National Arbitration Forum




Baylor University v. Virtual Oil, LLC c/o Domain Administrator

Claim Number: FA0901001240570



Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA.  Respondent is Virtual Oil, LLC c/o Domain Administrator (“Respondent”), represented by Eric Pravda, Texas, USA.



The domain name at issue is <>, 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 <> 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 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.



A. Complainant

- Complainant, Baylor University, is an institution of higher learning located in Texas, United States of America that began operation in 1845.  It has used the marks, BAYLOR and BAYLOR UNIVERSITY, continuously since that time in furnishing education as well as other goods and services.


- Complainant owns several United States Patent and Trademark Office (“USPTO”) registrations for its marks.  It has also registered the domain name <> 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 mark BAYLOR UNIVERSITY MEDICAL CENTER.  With its flagship hospital located in Dallas, Texas, Complainant has overseen the Baylor Medical School since at least 1969.  Both the hospital and the medical school are renowned nationally and internationally for their excellence in medical care and instruction.


- The domain name at issue, <>, is identical or confusingly similar to any number of Complainant’s validly registered service marks, particularly the mark BAYLOR UNIVERSITY MEDICAL CENTER.


- 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.


B. Respondent

- The disputed domain name, <>, is not identical to Complainant’s mark, BAYLOR UNIVERSITY MEDICAL CENTER.  “Baylor” in the name is a reference to Baylor County, Texas not Baylor University.


- Respondent acquired the disputed domain name for use as a business directory relevant to Baylor County, Texas.  Awaiting development of an appropriate website, the disputed domain name has been parked with a search engine provider, allowing Internet users to use links and search for what they want without any attempt to mislead them or tarnish Complainant’s marks.  Measures have been taken to disable any links that reference those marks.


- The domain name in question was not registered in bad faith.  Respondent has lived within Texas for 32 years, near Baylor County, Texas.  Respondent is not trying to disrupt Complainant’s business and has not tried to sell or rent the name to Complainant or a competitor.  Respondent does not have a record as a cyber squatter.


- 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 directory for Baylor County, Texas.  Moreover, there is no rational reason to use the word “medical” in relation to a business directory.


- Baylor County is one of the smallest counties in Texas – populated by under 4,000 people – and is some 450 miles from Respondent’s location.  Thus, there is no rationale to support the development of a business directory for such a small county by an entity not located in its vicinity.


- 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 Texas universities.


- 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, BAYLOR UNIVERITY MEDICAL CENTER (Registration No. 1,670,564 issued December 31, 1991).


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.


Identical and/or Confusingly Similar


As Complainant has furnished the Panel with pertinent evidence of its valid USPTO service mark registrations for both the marks, BAYLOR and BAYLOR UNIVERSITY MEDICAL CENTER (see Exhibit B), the Panel determines that Complainant has rights in those marks sufficient to satisfy the requirements of Policy paragraph 4(a)(i).  See Trip Network Inc. d/b/a Cheap Tickets, Inc. v. Sigfredo Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the marks pursuant to Policy paragraph 4(a)(i)); see also Baylor Univ. v. Baylor Univ., FA 791433 (Nat. Arb. Forum Oct. 23, 2006).


Respondent contends that the disputed domain name, <>, is not identical to any of Complainant’s marks, including BAYLOR UNIVERSITY MEDICAL CENTER.  Respondent is right.  However, in the Panel’s opinion, it is beyond obvious that the typical Internet user would confuse the name with that mark.


The Panel notes that “Baylor University” is most commonly referred to as only “Baylor” by most Americans.  Thus, virtually every American Internet user would conclude summarily that that university authored the website found at <>, especially in view of the fact that Baylor does operate a medical center.  On the other hand, the Panel believes that, outside its immediate environs, almost no American Internet users have heard of Baylor County, Texas, the locale on which Respondent claims the disputed domain name is based.  Respondent, a Texas resident and therefore an American, should be well aware that simply omitting the descriptive denomination, “university,” from the disputed domain name would not reduce the confusingly similarity between the name and Complainant’s mark.


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 <> 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 <> 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.


Rights or Legitimate Interests


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.”).


Respondent’s primary contentions in support of its claim to rights and legitimate interests in the disputed domain name are that: (i) “Baylor” refers to “Baylor County, Texas” not “Baylor University;” and (ii) Respondent intends to create a website attached to the name to serve as a business directory for Baylor County.  In forwarding such contentions, Respondent, in the Panel’s estimation, is invoking, at least implicitly, the criterion found in paragraph 4(c)(i) of the Policy to support Respondent’s claim to said rights and legitimate interests.  However, Respondent has provided the Panel with exactly zero evidence to substantiate the latter contention.  Standing alone, Respondent’s mere assertion of its intention to use the disputed domain name in the future is insufficient to comply with said paragraph 4(c)(i) criterion, i.e., “demonstrable preparation to use the domain name…in connection with a bona fide offering of goods or services,” in Respondent’s favor.  See AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Lozada, D2005-0485 (WIPO Aug. 29, 2005) (“Given that paragraph 4(c)(i) of the Policy requires Respondent to show ‘demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services,’ the Panel concludes that the mere assertion of such an intention, even in the form of an affidavit, is insufficient.”); see also Adu v. Fushille, D2004-0682 (WIPO Oct. 17, 2004) (“Intentions are not “demonstrable preparations” to use a domain name.”).


As Complainant 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. v. Tex. Int’l Prop. Assoc., FA 948436 (Nat. Arb. Forum May 8, 2007); see also Robert Bosch GmbH v. Asia Ventures, Inc., D2005-0946 (WIPO Nov. 2, 2005) (“The use of the Complainant’s trademark to offer for sale or to direct customers to the products of the Complainant’s competitors is objectionable, and therefore not bona fide…”).


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.


Registration and Use in Bad Faith


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.”).


Respondent’s contention that it seeks to create an online business directory for a Texas county is found by the Panel to be wholly disingenuous.  Furthermore, in response to Respondent’s contention that it does not “have a track record of being a cyber squatter,” the Panel is willing go on record as being the first to label Respondent as such. 


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 <> domain name be TRANSFERRED from Respondent to Complainant.




Dennis A. Foster, Panelist
Dated: February 12, 2009



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