Board of Regents, The
Claim Number: FA1004001322040
Complainant is Board of Regents, The
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <texassports.org> (the “Domain Name”), registered with Nameview Inc.
The undersigned certify that each has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., and Hon. Neil Brown, QC, as Panelists; Christopher Gibson as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2010.
On May 4, 2010, Nameview Inc. confirmed by e-mail to the National Arbitration Forum that the <texassports.org> Domain Name is registered with Nameview Inc. and that the Respondent is the current registrant of the name. Nameview Inc. has verified that Respondent is bound by the Nameview 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 May 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on May 6, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 26, 2010.
Complainant submitted an Additional Submission on June 1, 2010 that was deemed timely and in compliance with Supplemental Rule 7. On June 8, 2010, an additional submission of Respondent was forwarded to the panel, which had been received by the Forum in a timely manner in accordance with Supplemental Rule 7.
On June 7, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr. and Hon. Neil Brown, QC as Panelists, and Christopher Gibson as the Presiding Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant alleges that the Domain Name is identical or confusingly similar to Complainant’s trademarks, as well as to its website address for athletics at <texassports.com>.
Complainant and its flagship
institution, The University of Texas at Austin (“UT”), use the marks
Complainant further explains that UT’s licensing program is
highly successful. Fans of UT and its athletics programs can
purchase a wide variety of licensed products adorned with Complainant’s trademarks. UT’s athletics programs have been highly
successful over the years, and the name TEXAS LONGHORNS has become one of the
best-known names in the world of college sports. UT holds the record for the most
collegiate licensing royalties earned in a single year, and has been the top
Complainant states that UT uses the domain name <texassports.com> as the primary website for its sports teams. The website at <texassports.com> enjoys high traffic levels, averaging over 300,000 visits per month over the last year.
Complainant contends that the Domain Name is identical or confusingly similar to Complainant’s UT marks and to its athletics website address. The Domain Name <texassports.org> incorporates UT’s TEXAS mark in its entirety, merely tacking on the term “sports,” a generic or descriptive term likely to be associated with UT and its sports teams. Complainant argues that this is particularly true considering that UT uses and heavily promotes its website at <texassports.com>. Internet users looking for UT’s athletics page are likely to be confused if they mistakenly employ the wrong generic top-level domain (“gTLD”) (“.org” instead of “.com”) and arrive at Respondent’s website.
Complainant contends that Respondent has no rights or
legitimate interests in the Domain Name.
Respondent is not commonly known by the Domain Name, nor is Respondent
making a legitimate noncommercial or fair use of the Domain Name. Respondent has not used, nor made any demonstrable
preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Domain Name <texassports.org>
is used in connection with a parking page displaying links with titles
likely to be associated with Complainant or its products and services, such as
“Texas Football,” “Texas Sports,” and “College basketball,” among others. Clicking on these links diverts users to
third-party websites that appear to relate to UT but are not affiliated with
Complainant. For example, clicking on
the link “
Complainant asserts that Respondent registered the Domain Name in bad faith. Respondent presumably is paid a fee or commission when Internet users visit the website at <texassports.org>, click on the various links likely to be associated with Complainant, and are diverted to third-party websites. Thus, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the UT Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website. Complainant contends that Respondent’s attempt to capture Internet users seeking the Complainant, who employ the wrong gTLD (“.org” instead of “.com”), is evidence of use and registration in bad faith.
UT’s attorneys sent Respondent a cease-and-desist letter on February 11, 2010. The attorney for Respondent responded, refusing to transfer the Domain Name. Complainant’s attorneys responded on April 9, 2010, refuting Respondent’s position, and again requested transfer of the Domain Name. However, Respondent’s attorney did not respond to the second letter. Instead, Complainant states that Respondent has continued its infringing activity despite being given notice of UT’s trademark rights. Not only is the Domain Name itself highly likely to cause confusion, but Respondent also displays link titles on its website and linked monetized pages that are clear references to UT and its goods and services.
Complainant states that Respondent has also engaged in a pattern of bad faith registration and use of others’ trademarks as Domain Names. Complainant cites fifteen prior UDRP decisions against Respondent and claims that these decisions show Respondent has registered domain names incorporating others’ well-known marks, in bad faith.
