Baylor University v. Texas International Property Associates
Claim Number: FA1009001345708
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Texas International Property Associates (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <baylorallsaintshospital.com> and <baylorunversity.com>, registered with Compana, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2010.
On September 14, 2010, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <baylorallsaintshospital.com> and <baylorunversity.com> domain names are registered with Compana, LLC and that Respondent is the current registrant of the names. Compana, LLC has verified that Respondent is bound by the Compana, 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 September 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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 postmaster@baylorallsaintshospital.com and postmaster@baylorunversity.com by e-mail. Also on September 14, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <baylorallsaintshospital.com> domain name is confusingly similar to Complainant’s BAYLOR mark
Respondent’s <baylorunversity.com> domain name is confusingly similar to Complainant’s BAYLOR UNIVERSITY mark.
2. Respondent does not have any rights or legitimate interests in the <baylorallsaintshospital.com> and <baylorunversity.com> domain names.
3. Respondent registered and used the <baylorallsaintshospital.com> and <baylorunversity.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Baylor University, was originally chartered in 1845 by the Republic of Texas. Complainant provides a wide curriculum of educational services through its eight colleges and schools at both the undergraduate and graduate levels. Complainant holds numerous registrations with the United States Patent and Trademark Office (“USPTO”) for the BAYLOR mark (e.g., Reg. No. 1,465,910 issued November 17, 1987). Complainant also holds trademark registrations with the USPTO for the BAYLOR UNIVERSITY mark (e.g., Reg. No. 1,923,603 issued October 3, 1995). Complainant uses the BAYLOR mark in connection with its university and educational services, as well as in connection with the Baylor All Saints Medical Center in Fort Worth, Texas.
Respondent, Texas International Property Associates, registered the <baylorallsaintshospital.com> domain name on December 10, 2004 and the <baylorunversity.com> domain name on May 11, 2005. The disputed domain names resolve to generic parking pages filled with third-party pay-per-clicks links that are both competing with and unrelated to Complainant.
Respondent has a history of registering domain names that infringe upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007); see also Throneburg v. Tex. Int’l Prop. Assocs., FA 1157267 (Nat. Arb. Forum Apr. 22, 2008); see also Kuhns Bros. Log Homes, Inc. v. Tex. Int’l Prop. Assocs., FA 1334514 (Nat. Arb. Forum Aug. 24, 2010).
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 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 that 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 Respondent is identical 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.
Complainant claims rights in the BAYLOR mark through its registrations of the mark with the USPTO (e.g., Reg. No. 1,465,910 issued November 17, 1987). Complainant also claims rights in the BAYLOR UNIVERSITY mark through its registrations of the mark with the USPTO (e.g., Reg. No. 1,923,603 issued October 3, 1995). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the BAYLOR and BAYLOR UNIVERSITY marks pursuant to Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant avers Respondent’s <baylorallsaintshospital.com> domain name is confusingly similar to its BAYLOR mark. Complainant replicates Complainant’s mark in the disputed domain name and then adds the descriptive terms “all,” “saints,” and “hospital,” which together reference and describe Complainant’s All Saints Medical Center. Finally, Respondent attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds that adding descriptive terms to Complainant’s mark does not sufficiently distinguish Respondent’s domain name from Complainant’s mark. See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel also finds that the presence of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds Respondent’s <baylorallsaintshospital.com> domain name is confusingly similar to its BAYLOR mark under Policy ¶ 4(a)(i).
Complainant also alleges Respondent’s <baylorunversity.com> domain name is confusingly similar to its BAYLOR UNIVERSITY mark. Complainant argues that Respondent deletes the spaces between the words in its mark and then uses a common misspelling of “university,” omitting the letter “i,” in the disputed domain name. In addition, Respondent affixes the gTLD “.com” to Complainant’s mark. The Panel finds that a typographical error like the omission of a single letter does not differentiate the disputed domain name from Complainant’s mark. See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant). The Panel also finds that the elimination of the space between the terms and the addition of a gTLD do not render a domain name distinct from a mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Therefore, the Panel finds Respondent’s <baylorunversity.com> domain name is confusingly similar to Complainant’s BAYLOR UNIVERSITY mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent is not commonly known by the <baylorallsaintshospital.com> and <baylorunversity.com> domain names. The WHOIS information for both disputed domain names lists the registrant as “Texas International Property Associates,” a name that is not on its face connected with the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant argues that Respondent’s <baylorallsaintshospital.com> and <baylorunversity.com> domain names are not being used for anything except a parking page filled with third-party pay-per-click links, some of which compete with Complainant. The Panel finds that this use of the domain names does not comport with the Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) requirements of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Complainant alleges that Respondent’s <baylorunversity.com> domain name represents typosquatting because the disputed domain name is merely a common misspelling or typographical error in Complainant’s BAYLOR UNIVERSITY mark. Complainant argues that Respondent’s typosquatting is further evidence of its lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has been subject to numerous UDRP proceedings, wherein the disputed domain names were ordered to be transferred from Respondent to the respective complainants. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007); see also Throneburg v. Tex. Int’l Prop. Assocs., FA 1157267 (Nat. Arb. Forum Apr. 22, 2008); see also Kuhns Bros. Log Homes, Inc. v. Tex. Int’l Prop. Assocs., FA 1334514 (Nat. Arb. Forum Aug. 24, 2010). Therefore, the Panel finds that Respondent’s registration of the <baylorallsaintshospital.com> and <baylorunversity.com> domain names, along with the prior UDRP decisions, indicates that Respondent has engaged in a pattern of bad faith registration and use under the Policy ¶ 4(b)(ii). See Arai Helmet Am., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been the subject of numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant contends that Respondent’s <baylorallsaintshospital.com> and <baylorunversity.com> domain names redirect to generic parked websites featuring pay-per-click links to websites referencing Complainant and websites in competition with Complainant. The use of such a website in connection with the disputed domain names clearly disrupts Complainant’s business as Internet users arriving at this site may be potential customers lost for Complainant, despite their initial intentions to seek out Complainant. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors demonstrate bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. It is a reasonable inference that Respondent’s purpose of registration and use was either to disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent uses Complainant’s BAYLOR and BAYLOR UNIVERSITY marks in the <baylorallsaintshospital.com> and <baylorunversity.com> domain names in order to intentionally attract Internet users seeking Complainant’s online presence. Due to the presence of pay-per-click links on the resolving websites, it is likely that Internet users will click on the links once arriving at Respondent’s websites, thereby generating click-through revenue for Respondent. The Panel finds that Respondent’s efforts to mislead Internet users and attract Complainant’s business for Respondent’s own commercial gain is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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).”); see also 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).
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the confusingly similar <baylorunversity.com> domain name. The Panel finds Respondent’s practice of typosquatting is evidence in and of itself of bad faith registration and use under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
The Panel finds Complainant has satisfied 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 <baylorallsaintshospital.com> and <baylorunversity.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 30, 2010
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