Board of Regents, The
Claim Number: FA0811001233292
Complainant is Board of Regents, The
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <universityoftexasatdallas.org>, registered with Moniker Online Services, 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 November 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 11, 2008.
On November 11, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <universityoftexasatdallas.org> domain name is registered with Moniker Online Services, Inc. and that 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 November 12, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 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@universityoftexasatdallas.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 9, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <universityoftexasatdallas.org> domain name is confusingly similar to Complainant’s THE UNIVERSITY OF TEXAS AT DALLAS mark.
2. Respondent does not have any rights or legitimate interests in the <universityoftexasatdallas.org> domain name.
3. Respondent registered and used the <universityoftexasatdallas.org> 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 the governing body for The
University of Texas System (“UT”), which includes The University of Texas at
On October 29, 2007,
Respondent, Hostmaster a/k/a Domain Park Limited, registered the <universityoftexasatdallas.org>
domain name. The disputed domain name
resolves to a landing website containing links to other search engines
specifically targeting colleges.
Respondent has also been a respondent in several UDRP proceedings in
which the disputed domain names were transferred from Respondent to the
respective complainants in those cases. See, e.g., Hubbell Inc. v. Domain Park Ltd.
FA 846861 (Nat. Arb. Forum January 3, 2007); see also Citizens Fin. Group v. Domain Park Ltd. FA 975307 (Nat.
Arb. Forum June 7, 2007).
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 with the USPTO is sufficient to establish Complainant’s rights in THE UNIVERSITY OF TEXAS AT DALLAS mark 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 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.”).
The <universityoftexasatdallas.org> domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The sole differences between the disputed domain name and the mark are: (1) the term “the” has been removed from the mark; (2) the spaces in the mark have been removed; and (3) the generic top-level domain (“gTLD”) “.org” has been added to the end of the mark. The Panel finds that these changes do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i)
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to the Respondent to prove it has legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“[I]t 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.”); 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).”).
Due to Respondent’s failure to respond to the Complaint, the Panel will determine if Respondent has rights or legitimate interests under Policy ¶ 4(c). The Panel may accept the allegations and inferences in the Compliant as true unless clearly contradicted. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); 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.”).
The disputed domain name resolves to a website offering
links to third-party commercial websites, with some links referencing colleges
and educational institutions of Complainant’s competitors. Respondent’s website is presumed to be a
pay-per-click website where Respondent accumulates referral fees when consumers
click through the advertised links.
Respondent is exploiting the national recognition of Complainant’s
system of universities to attract confused Internet users to its website. The Panel finds that Respondent has not used
the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the
complainant’s entire mark in domain names makes it difficult to infer a
legitimate use); see also The Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum
Aug. 2, 2006) (finding that the operation of a commercial web directory
displaying various links to third-party websites was not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees
for each consumer it redirected to other websites).
The Panel finds no evidence that Respondent is commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Hostmaster a/k/a Domain Park Limited.” Without further evidence, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that the Respondent has been the subject of
no less than 25 UDRP proceedings between 2007 and 2008 in which the disputed
domain names were transferred from Respondent to the respective complainants in
these cases. See, e.g., Hubbell Inc. v. Domain Park
Ltd. FA 846861 (Nat. Arb. Forum Jan.
3, 2007); see also Citizens Fin. Group v.
Domain Park Ltd. FA 975307 (Nat. Arb. Forum June 7, 2007). The Panel considers this as evidence of a
pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Nat’l
Wildlife Fed’n v. Kang, FA 170519 (Nat.
Arb. Forum Sept. 9, 2003) (“Respondent has a history of registering domain
names that infringe on other trademark holders' rights; therefore, Respondent's
registration and use of the <yourbigbackyard.com> domain name constitutes
bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name is identical to
Complainant's YOUR BIG BACKYARD mark and prevents Complainant from reflecting
its mark on-line.”); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc.,
FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy
¶ 4(b)(ii) because the domain name prevented the complainant from reflecting
its mark in a domain name and the respondent had several adverse decisions
against it in previous UDRP proceedings, which established a pattern of
cybersquatting).
Complainant’s attorneys sent
a cease-and-desist letter to Respondent on August 25, 2008. Respondent responded by offering to sell the domain
name to Complainant for $500, approximately 20 times the out-of-pocket expenses
of the Respondent. The Panel finds that
the Respondent has registered and used the domain name in bad faith in order to
profit from selling the disputed domain name at an exorbitant amount above
actual cost pursuant to Policy ¶ 4(b)(i).
See Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered
the domain names for sale); see also Little Six, Inc. v. Domain For
Respondent’s commercial use of the disputed domain name, which is confusingly similar to Complainant’s mark, evidences bad faith registration and use of the disputed domain name. Respondent is likely receiving compensation in the form of click-through fees. The Panel finds this use is an attempt by Respondent to profit from the goodwill Complainant has established in its mark 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 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.’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universityoftexasatdallas.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 30, 2008
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