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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