Respondent’s bad faith is thus evidenced by the fact that it owns no trademark or other intellectual property rights in the Domain Name; the Domain Name does not consist of the legal name of or a name commonly used to identify Respondent; Respondent has not used the Domain Name in connection with the bona fide offering of any goods or services; Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the Domain Name; and Respondent’s Domain Name wholly incorporates the Complainant’s TEXAS mark.
Respondent argues that there is no basis for transferring the Domain
Name to Complainant. Respondent
emphasizes that the Complaint should be denied, firstly, because Complainant’s
trademarks – none of which are for the term “texas sports” – are not identical
or confusingly similar to the Domain Name.
Complainant’s geographically descriptive mark for TEXAS does not give Complainant
a monopoly on all terms incorporating “Texas,” the name of a U.S. state,
regardless of whether the term contains a word for a good or service alleged to
be covered by Complainant’s mark. Complainant’s suggestion that it has a right
to the Domain Name containing the word “sports,” because its trademark covers
the provision of “sporting events,” is overreaching. Complainant is essentially claiming that it is
the only party entitled to use the name of the State of
Moreover, Respondent contends that its registration of the Domain Name
was in good faith and establishes its legitimate interest because “texas
sports” is a geographically descriptive term, and such terms can be registered
in a domain name on a first come, first-served basis. Respondent states that it registered the
Domain Name because it was a geographically descriptive term to which it
believed no party could claim exclusive rights. The Domain Name incorporates
the descriptive term “texas sports,” which is composed of the two generic words
Respondent states that it registered the Domain Name based solely on it being geographically descriptive (and not because of Complainant’s trademark), a position which is corroborated by the more than 60 other geographically descriptive domain names Respondent has registered which incorporate the name of the State of Texas, such as <texasbiker.com>, <texastrucks.org>, <texasconcerts.com>, <texasgolfclubs.com>, and <texasfishingmap.com>. Such a pattern of registration supports Respondent’s legitimate interest.
Respondent also claims that it uses the Domain Name in a descriptive manner, hosting it with <HitFarm.com>, a service which displays related pay-per-click (“PPC”) on the page such as “Texas Sports;” “Texas Football;” “Baseball schedule;” “Austin, Texas;” “Houston, Texas;” and “High School Sports.” As such, Complainant is incorrect in its allegation that such use does not constitute a bona fide offering of goods and services. The use of a domain name to post related PPC links has been found to establish a respondent’s legitimate interest under the Policy on numerous occasions, including with respect to such use of a domain name by the Respondent in this case.
contends that it has not engaged in bad faith registration or use. Respondent
affirmatively states that it registered the Domain Name because it incorporated
a common descriptive term, and that Respondent had no knowledge of
that Complainant does not have the exclusive right to use the term
its registration of the Domain Name was entirely in good faith. Respondent
registered the Domain Name on March 4, 2006 – more than 4 years ago. Respondent
urges that Complainant’s long delay in initiating this UDRP action raises the
inference that Complainant did not believe Respondent had engaged in bad faith
registration or use. There is no evidence that Respondent has used the Domain
Name in bad faith. All links that have
appeared on <texassports.org>
are auto-generated by the <Hitfarm.com> parking service, which utilizes a
Yahoo! sponsored search feed. All of the links on the web site are related to
the contextual meaning of the words in the domain name, i.e., “
contends that it has not violated the Policy and that Complainant’s allegations
constitute an abuse of the proceedings. Complainant
is essentially arguing that it is the only party entitled to use the word
“sports” with the word “
C. Additional Submissions
In its Additional Submission, the Complainant presses its case by
reiterating the arguments presented in the Complaint and responding to
Respondent’s assertions. Complainant
emphasizes that the Domain Name is confusingly similar to its
Respondent, in its Additional Submission, seeks to refute Complainant’s
allegations. Regarding Complainant’s
arguments about confusing similarity, Respondent asserts that, without an
additional modifier, consumers seeing the mark
Moreover, Respondent states that it has not intended for its web site to display sponsored results related to Complainant’s services. The display of the links are controlled by Yahoo!’s technology, the advertisers bidding on keyword terms, and the particular search queries conducted by users. The results shown on Respondent’s web site are the same results that are displayed across the Yahoo! network when TEXAS FOOTBALL or TEXAS SPORTS is searched for, including on Complainant’s own web page. Accordingly, Respondent’s use of the Domain Name to display PPC links related to the descriptive meaning of the Domain Name constitutes use of it in connection with the bona fide offering of goods and services, thus establishing Respondent’s rights and legitimate interest. Finally, Respondent states that it did in fact remove links to “Long Horns” and “Texas Long Horns” from its web site after it received the cease and desist letter from Complainant. Respondent concludes that it did not target Complainant’s trademarks, and the key to this case is that the Domain Name <texassports.org> is a geographically descriptive term to which Complainant does not possess a mark that is identical or confusingly similar.
