Board of Regents, The University of Texas System v. junlong zheng c/o OnlineNIC
Claim Number: FA0808001222412
Complainant is Board of Regents, The
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <universityoftexasbrownsville.com> and <universityoftexasmedicalbranch.com>, registered with Onlinenic, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 29, 2008.
The National Arbitration Forum attempted to verify that the <universityoftexasbrownsville.com> and <universityoftexasmedicalbranch.com> domain names were registered with Onlinenic, Inc. and that Respondent was the current registrant of that domain names. Onlinenic, Inc. however, did not respond to multiple contact attempts from the National Arbitration Forum. The National Arbitration Forum then contacted ICANN regarding Onlinenic, Inc.’s lack of response to the verification request, and notified ICANN that it would be proceeding without verification. The National Arbitration Forum commenced the case on October 2, 2008.
On October
1, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 21, 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@universityoftexasbrownsville.com and postmaster@universityoftexasmedicalbranch.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 24, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <universityoftexasbrownsville.com> and <universityoftexasmedicalbranch.com> domain names are confusingly similar to Complainant’s THE UNIVERSITY OF TEXAS AT BROWNSVILLE and THE UNIVERSITY OF TEXAS MEDICAL BRANCH marks, respectively.
2. Respondent does not have any rights or legitimate interests in the <universityoftexasbrownsville.com> and <universityoftexasmedicalbranch.com> domain names.
3. Respondent registered and used the <universityoftexasbrownsville.com> and <universityoftexasmedicalbranch.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Board of Regents, The University of Texas
System, is a
Respondent registered the disputed <universityoftexasbrownsville.com> and <universityoftexasmedicalbranch.com> domain names on June 29, 2008 and June 20, 2008, respectively. Respondent is using the disputed domain names to display links to third-party businesses that are unrelated to Complainant’s business. Respondent also suggested that Complainant buy the disputed domain names from Respondent.
Respondent has also been the respondent in previous UDRP decisions in which the disputed domain names were transferred from Respondent to the respective complainants in those cases. See, e.g., Yahoo! Inc. v. Zheng c/o OnlineNIC, FA 1142567 (Nat. Arb. Forum Mar. 25, 2008); see also Yahoo! Inc. v. zheng c/o OnlineNIC, FA 1218583 (Nat. Arb. Foru, Sept. 30, 2008).
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 established sufficient rights in the THE
UNIVERSITY OF TEXAS MEDICAL BRANCH and THE UNIVERSITY OF TEXAS AT BROWNSVILLE
marks through registration of the marks with the USPTO pursuant to Policy ¶
4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also 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.”).
Respondent’s <universityoftexasbrownsville.com> and <universityoftexasmedicalbranch.com>
domain names include Complainant’s THE UNIVERSITY OF TEXAS AT BROWNSVILLE and
THE UNIVERSITY OF TEXAS MEDICAL BRANCH marks, respectively, while omitting the
words THE and AT from the marks, and adding the generic top-level domain
“.com.” The Panel finds that deleting
words from the marks and adding a generic top-level domain fails to create a
distinction of meaning, and that the disputed domain names are therefore
confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i). See
Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the
domain name merely omitted the definite article “the” and the preposition “of”
from the complainant’s mark and thus, failed to “sufficiently distinguish the
domain name from the mark pursuant to Policy ¶ 4(a)(i)”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the
addition of a generic top-level domain is irrelevant when considering whether a
domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Because the Panel finds that Complainant has successfully asserted a sufficient prima facie case supporting its allegations that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), Respondent receives the task of demonstrating its rights or legitimate interests. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s disputed
domain names resolve to websites that feature unaffiliated third-party
advertisements and links. Presumably,
Respondent monetarily benefits from the placement of these ads through the
receipt of referral fees. Previous UDRP
panels have found, and this Panel so finds, that such a use of the disputed
domain name fails to create rights or legitimate interests in the disputed
domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Fork v. Shen, FA
699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a
domain name to redirect Internet users to websites unrelated to a complainant’s
mark is not a bona fide use under Policy ¶ 4(c)(i)); see also 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).”).
Respondent has failed to submit a response in this
proceeding, leaving the Panel without any information that would suggest that
Respondent is or was commonly known by the disputed domain names. What
remains for scrutiny is the registrant of record in the WHOIS information;
however such registrant is listed as “junlong zheng c/o OnlineNIC.” Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Respondent suggested to
Complainant in an e-mail that Complainant buy the disputed domain names from
Respondent. This can fairly be construed
as an offer to sell, and thus the Panel finds that Respondent lacks rights and
legitimate interests in the disputed domain names under 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 Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has also been
the respondent in previous UDRP decisions in which the disputed domain names
were transferred from Respondent to the respective complainants in those
cases. See, e.g., Yahoo! Inc.
v. Zheng c/o OnlineNIC, FA 1142567 (Nat. Arb. Forum Mar. 25, 2008); see also Yahoo! Inc. v. zheng c/o OnlineNIC,
FA 1218583 (Nat. Arb. Foru, Sept. 30, 2008).
The Panel finds that Respondent has engaged in a pattern of bad faith
registration and use under Policy ¶ 4(b)(ii).
See Australian Stock Exch. v.
Cmty. Internet (Australia) Pty Ltd, D2000-1384
(WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where the
respondent registered multiple infringing domain names containing the
trademarks or service marks of other widely known Australian businesses); see also Westcoast
Contempo Fashions Ltd. v.
The Panel also finds that Respondent’s registration of two
confusingly similar disputed domain names was an intentional attempt for
commercial gain to create a likelihood of confusion between Complainant’s marks
and the dispute domain names. Thus,
Respondent has engaged in bad faith registration and use under Policy ¶
4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum
June 7, 2006) (holding that the registration and use of a domain name
confusingly similar to a complainant’s mark to direct Internet traffic to a
commercial “links page” in order to profit from click-through fees or other
revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (holding that the respondent was taking advantage of the confusing
similarity between the <lilpunk.com> domain name and the complainant’s
LIL PUNK mark by using the contested domain name to maintain a website with
various links to third-party websites unrelated to Complainant, and that such
use for the respondent’s own commercial gain demonstrated bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universityoftexasbrownsville.com> and <universityoftexasmedicalbranch.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 6, 2008
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