Board of Regents, The
Claim Number: FA0810001227980
Complainant is Board of Regents, The
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <universityoftexasatelpaso.com> and <universityoftexassanantonio.com>, registered with Enom, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 7, 2008.
On October 6, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <universityoftexasatelpaso.com> and <universityoftexassanantonio.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October
14, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of November
3, 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@universityoftexasatelpaso.com
and postmaster@universityoftexassanantonio.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <universityoftexasatelpaso.com> and <universityoftexassanantonio.com> domain names are confusingly similar to Complainant’s THE UNIVERSITY OF TEXAS AT EL PASO and THE UNIVERSITY OF TEXAS AT SAN ANTONIO marks.
2. Respondent does not have any rights or legitimate interests in the <universityoftexasatelpaso.com> and <universityoftexassanantonio.com> domain names.
3. Respondent registered and used the <universityoftexasatelpaso.com> and <universityoftexassanantonio.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a state board established for the purpose of
governing The University of Texas System.
Complainant operates both The University of Texas at
Respondent registered the <universityoftexasatelpaso.com> and <universityoftexassanantonio.com> domain names on February 1, 2004. The disputed domain names both resolve to web pages that contain Complainant’s marks and links to third-party websites that compete 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 has established rights in
the THE UNIVERSITY OF TEXAS AT EL PASO and THE UNIVERSITY OF TEXAS AT SAN
ANTONIO marks for purposes of Policy ¶ 4(a)(i) through its trademark
registrations with the USPTO. 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 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.").
Complainant contends that
Respondent’s <universityoftexasatelpaso.com> domain name is confusingly similar to its THE
UNIVERSITY OF TEXAS AT EL PASO mark. The <universityoftexasatelpaso.com> domain name differs from Complainant’s mark in three ways:
(1) the article “the” has been removed from the beginning of the mark; (2) the
spaces between the words have been removed; and (3) the generic top-level
domain (“gTLD”) “.com” has been added. The
deletion of articles and spaces from a mark does not sufficiently distinguish a
domain name from an incorporated mark for the purposes of Policy ¶
4(a)(i). Furthermore, the addition of a
generic top-level domain does not distinguish a domain from a mark, as every
domain name must contain a TLD.
Therefore, the Panel finds that these changes do not minimize or
eliminate the resulting likelihood of confusion, and so Respondent’s <universityoftexasatelpaso.com> domain name is not sufficiently distinguished from
Complainant’s THE UNIVERSITY OF TEXAS AT EL PASO mark pursuant to Policy ¶ 4(a)(i).
See Mega Soc. v.
LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the
<megasociety.net> and <megasociety.com>
domain names were identical
or confusingly similar to Complainant's THE MEGA SOCIETY mark); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO
Feb. 5, 2001) (finding the domain name <mannbrothers.com> confusingly
similar to the complainant’s MANN BROTHERS mark “so as to likely confuse
Internet users who may believe they are doing business with Complainant or with
an entity whose services are endorsed by, sponsored by, or affiliated with Complainant;
hence, satisfying the confusing similarity requirement”); see also Gardline Surveys Ltd. v. Domain
Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a
top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”).
Complainant contends that
Respondent’s <universityoftexassanantonio.com> domain name is confusingly similar to its THE
UNIVERSITY OF TEXAS AT SAN ANTONIO mark. The <universityoftexassanantonio.com> domain name differs from Complainant’s mark in four ways:
(1) the article “the” has been removed from the beginning of the mark; (2) the
spaces between the words have been removed; (3) the preposition “at” has been
removed from the mark; and (4) the generic top-level domain (“gTLD”) “.com” has
been added. The deletion of articles,
prepositions, and spaces from a mark does not sufficiently distinguish a domain
name from an incorporated mark for the purposes of Policy ¶ 4(a)(i). The addition of a generic top-level domain also
does not distinguish a domain from a mark because all domain names must contain
a TLD. Because these changes do not
minimize or eliminate the resulting likelihood of confusion, the Panel finds
that Respondent’s <universityoftexassanantonio.com>
domain name is not sufficiently
distinguished from Complainant’s THE UNIVERSITY OF TEXAS AT SAN ANTONIO mark pursuant to 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 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 Busy Body,
Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he
addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has indeed made a prima facie case under Policy ¶ 4(a)(ii). See 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); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
Complainant contends that Respondent is not commonly known
by either of the disputed
domain names, nor has it ever been the owner or licensee of either the THE
UNIVERSITY OF TEXAS AT EL PASO mark or the THE UNIVERSITY OF TEXAS AT SAN
ANTONIO mark. The WHOIS records for the
disputed domain names both list Respondent as “n/a
c/o Richard Jones.” Because
Respondent is not known as any variant on the THE UNIVERSITY OF TEXAS AT EL
PASO and THE UNIVERSITY OF TEXAS AT SAN ANTONIO marks and has also failed to
show any evidence contrary to Complainant’s contentions, the Panel therefore
finds that Respondent is not commonly known by either of the disputed domain names pursuant to Policy ¶
4(c)(ii). See Hartford Fire Ins. Co. v.
Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that
the respondent has no rights or legitimate interests in domain names because it
is not commonly known by the complainant’s marks and the respondent has not
used the domain names in connection with a bona fide offering of goods
and services or for a legitimate noncommercial or fair use); see also 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").
Respondent maintains web pages resolving from both of the disputed domain names that contain Complainant’s marks and feature links to third-party websites offering services that compete with Complainant’s business. Complainant contends that Respondent commercially benefits from these links through the receipt of “click-through” fees. The Panel infers that Respondent does commercially benefit from this use of the disputed domain names, and finds that this use of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where the respondent, a company financially linked to the complainant’s main competitor, registered and used the domain name in question to disrupt the complainant’s business).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that because of Respondent’s inclusion of Complainant’s marks in the disputed domain names, Internet customers looking for Complainant’s websites are diverted to Respondent’s websites resolving from the disputed domain names. Complainant also contends that this diversion is an intentional disruption of Complainant’s business by Respondent. The Panel finds that Respondent has intentionally disrupted Complainant’s business by using Complainant’s marks to divert Internet customers, and that this disruption is evidence of Respondent’s registration and use of the disputed domain names in bad faith 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).”).
Complainant also contends that the click-through fees that
Respondent receives from the third-party advertisements allow Respondent to
gain commercially from this diversion.
The Panel finds that this is an intentional use of the disputed domain
names for commercial gain through a likelihood of confusion with Complainant’s
mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of
Respondent’s registration and use in bad faith.
See 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.’”); see also H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of
the infringing domain name to intentionally attempt to attract Internet users
to its fraudulent website by using the complainant’s famous marks and likeness).
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 <universityoftexasatelpaso.com> and <universityoftexassanantonio.com> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 24, 2008
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