Board of Regents, The
Claim Number: FA0810001227979
Complainant is Board of Regents, The
The domain name at issue is <universityoftexasatsanantonio.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On October 8, 2008, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the National Arbitration Forum that the <universityoftexasatsanantonio.com> domain name is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a Joker.com 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").
15, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
November 4, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <universityoftexasatsanantonio.com> domain name is confusingly similar to Complainant’s THE UNIVERSITY OF TEXAS AT SAN ANTONIO mark.
2. Respondent does not have any rights or legitimate interests in the <universityoftexasatsanantonio.com> domain name.
3. Respondent registered and used the <universityoftexasatsanantonio.com> domain name 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 <universityoftexasatsanantonio.com> domain name on May 21, 2003. Respondent is using the disputed domain names to display links that, while appearing to relate to Complainant, connect to third-parties that are not affiliated with Complainant.
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.
The Panel finds that Complainant’s registration of the THE
UNIVERSITY OF TEXAS AT SAN ANTONIO mark with the USPTO confers sufficient
rights in the mark upon Complainant for UDRP standing purposes under Policy ¶
Respondent’s disputed domain name contains Complainant’s entire mark,
while omitting the word “the” and adding the generic top-level domain
“.com.” The Panel finds that the former
creates no distinguishing characteristic of significance, and the latter is
irrelevant under Policy ¶ 4(a)(i). See Nevada State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests. The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). See 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.”); 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).
Based on the evidence within the record, there is no
indication that Respondent is commonly known by the disputed domain name. The WHOIS domain name registration
information lists the registrant of record as “Whois
Protection c/o Whois Protection Service LLC.” As such, the Panel finds that Respondent
lacks rights and legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii).
See Gallup, Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Respondent’s disputed domain name merely serves to divert Internet users to a website that offers third-party links and advertisements. Some of the advertisements link to unrelated businesses, though they purport to relate to Complainant. There are no other discernible offerings presented before the Panel, and thus it is presumed that this display of advertisements is the sole intended use of the disputed domain name. Respondent presumably receives the typical referral fees for the placement of these links on the corresponding website, as there is no contradictory evidence within the record. The Panel therefore finds that Respondent’s use of the disputed domain name to create such a diversion to an advertisement website for monetary benefit fails to amount to 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 Bank of Am. Corp. v. Northwest 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
receives commercial and monetary profit from displaying third-party
advertisements on its corresponding website.
Respondent’s registration of a confusingly similar disputed domain name
and subsequent usage of this website has therefore created a substantial
likelihood of confusion regarding the source, affiliation, and endorsement of
the disputed domain name and corresponding website. Therefore, the Panel finds that Respondent
has engaged in bad faith registration and use of the disputed domain name
pursuant to Policy ¶ 4(b)(iv), because Respondent
attempted to commercially benefit from such a likelihood of confusion. See Williams-Sonoma, Inc. v. Fees, FA 937704
(Nat. Arb. Forum Apr. 25, 2007)
(holding that the use of a confusingly similar domain name to display links to
various third-party websites demonstrated bad faith registration and use
pursuant to Policy ¶ 4(b)(iv)); see also Carey
Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum
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 <universityoftexasatsanantonio.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: November 17, 2008
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