Claim Number: FA0905001265512
Complainant is
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <baylorcollege.com>, registered with Domainsurgeon.com LLC.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 1, 2009.
On June 4, 2009, Domainsurgeon.com LLC confirmed by e-mail to the National Arbitration Forum that the <baylorcollege.com> domain name is registered with Domainsurgeon.com LLC and that Respondent is the current registrant of the name(s). Domainsurgeon.com LLC has verified that Respondent is bound by the Domainsurgeon.com LLC 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 June 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of June 29, 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 postmaster@baylorcollege.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 1, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 presumably for the profit of Respondent.
A. Complainant makes the following assertions:
Complainant provides educational services at the
undergraduate and graduate levels and has operated under the
Complainant holds various registrations with the United States Patent and Trademark Office (“USPTO”) for the BAYLOR service mark (including Reg. No. 1,465,910, issued November 17, 1987).
Complainant has never authorized Respondent to use the BAYLOR mark.
Respondent registered the <baylorcollege.com> domain name on December 6, 2008.
The disputed domain name resolves to a website featuring advertisements for Complainant’s competitors.
Respondent’s <baylorcollege.com> domain name is confusingly similar to Complainant’s BAYLOR mark.
Respondent does not have any rights to or legitimate interests in the domain name <baylorcollege.com>.
Respondent registered and uses the <baylorcollege.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its BAYLOR service mark
through its registration of the mark with the USPTO. See, for example,
The disputed domain name includes Complainant’s entire mark, and merely adds the descriptive term “college,” which relates to Complainant’s business and the generic top-level domain “.com.” The addition of the word “college” fails to distinguish the disputed domain name from the competing mark under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity or confusing similarity for purposes of the
Policy despite the addition of other words to such marks.
See also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity between a mark and a competing domain name where the domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business).
Similarly, the presence of a top-level domain in a contested domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s BAYLOR mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <baylorcollege.com> domain name. When a complainant makes out a prima facie case in support of its allegations, the burden shifts to a respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that, once a prima facie case has been established by a complainant, the burden then shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name pursuant to Policy ¶ 4(c)).
Complainant has made out a sufficient prima facie case. Owing to Respondent’s failure to respond to the Complaint, we may assume that Respondent does not have rights to or legitimate interests in the <baylorcollege.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint).
Nonetheless, we will examine the record before us to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name in light of the considerations set out in Policy ¶ 4(c).
We begin by noting that there is no dispute as to
Complainant’s allegation that Respondent’s <baylorcollege.com>
domain name resolves to a website featuring advertisements for Complainant’s
competitors presumably for the economic profit of Respondent, whether by way of
click-through fees or otherwise. Such a
use of a domain name confusingly similar to the BAYLOR mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use of the domain name under Policy ¶ 4(c)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using a
domain name identical or confusingly similar to a competing mark to earn
click-through fees via sponsored links to a complainant’s competitors does not
represent a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii));
see also Jerry
Damson, Inc. v.
We also observe that there is no evidence in the record demonstrating that Respondent is commonly known by the <baylorcollege.com> domain name. Moreover, Complainant asserts that it has never authorized Respondent to use the BAYLOR mark, and the pertinent WHOIS information identifies Respondent only as “WhoisAgent.” Therefore, Respondent has not established rights to or legitimate interests in the domain name <baylorcollege.com> pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent did not have rights in a domain name where that respondent was not commonly known by the domain name in issue).
The Panel thus finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent does not deny Complainant’s assertion to the effect that Respondent is using the <baylorcollege.com> domain name, which we have found is confusingly similar to Complainant’s BAYLOR service mark, to redirect Internet users interested in finding Complainant to a website featuring advertisements for Complainant’s business competitors. Such use constitutes disruption of Complainant’s business and is, therefore, evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to a complainant’s mark to attract Internet users to a website containing links to the websites of that complainant’s business competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):
This
Panel concludes that by redirecting Internet users seeking information on
Complainant’s educational institution to competing websites, Respondent has
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
From the circumstances here presented, we have justifiably inferred
that Respondent receives click-through fees or similar income from the site
resolving from the disputed domain name, and thus profits economically from its
use of the disputed domain name. For
this reason, and because Internet users may become confused from the similarity
between the domain and Complainant’s mark as to Complainant’s possible affiliation
with Respondent’s website, we conclude that Respondent’s use of the domain as
described in the Complaint constitutes bad faith registration and use pursuant
to Policy ¶ 4(b)(iv). See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by using it to offer links to third-party websites featuring services similar to those offered by that complainant).
The Panel therefore finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <baylorcollege.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 14, 2009
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