Board of Regents, The
Claim Number: FA0807001218397
Complainant is Board of Regents, The
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <universityoftexas.net>, registered with Moniker Online Services, Inc.
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.
Clive Elliott as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 1, 2008.
On July 31, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <universityoftexas.net> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 August 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 25, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on August 22, 2008.
On 3 September 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a
Complainant prominently uses the mark
The flagship institution within The
University of Texas System is The University of Texas at
Complainant participates in many collegiate sports, including football, baseball, basketball, cross-country, golf, rowing, soccer and the like, and it also offers a number of online courses and degrees.
Complainant asserts that it has long used
Complainant contends that the domain name at issue in this Complaint is identical or confusingly similar to Complainant’s
Complainant further contends that Respondent has not used, nor made any demonstrable preparations to use, the domain name at issue or a name corresponding to that domain name in connection with a bona fide offering of goods or services. It states that its attorneys sent Respondent a cease-and-desist letter on June 19, 2008, but Respondent has never responded. Instead, Respondent has continued using 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.
Complainant contends that Respondent presumably is paid a fee or commission when Internet users visit the website < universityoftexas.net>, click on the various links likely to be associated with Complainant, and are diverted to third-party websites.
Finally, Complainant submits that Respondent has engaged in a pattern of bad-faith registration and use of others’ trademarks as domain names.
Respondent advises that he is a
Respondent indicates that he did not acquire the disputed domain name in bad faith while targeting Complainant. He asserts that he owns other “university” and “college” domain names and that he was not aware of Complainant’s trademark until notice of this Complaint.
Respondent advises that he would have transferred the domain if he had received the cease-and-desist e-mail from Complainant but that he failed to receive it because Complainant used a cryptic subject for the e-mail and it was automatically categorized as spam by Respondent’s e-mail server.
Respondent denies that he has registered the domain name in bad faith and consents to the transfer of the domain name to Complainant.
Finally, Respondent submits further that Complainant has only presented two previous decisions involving Respondent where Respondent lost and that Complainant failed to provide the three cases Respondent won.
Respondent has effectively consented to judgment in favor of Complainant, but at the same time denied that the Complaint has merit. For that reason, the Panel is of the view that it should deal with the case on its merits.
Having thus considered the Complaint, the Panel finds that:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
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.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant asserts rights in the
contends that Respondent’s <universityoftexas.net> domain
name is identical to Complainant’s
On this basis the Panel finds that the ground is established.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
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).
Complainant contends that Respondent is using the <universityoftexas.net> domain name to operate a website containing links to various competing higher education providers and links to websites selling University of Texas apparel. The Panel infers from Respondent’s use that Respondent is collecting click-through fees for each redirected Internet user. As a result the Panel finds that Respondent is not using the <universityoftexas.net> domain name 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Complainant contends that Respondent is not commonly known by the <universityoftexas.net> domain
name or licensed to register names featuring the
The Panel finds that this ground is established.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant contends that Respondent is using the <universityoftexas.net> domain name to operate a website that provides links to various websites offering competing higher education services as well as websites selling retail products featuring Complainant’s marks. The Panel readily infers that Respondent is profiting from such use through the collection of referral fees for each redirected Internet user. The Panel finds that such use constitutes a disruption of Complainant’s business and is therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Moreover, Complainant contends that Respondent’s manner of use of the <universityoftexas.net> domain name will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website. The Panel finds that such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
This ground is thus made out.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universityoftexas.net> domain name be TRANSFERRED from Respondent to Complainant.
Dated: 17 September 2008
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