national
arbitration forum
DECISION
Board of Regents, The University of Texas
System v. Stephanie Rosendahl
Claim
Number: FA0811001233394
PARTIES
Complainant is Board of Regents, The University of Texas System
(“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Stephanie Rosendahl (“Respondent”), Texas,
USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <universityoftexaslonghorns.com>,
registered with Enom, Inc.
PANEL
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.
Judge Ralph Yachnin, Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on November 11, 2008;
the National Arbitration Forum received a hard copy of the Complaint on November 12, 2008.
On November 11, 2008,
Enom, Inc. confirmed by e-mail to the
National Arbitration Forum that the <universityoftexaslonghorns.com> domain
name is registered with Enom, Inc. and
that Respondent is the current registrant of the name. 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 November 13, 2008,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of December 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@universityoftexaslonghorns.com
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 Judge Ralph Yachnin 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.
RELIEF SOUGHT
Complainant requests that the domain
name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s
<universityoftexaslonghorns.com>
domain name is confusingly similar to Complainant’s UNIVERSITY OF TEXAS
and LONGHORNS marks.
2. Respondent
does not have any rights or legitimate interests in the <universityoftexaslonghorns.com>
domain name.
3. Respondent
registered and used the <universityoftexaslonghorns.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Board of Regents, The University of Texas
System, is a Texas
state board established for the purpose of governing the University of Texas System. The University of Texas
at Austin (“UT”) football team has been referred to as the “TEXAS LONGHORNS”
since the adoption of the Bevo mascot in 1916.
Complainant holds several trademarks with the United States Patent and
Trademark Office (“USPTO”) for the UNIVERSITY
OF TEXAS mark (i.e., Reg
No. 1,340,787 issued June
11, 1985) and LONGHORNS mark (i.e., Reg No. 1,231,408 issued March 15, 1983)
in connection with a variety of goods, including items related to UT’s football
team.
Respondent registered the <universityoftexaslonghorns.com>
domain name on January
12, 2005. Respondent is
using the disputed domain name to display links such as “University of Texas
Longhorns,” “Sports Tickets,” and “Accredited
Online Degrees.” These links divert
Internet users to third-party competitive websites that are not affiliated with
Complainant.
DISCUSSION
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.
Identical and/or Confusingly Similar
Pursuant to Policy ¶ 4(a)(i), Complainant has established
rights in the UNIVERSITY
OF TEXAS and LONGHORNS
marks by registering them with the USPTO.
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 disputed domain
name combines Complainant’s UNIVERSITY
OF TEXAS and LONGHORNS
marks and adds the generic top-level domain (geld) “.com.” Combining two of Complainant’s marks in the <universityoftexaslonghorns.com>
domain name results in confusing similarity; and the addition of the geld “.com”
is irrelevant. Therefore, the Panel
finds that the <universityoftexaslonghorns.com>
domain name is confusingly similar to the Complainant’s UNIVERSITY OF TEXAS
and LONGHORNS marks pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June
25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Nintendo of Am. Inc.
v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity
where respondent combined the complainant’s POKEMON and PIKACHU marks to form
the <pokemonpikachu.com> domain name).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
Rights or Legitimate Interests
The initial burden under Policy ¶ 4(a)(ii) is on Complainant
to prove that Respondent does not have any rights or legitimate interests in
the disputed domain name. Once
Complainant has made a prima facie
case, the burden shifts to Respondent to show that it does have rights or
legitimate interests pursuant to the directions provided in Policy ¶ 4(c). 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”). The Panel finds that Complainant has
presented a prima facie case, and the
Panel now chooses to consider whether an evaluation of all the evidence
demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
The Panel finds no evidence in the record suggesting that
Respondent is commonly known by the <universityoftexaslonghorns.com>
domain name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the UNIVERSITY
OF TEXAS and LONGHORNS
marks, and the WHOIS information identifies Respondent as “Stephanie Rosendahl.” Thus, Respondent has not established rights
or legitimate interests in 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
Respondent is using the <universityoftexaslonghorns.com>
domain name to link to third-party websites that
offer items such as event tickets and online education. Respondent’s use of a domain name that is
confusingly similar to Complainant’s UNIVERSITY OF TEXAS and LONGHORNS
marks to redirect Internet users interested in
Complainant’s football team to websites that offer competition for ticket sales
and higher education is 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 under Policy ¶ 4(c)(iii), See TM Acquisition Corp. v.
Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the
respondent’s diversionary use of the complainant’s marks to send Internet users
to a website which displayed a series of links, some of which linked to the
complainant’s competitors, was not a bona fide offering of goods or
services); 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).”).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(ii).
Registration and Use in Bad Faith
Respondent’s use of
Complainant’s UNIVERSITY OF TEXAS and LONGHORNS marks in the <universityoftexaslonghorns.com> domain name to redirect Internet users to competing
websites suggests that Respondent registered the disputed domain name intending
to disrupt Complainant’s business. The
Panel finds that this is evidence of bad faith registration and use under
Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000)
(finding that the respondent registered the domain name in question to disrupt
the business of the complainant, a competitor of the respondent); 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).”).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
third-party websites. Because
Respondent’s domain name is confusingly similar to Complainant’s UNIVERSITY OF TEXAS and LONGHORNS marks, Internet users accessing Respondent’s
disputed domain name may become confused as to Complainant’s affiliation with
the resulting website. Thus,
Respondent’s use of the <universityoftexaslonghorns.com>
domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website); see also AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25,
2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(iii).
DECISION
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <universityoftexaslonghorns.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon.
Ralph Yachnin
Justice
Supreme Court, N.Y.(Ret.)
Dated:
December 23, 2008
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