Claim Number: FA0901001240570
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylormedicalcenter.com>, registered with Humeia Corporation.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 2, 2009.
On January 6, 2009, Humeia Corporation confirmed by e-mail to the National Arbitration Forum that the <baylormedicalcenter.com> domain name is registered with Humeia Corporation and that Respondent is the current registrant of the name. Humeia Corporation has verified that Respondent is bound by the Humeia Corporation 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 January 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 28, 2009 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on January 26, 2009.
An Additional Submission, which complied with the requirements of Supplemental Rule 7, was received from Complainant on January 30, 2009. The Panel has taken the supplemental filing into account in rendering its Decision.
On January 29, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
- Complainant owns several United States Patent and Trademark Office (“USPTO”) registrations for its marks. It has also registered the domain name <baylor.edu> to further its operations.
- Complainant has also licensed the operation of a medical center since at least 1959, and
obtained a USPTO registration for
- The domain name at issue, <baylormedicalcenter.com>, is
identical or confusingly similar to any number of Complainant’s validly
registered service marks, particularly the mark
- Respondent has no rights or legitimate interests in the disputed domain name. The website located at the name hosts sponsored links to websites of third parties that are not affiliated with Complainant. The many references to Complainant’s marks found at Respondent’s website add to likely Internet user confusion. Respondent is not commonly known by the disputed domain name, and is not making a noncommercial or fair use of the same. Respondent failed to respond to a cease-and-desist letter sent by Complainant on August 14, 2008.
- Respondent registered and is using the disputed domain name in bad faith. Respondent presumably collect fees based on user “clicks” on the various links displayed on the website attached to that name. As a result, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website. Internet user confusion is only heightened by Respondent’s use of Complainant’s marks on Respondent’s web page.
- The disputed domain name, <baylormedicalcenter.com>, is not
identical to Complainant’s mark,
- Respondent acquired the disputed
domain name for use as a business directory relevant to
- The domain name in question was
not registered in bad faith. Respondent
has lived within
- Respondent requests a finding of reverse domain name hijacking.
C. Additional Submission by Complainant
- Respondent has provided no
evidence of its preparation to develop the disputed domain name as a business
- Respondent appears to be in the
business of mass domain name registration, parking its names for monetary gain
or sale. Respondent has formed at least
two companies for that purpose.
Respondent has previously registered domain names that include the
service marks of other
- Respondent offered to transfer the disputed domain name after filing of the Complaint.
- Respondent disrupts Complainant’s operations by diverting Internet users to the websites of Complainant’s competitors.
- Respondent’s claim of reverse domain name hijacking is frivolous.
Complainant is a
well-established American university, having been founded in 1845. For many decades, it has operated a hospital
and medical center, which have gained national and international renown. Complainant owns not only USPTO registrations
for its basic mark, BAYLOR (Registration No. 1,465,910 issued December 1, 1986
) but also for the mark,
Respondent registered the disputed domain name on May 24, 2008. Respondent has parked that name with a third party that provides a website at the name which offers links to the websites of Complainant’s competitors.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
As Complainant has
furnished the Panel with pertinent evidence of its valid USPTO service mark
registrations for both the marks, BAYLOR and
that the disputed domain name, <baylormedicalcenter.com>,
is not identical to any of Complainant’s marks, including
The Panel notes
In reaching its finding that the disputed domain name is confusingly similar to Complainant’s service mark, the Panel notes that previous Policy panels have held consistently that merely omitting descriptive words from a registered trademark or service mark does not eliminate its confusing similarity with an otherwise identical disputed domain name. See Macromedia Inc. v. Totto Cutugno, D2008-0323 (WIPO Apr. 19, 2008) (“The Panel finds that the domain name <northjerseymedia.com> is confusingly similar to the Complainant’s registered service mark NORTH JERSEY MEDIA GROUP.”); see also Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the disputed domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).
In line with the reasoning above, the Panel finds that Complainant has proved that the disputed domain name is identical or confusingly similar to a service mark in which Complainant has rights.
Complainant’s demonstration of its valid rights in a service mark that is confusingly similar to the domain name at issue, together with Respondent’s failure to assert any sort of affiliation with Complainant, convinces the Panel that Complainant has mounted a prima facie case that Respondent has no rights or legitimate interests in said name. It then behooves the Respondent to come forward with evidence to rebut that prima facie case. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO Aug. 21, 2003) (“The Panel notes that Complainant bears the ‘general burden of proof’ under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests.”); see also Document Technologies, Inc. v. Int’l Elec. Communications Inc., D2000-0270 (WIPO June 6, 2000) (“…once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
primary contentions in support of its claim to rights and legitimate interests
in the disputed domain name are that: (i) “Baylor” refers to “
contends, and Respondent concedes, the “use” to which the disputed domain name
is currently put involves parking it with a third party who supplies a website
that furnishes links to the websites of other third parties that provide
services competing directly with those offered by Complainant. Moreover, Respondent does not deny
Complainant’s contention that Respondent receives so-called “pay-per-click”
fees attendant to such linkage.
Innumerable prior UDRP panels have concluded that such use of a disputed
domain name fails to constitute “a bona
fide offering of goods or services” per paragraph 4(c)(i). See,
e.g., Constellation Wines U.S., Inc.
Given that a “pay-per-click” scheme is a commercial venture, those same panels also conclude that such disputed domain name usage fails to meet the “noncommercial or “fair use” criterion listed in paragraph 4(c)(iii) of the Policy. The Panel concurs with such reasoning in this case.
Respondent does not claim, and there is no basis from the record to sustain a finding, that Respondent is commonly known as the disputed domain name, so the Panel sees no applicability of Policy paragraph 4(c)(ii) to the instant case.
While Respondent is not limited to the criteria listed in paragraph 4(c) to prevail on the issue of rights and legitimate interests, the Panel finds that Respondent has failed to put forth serious contentions beyond those discussed above.
In summation, the Panel concludes that Complainant has shown that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant suggests that the Panel should apply the circumstance delineated in paragraph 4(b)(iv) of the Policy to find that the Respondent registered and is using the disputed domain name in bad faith. To apply that paragraph, the Panel must conclude that “by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.”
The Panel draws that very conclusion because it is persuaded that Respondent registered the disputed domain name—which name Respondent knew would be confused by Internet users with Complainant’s nearly identical mark—deliberately to attract those users to a website that offers links to the websites of Complainant’s competitors for Respondent’s profit. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy paragraph 4(b)(iv)); see also Caesars Entm’t, Inc. v. Infomax, Ltd., D2005-0032 (WIPO Mar. 6, 2005) (“The Panel is satisfied that the Respondent is intentionally using the Domain Name to attract internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s well-known mark, and that the Respondent gains commercially from such confusion by receiving “click-through” commissions. This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.”).
contention that it seeks to create an online business directory for a
Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylormedicalcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Dated: February 12, 2009
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