texaslonghornchecks.com>, <texaslonghorne.com>, <texaslonghornmerchandise.com>, <texaslonhorn.com>, <universitoftexas.com>, <universityoftexasatarlington.com>, <universityotexas.com>, <universitytexasaustin.com> and <universtiyoftexas.com> domain names are registered with Nameview, Inc. and that Respondent is the current registrant of the names.  Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 June 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 10, 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@texaslonghornbasketball.com, postmaster@texaslonghornchecks.com, postmaster@texaslonghorne.com, postmaster@texaslonghornmerchandise.com, postmaster@texaslonhorn.com, postmaster@universitoftexas.com, postmaster@universityoftexasatarlington.com, postmaster@universityotexas.com, postmaster@universitytexasaustin.com and postmaster@universtiyoftexas.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 18, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <texaslonghornbasketball.com>, <texaslonghornchecks.com>, <texaslonghorne.com>, <texaslonghornmerchandise.com>, <texaslonhorn.com>, <universitoftexas.com>, <universityoftexasatarlington.com>, <universityotexas.com>, <universitytexasaustin.com> and <universtiyoftexas.com> domain names are confusingly similar to Complainant’s UNIVERSITY OF TEXAS and LONGHORNS marks.

 

2.      Respondent does not have any rights or legitimate interests in the <texaslonghornbasketball.com>, <texaslonghornchecks.com>, <texaslonghorne.com>, <texaslonghornmerchandise.com>, <texaslonhorn.com>, <universitoftexas.com>, <universityoftexasatarlington.com>, <universityotexas.com>, <universitytexasaustin.com> and <universtiyoftexas.com> domain names.

 

3.      Respondent registered and used the <texaslonghornbasketball.com>, <texaslonghornchecks.com>, <texaslonghorne.com>, <texaslonghornmerchandise.com>, <texaslonhorn.com>, <universitoftexas.com>, <universityoftexasatarlington.com>, <universityotexas.com>, <universitytexasaustin.com> and <universtiyoftexas.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Board of Regents, The University of Texas System, is a Texas state board governing The University of Texas System, which is a system of higher learning institutions.  Complainant operates universities and health institutions throughout the state of Texas.  Complainant’s primary institution is the University of Texas at Austin (“UT Austin”).  In addition to educational services, UT Austin actively participates in collegiate athletics.  UT Austin’s athletics have been known as the “Longhorns” since the adoption of Bevo, a longhorn, as its mascot in 1916.  Complainant uses its UNIVERSITY OF TEXAS, TEXAS, LONGHORNS, and many other marks that include these terms with its sports teams, athletics programs, and licensed products.  Retail sales of Complainant-licensed products totaled approximately $200 million in fiscal 2005-2006 and $187 million in 2006-2007.  Complainant holds many trademark registrations with the United States Patent and Trademark Office (“USPTO”) including UNIVERSITY OF TEXAS (Reg. No. 1,340,787 issued June 11, 1985) and LONGHORNS (Reg. No. 1,231,408 issued March 15, 1983).  Complainant uses these marks as well as their many variations on its websites promoting the university and its athletics programs, and selling merchandise.

 

Respondent registered the disputed domains name during a period spanning from January 10, 2002 to January 15, 2006.  The disputed domain names resolve to websites containing hyperlinks to various third-party websites, including Complainant’s own website. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has sufficiently established rights in the UNIVERSITY OF TEXAS and LONGHORNS marks through registration of these marks with the USPTO pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").

 

The Panel finds that the <universitoftexas.com>, <universityoftexasatarlington.com>, <universityotexas.com>, <universitytexasaustin.com>and <universtiyoftexas.com> domain names are confusingly similar to Complainant’s UNIVERSITY OF TEXAS mark under Policy ¶ 4(a)(i).  The <universityoftexasatarlington.com> and <universitytexasaustin.com> domain names merely add geographic terms to Complainant’s mark.  The Panel finds that adding geographic terms to Complainant’s mark does not distinguish these disputed domain names from Complainant’s UNIVERSITY OF TEXAS mark for the purposes of confusing similarity under Policy ¶ 4(a)(i).  See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI mark).  Moreover, the <universitoftexas.com>, <universityotexas.com> and <universtiyoftexas.com> domain names are misspellings of Complainant’s UNIVERSITY OF TEXAS mark.  Accordingly, the Panel finds that the <universitoftexas.com>, <universityotexas.com> and <universtiyoftexas.com> domain names are confusing similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”).

