Claim Number: FA0909001283235
Complainant is
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <baylorhomecoming.com>, registered with Moniker.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 8, 2009; the National Arbitration Forum received a hard copy of the Complaint September 9, 2009.
On September 8, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <baylorhomecoming.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker verified that Respondent is bound by the Moniker registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 1, 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@baylorhomecoming.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 7, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Preliminary Issue: Respondent’s Other
Correspondence
Respondent sent “other correspondence” that the Forum has
determined is not to be considered as a response because it does not comply
with the Policy. The Response was not
received in hard copy, but was only sent in electronic form to the National
Arbitration Forum. The Panel reviewed
this “other correspondence” with a view toward making a determination as to
whether it contained information that might have an effect on the outcome of
this ICANN dispute. It did not.
Preliminary Issue:
Arbitration Jurisdiction
Respondent, in its “other correspondence,” argues, among
other things, that Respondent has not agreed to settle disputes under the
jurisdiction of the National Arbitration Forum. Respondent contends that it will only respond
to the direct communications from ICANN.
Respondent consented to be bound to the UDRP when it executed the
Registration Agreement with the Registrar.
The verification e-mail from Moniker
also reflects that the UDRP applies to Respondent’s registration of the
disputed domain name. See Weber-Stephen
Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000)
(finding that the UDRP applied because: “[b]y virtue of its contract with NSI,
Respondent agreed to be bound by NSI’s then-current domain name dispute policy,
and any changes made to that policy made by NSI in the future”). While Policy ¶ 4(k) allows the parties to
litigate in court, the Panel remains free to decide the instant dispute on the
merits strictly under the guidelines of the Policy, and trademark issues other
than those expressly enumerated within the Policy ¶ 4(a) elements fall outside
of the scope of the Panel’s jurisdiction.
Based upon the allegations in the Complaint, and the lack of a formal Response by Respondent, this Panel finds that it is appropriate under the Policy to give no consideration to Respondent’s “other correspondence.”
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <baylorhomecoming.com>, is confusingly similar to Complainant’s BAYLOR mark.
2. Respondent has no rights to or legitimate interests in the <baylorhomecoming.com> domain name.
3. Respondent registered and used the <baylorhomecoming.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant,
Complainant holds several registrations of its BAYLOR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,465,910 issued November 17, 1987).
Respondent registered the <baylorhomecoming.com> domain name April 20, 2009. The disputed domain name resolves to a website displaying click-through links appearing to refer to Complainant, yet the links subsequently divert Internet users to third-party websites that are not affiliated with Complainant. For example, the website resolving from the disputed domain name displays a link entitled “Football Tickets.”
In response to Complainant’s cease-and-desist letter,
Respondent stated that he “had no plans to or ability to transfer the domain name
. . . and would like to discuss [his] options with other organizations across
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 to 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.
The Panel finds that Complainant’s numerous registrations of
the BAYLOR mark with the USPTO (e.g., Reg. No. 1,465,910 issued November 17,
1987) adequately demonstrate Complainant’s long-standing rights in the BAYLOR
mark under Policy ¶ 4(a)(i).
Respondent’s disputed domain name incorporates Complainant’s BAYLOR mark in its entirety with the addition of the descriptive term “homecoming” and the affixation of the generic top-level domain “.com.” The term “homecoming” relates to Complainant and its BAYLOR mark because it is descriptive of the annual fall festivities on campuses everywhere. The Panel finds that Respondent’s alterations fail to sufficiently distinguish the disputed domain name from Complainant’s BAYLOR mark. Therefore, the Panel finds that Respondent’s <baylorhomecoming.com> domain name is confusingly similar to Complainant’s BAYLOR mark under Policy ¶ 4(a)(i). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also 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).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights to or legitimate interests in the <baylorhomecoming.com> domain name. If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c). The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Since no response was submitted in this case, the Panel may presume that Respondent has no rights to or legitimate interests in the disputed domain name. However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s <baylorhomecoming.com> domain name resolves to a website displaying click-through links appearing to refer to Complainant, yet the sponsored links divert Internet users to third-party websites that are not affiliated with Complainant. For example, the website resolving from the disputed domain name displays a link entitled “Football Tickets,” which offers competing football game ticket services. The Panel finds that Respondent is likely profiting from this diversion scheme through the generation of click-through fees. Thus, the Panel concludes that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <baylorhomecoming.com> domain name. Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the BAYLOR mark, and the WHOIS information identifies Respondent as “Neill Mcdonald c/o 75 dollar fee for a response from owner.” Thus, the Panel finds that Respondent is not commonly known by 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.”).
In addition, the Panel finds that Respondent lacks rights and legitimate interests in the <baylorhomecoming.com> domain name pursuant to Policy ¶ 4(a)(ii) due to Respondent’s inference that the disputed domain name will be offered for sale to third-parties for an amount in excess of its out-of-pocket registration costs. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s assertion in response
to Complainant’s cease-and-desist letter implies that Respondent intends to
offer the disputed domain name for sale to other “organizations across
Respondent’s <baylorhomecoming.com> domain name resolves to a website displaying click-through links that further resolve to websites that offer services that compete with Complainant. For example, one of the links appearing at the website resolving from the disputed domain name is entitled “Football Tickets.” The Panel finds that it is likely that Internet users will click on these links with the assumption that the links will provide access to Complainant’s football ticket services. The Panel finds that Respondent’s diversion of Internet users to third-party websites that compete with Complainant likely disrupts Complainant’s business and thus, is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See 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).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Lastly, Respondent is using the <baylorhomecoming.com> domain name, which was registered on April 20, 2009, to intentionally divert Internet users to the associated website, which displays third-party links to competing websites. The Panel presumes that Respondent is collecting click-through fees and attempting to profit by creating a likelihood of confusion between Complainant’s BAYLOR mark and the confusingly similar <baylorhomecoming.com> domain name. Internet users are likely to become confused as to Complainant’s affiliation or sponsorship of the disputed domain name and the links appearing at the resolving website. Therefore, the Panel finds that this is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“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).”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylorhomecoming.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 21, 2009.
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