Complainant is the Texas State Board
established for the purpose of governing The University of Texas System, which
consists of highly regarded institutions of higher education and health
institutions throughout the State of
Complainant owns a number of trademark registrations, including the following:
UT uses the marks
UT operates a website for its athletics programs at <texassports.com>.
The Domain Name was registered by Respondent on March 4, 2006.
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 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.
In this case, however, the Panel considers that it need only address two of these points to reach its decision.
Paragraph 4(a)(i) of the Policy is satisfied when a complainant is able to prove two necessary elements: first, that the complainant has rights in a trademark or service mark, and second, that the domain name in dispute is identical or confusingly similar to the trademark or service mark on which the complainant relies.
Here, the Panel finds that
Complainant has established rights in several registered trademarks including
The Domain Name <texassports.org> contains two words, “
The Panel finds that where a trademark is
comprised of a descriptive term, as in the present case where Complainant’s
Here, the difference is not just a single
letter, but the addition of the descriptive word “sports,” which serves to
distinguish the Domain Name from Complainant’s
In sum, the Panel considers that consumers and Internet users understand that “Texas Sports” is a descriptive term referring to sports in Texas, and will not necessarily assume that <texassports.org> refers to Complainant simply because Complainant owns a TEXAS mark, which covers the presentation of sporting events.
The Panel’s decision regarding lack of confusing similarity is further bolstered by the Panel’s finding that the Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel agrees with Respondent that there is no sufficient evidence that Respondent registered the Domain Name while targeting Complainant’s trademark. The Panel is persuaded that Respondent registered the Domain Name as part of its wide-spread effort to register many geographically related domain names. The fact that Respondent continued using the Domain Name after receiving notice of Complainant’s trademark rights is not evidence of bad faith, if Respondent was entitled to use the Domain Name in the first place and used it in a manner that was not abusive, which is the case here. Because the Domain Name is comprised of common descriptive terms, the Respondent was free to register and use them, so long as Respondent did not target the Complainant or its trademarks. See, e.g., Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”).
Reverse Domain Name Hijacking
Respondent contends that, in addition to denying the Complaint, the Panel should issue a decision finding that Complainant has engaged in Reverse Domain Name Hijacking because there is no basis for the Complainant’s claim and Complainant should have known this.
Paragraph 15(e) of the Rules requires the Panel to declare that the Complaint was brought in bad faith and as an abuse of the administrative proceeding if it finds that the Complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or primarily to harass the domain name holder.
Thus, the Panel is required to form an opinion on the motivation of the Complainant in bringing the Complaint.
In the opinion of
the Panel, the Complainant, at the time it filed the Complaint, was entitled to
have regard to the fact that it had trademark rights in the term
In addition, as the Complainant focused its case on Respondent’s use of the Domain Name in connection with a pay-per-click landing page site, it was entitled to have regard to the fact that there are numerous UDRP decisions in which such use by a respondent has been found to constitute bad faith use, particularly when the complainant has a distinctive trademark and has been targeted by the respondent.
The other factor that must be taken into account is that sometimes, in such cases, there is information in the possession of the respondent and it is not until the Complaint is filed and the respondent puts in its submission that the panel finds that the respondent has a clear-cut defence and finds in its favour, as the panel has found in the present case.
Accordingly, having regard to all the circumstances in the present case, although the Panel has found that the Domain Name is not confusingly similar to Complainant’s trademarks and that the domain name was not registered and used in bad faith, the Panel finds that this is not a case of Reverse Domain Name Hijacking.
For all the above reasons, and having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Christopher S. Gibson, Panel Chair
Neil Anthony Brown, Honorable Tyrus R. Atkinson, Jr., Esq., Panelists
Dated: June 25, 2010
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