 

Furthermore, the Panel finds that the <texaslonghornbasketball.com>, <texaslonghornchecks.com>, <texaslonghorne.com>, <texaslonghornmerchandise.com> and <texaslonhorn.com> domain names are confusingly similar to Complainant’s LONGHORNS mark under Policy ¶ 4(a)(i).  The <texaslonghornbasketball.com>, <texaslonghornchecks.com>, <texaslonghorne.com>, <texaslonghornmerchandise.com> and <texaslonhorn.com> domain names all add a geographical term to Complainant’s mark.  As previously stated, the Panel finds that adding geographic terms to Complainant’s mark do not distinguish these disputed domain names from Complainant’s LONGHORNS mark for the purposes of confusing similarity under Policy ¶ 4(a)(i).  In addition, the Panel finds that the addition of generic or descriptive terms such as “basketball,” “checks,” or “merchandise,” as well as the addition of “e,” do not distinguish the <texaslonghornbasketball.com>, <texaslonghornchecks.com>, <texaslonghorne.com> and <texaslonghornmerchandise.com> domain names for the purpose of confusing similarity under Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Canadian Tire Corp. v. 849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain names <ecanadiantire.com> and <e-canadiantire.com> are confusingly similar to Canadian Tire’s trademarks).  Finally, the Panel finds that the <texaslonhorn.com> domain name is confusingly similar to Complainant’s LONGHORNS mark because the disputed domain name is merely a common misspelling of Complainant’ mark.  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark). 

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant must first establish a prima facie case that Respondent lacks rights and legitimate interests in the <texaslonghornbasketball.com>, <texaslonghornchecks.com>, <texaslonghorne.com>, <texaslonghornmerchandise.com>, <texaslonhorn.com>, <universitoftexas.com>, <universityoftexasatarlington.com>, <universityotexas.com>, <universitytexasaustin.com> and <universtiyoftexas.com> domain names.  Once this prima facie case has been established, the burden then shifts to Respondent and Respondent must prove that it has rights or legitimate interests in the disputed domain names.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).

 

Respondent is using the disputed domain names to resolve to websites that display hyperlinks to various third-party websites.  The Panel infers that Respondent earns click-through fees and, therefore, has not made a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).

 

In addition, there is no evidence in the record to show that Respondent is commonly known by the <texaslonghornbasketball.com>, <texaslonghornchecks.com>, <texaslonghorne.com>, <texaslonghornmerchandise.com>, <texaslonhorn.com>, <universitoftexas.com>, <universityoftexasatarlington.com>, <universityotexas.com>, <universitytexasaustin.com> and <universtiyoftexas.com> domain names.  Without the presentation of such evidence, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

Finally, the Panel finds that Respondent is using the <universitoftexas.com>, <universityotexas.com> and <universtiyoftexas.com> domain names to take advantage of spelling errors, a practice commonly known as “typosquatting,” to redirect Internet users to the websites resolving from the <universitoftexas.com>, <universityotexas.com> and <universtiyoftexas.com> domain names.  Thus, the Panel finds that these activities are evidence that Respondent lacks rights and legitimate interests in these disputed domain names under Policy ¶ 4(a)(ii).  IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Based on the uncontested evidence, the Panel finds that Respondent is using the <texaslonghornbasketball.com>, <texaslonghornchecks.com>, <texaslonghorne.com>, <texaslonghornmerchandise.com>, <texaslonhorn.com>, <universitoftexas.com>, <universityoftexasatarlington.com>, <universityotexas.com>, <universitytexasaustin.com> and <universtiyoftexas.com> domain names to divert Internet users to its websites in order to disrupt Complainant’s business because it provides hyperlinks to third-party websites.  The Panel finds this disruption of Complainant’s business to constitute bad faith registration and use under Policy ¶ 4(b)(iii).  See 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).”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).

 

In addition, the Panel finds that Respondent receives click-through fees from the hyperlinks to third-party websites displayed on the websites that resolve from the disputed domain names.  This practice creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain names and corresponding websites.  The Panel finds this practice to constitute a bad faith registration and use under Policy ¶ 4(b)(iv).  See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

Finally, the Panel finds that Respondent’s use of the <universitoftexas.com>, <universityotexas.com> and <universtiyoftexas.com> domain names to take advantage of spelling errors, a practice commonly known as “typosquatting,” to constitute a bad faith registration and use under Policy ¶ 4(a)(iii).  See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shouldl be GRANTED.

 

Accordingly, it is Ordered that the <texaslonghornbasketball.com>, <texaslonghornchecks.com>, <texaslonghorne.com>, <texaslonghornmerchandise.com>, <texaslonhorn.com>, <universitoftexas.com>, <universityoftexasatarlington.com>, <universityotexas.com>, <universitytexasaustin.com> and <universtiyoftexas.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Louis E. Condon, Panelist

Dated:  July 31, 2008

 

 

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