national arbitration forum

 

DECISION

 

Baylor University v. PrivacyProtection1.com / Domain Admin

Claim Number: FA1101001370278

 

PARTIES

Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA.  Respondent is PrivacyProtection1.com / Domain Admin (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <baylormedicalclinic.com>, registered with FABULOUS.COM PTY LTD.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no known conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2011; the National Arbitration Forum received payment on February 1, 2011.

 

On January 31, 2011, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <baylormedicalclinic.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name.  FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by against it by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2011 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@baylormedicalclinic.com.  Also on February 8, 2011, 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 march 4, 2011, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is the oldest institution of higher learning in the State of Texas. 

 

Complainant provides a broad curriculum to both graduate and undergraduate students, and it operates a medical school and hospital system under the BAYLOR service mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,465,910, issued November 17, 1987).

 

Respondent registered the disputed <baylormedicalclinic.com> domain name on February 1, 2010. 

 

The disputed domain name resolves to a website displaying links to the websites of Complainant’s competitors in the administration of healthcare services. 

 

Respondent’s <baylormedicalclinic.com> domain name is confusingly similar to Complainant’s BAYLOR service mark.

 

Respondent is not commonly known by the disputed <baylormedicalclinic.com> domain name, and Complainant has never authorized Respondent to use its BAYLOR service mark.

 

Respondent does not have any rights to or legitimate interests in the domain name <baylormedicalclinic.com>.

 

Respondent registered and uses the <baylormedicalclinic.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 a 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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the BAYLOR service mark pursuant to Policy ¶ 4(a)(i) based on its registration of the mark with a national trademark authority, the USPTO.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish such rights in some jurisdiction).

 

Respondent’s <baylormedicalclinic.com> domain name is confusingly similar to the BAYLOR service mark.  The disputed domain name incorporates the entire mark and merely adds the descriptive terms “medical” and “clinic,” which are descriptive of Complainant’s enterprise.  Additionally, Respondent has added the generic top-level domain (“gTLD”) “.com.”  These alterations of the mark in forming the contested domain name do not result in a unique domain name for purposes of the Policy.  Therefore, we conclude that Respondent’s <baylormedicalclinic.com> domain name is confusingly similar to the BAYLOR mark pursuant to Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Miller, FA 180625 (Nat. Arb. Forum Sept. 15, 2003) (finding confusing similarity where “[t]he domain name includes Complainant’s mark with the addition of the descriptive word “hot,” which does not dispel any confusion arising from the inclusion of Complainant’s mark in the domain name.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).

 

The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks both rights to and legitimate interests in the disputed domain name.  Once Complainant makes out a prima facie showing in support of this allegation, Respondent acquires the burden of proving that it does have rights to or legitimate interests in a disputed domain name.  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 under this head of the Policy, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name).

 

Complainant has met its burden of making out a prima facie showing under Policy ¶ 4(a)(ii).   Because Respondent has failed to submit a response to the Complaint filed in these proceedings, we may presume that Respondent lacks both rights to and legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):

 

[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.

 

Nonetheless, we elect to review the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.

 

We begin by observing that Complainant argues, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Complainant has never authorized Respondent to use the BAYLOR service mark.  Moreover, the pertinent WHOIS information identifies the registrant of the contested domain only as PrivacyProtection1.com / Domain Admin, which does not resemble the contested domain.  Therefore, we conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain in accordance with ¶ 4(c)(ii) of the Policy.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).

 

We also note that Complainant alleges, without objection from Respondent, that Respondent’s <baylormedicalclinic.com> domain name resolves to a website displaying links to third-party websites that are in competition with Complainant’s medical and educational services enterprise.  In the circumstances here presented, we may comfortably presume that Respondent generates revenue from click-through fees associated with the visits of Internet users to these hyperlinks.  We therefore conclude that such use of the contested domain 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).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a contested domain name to operate a portal page with hyperlinks to various third-party websites, some of which may be in competition with the business of a complainant, does not constitute 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 Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that a respondent’s use of a contested domain name to maintain a commercial website with links to websites featuring the products and services of that complainant’s competitors did 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)).

 

The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain name to refer unsuspecting Internet users to a website displaying links to still other sites that operate in competition with Complainant’s education and healthcare services.  These links undoubtedly disrupt Complainant’s business.  Respondent’s use of the contested domain in the manner alleged qualifies as proof of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).  See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where a respondent’s website featured hyperlinks to competing websites and included a link to a complainant’s website, that respondent’s use of the <redeemaamiles.com> domain name constituted disruption of that complainant’s business under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using disputed domain names to operate a search engine with links to the products of the complainant and to complainant’s commercial competitors, as well as by diverting Internet users to several other domain names).

 

Respondent presumably benefits commercially from the receipt of click-through fees that are generated from the visits of Internet users to the hyperlinks posted on the website resolving from the <baylormedicalclinic.com> domain name.  Because Respondent’s domain name is confusingly similar to Complainant’s BAYLOR service mark, Internet users stand to be confused as to the possibility of Complainant’s sponsorship of, or affiliation with, the hyperlinks and disputed domain name.  Respondent’s use of the disputed domain name in this manner is evidence of bad faith registration and use of the disputed domain name pursuant to 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, for example, DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):

 

The Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).

 

For these reasons, the Panel finds that Complainant has met its obligations under Policy ¶ 4(a)(iii).

 

DECISION

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 <baylormedicalclinic.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  March 11, 2011


 

 

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