Baylor University v. Milan Kovac
Claim Number: FA1108001401792
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson of Pirkey Barber LLP, Texas, USA. Respondent is Milan Kovac (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mychartbaylorclinic.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2011; the National Arbitration Forum received payment on August 5, 2011. The Complaint was submitted in both Slovak and English.
On August 8, 2011, Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com confirmed by e-mail to the National Arbitration Forum that the <mychartbaylorclinic.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd d/b/a hebeidomains.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 11, 2011, the Forum served the Slovak language Complaint and all Annexes, including a Slovak language Written Notice of the Complaint, setting a deadline of August 31, 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@mychartbaylorclinic.com. Also on August 11, 2011, the Slovak language 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 September 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Slovak language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mychartbaylorclinic.com> domain name is confusingly similar to Complainant’s BAYLOR mark.
2. Respondent does not have any rights or legitimate interests in the <mychartbaylorclinic.com> domain name.
3. Respondent registered and used the <mychartbaylorclinic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Baylor University, has provided a wide curriculum of educational services since 1845. Complainant has registered the BAYLOR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,465,910 registered November 17, 1987). Complainant licenses its mark to Baylor College of Medicine and Baylor Health Care System in connection with medical-related services and education.
Respondent, Milan Kovac, registered the disputed domain name on October 3, 2009. The disputed domain name resolves to a parked website featuring links to third-party sites offering services similar to those offered by Complainant and its licensees (e.g., “Medical Electronic Records,” “Rehab Clinic,” and “Dental Clinic”).
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 contends that it has established rights in the BAYLOR mark. Previous panels have determined that registration of a mark with a federal trademark authority is sufficient to confer rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Complainant has provided evidence of its registration of the BAYLOR mark with the USPTO (e.g., Reg. No. 1,465,910 registered November 17, 1987). The Panel concludes that this is sufficient to establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Furthermore, the fact that Respondent operates in a different country than Complainant’s trademark registration is irrelevant to Policy ¶ 4(a)(i) analysis. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant also contends that Respondent’s domain name is confusingly similar to Complainant’s BAYLOR mark for the purposes of Policy ¶ 4(a)(i). Given that Complainant’s licensee operates a medical clinic, the Panel determines that the terms Respondent has added to Complainant’s mark, “mychart” and “clinic,” bear an obvious descriptive relationship to Complainant’s licensee’s business. The Panel determines that the addition of these terms to Complainant’s mark is insufficient to distinguish the disputed domain name. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Additionally, the addition of the generic top-level domain (gTLD) “.com” is insufficient to distinguish the disputed domain name. 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). In light of these findings, the Panel holds that Respondent’s domain name is confusingly similar to Complainant’s BAYLOR mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Previous panels have agreed that Complainant initially carries the burden of presenting a prima facie case. Once this has been established, as here, the burden shifts to Respondent to refute Complainant’s assertions. 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 the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Where Respondent has failed to produce a Response, as here, some panels have construed this as evidence that Respondent lacks rights of legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel will still continue to examine the record, however, in order to determine whether such rights or legitimate interests do in fact exist under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <mychartbaylorclinic.com> domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information identifies the domain name registrant as “Milan Kovac,” which the Panel finds to bear no resemblance to the disputed domain name. Additionally, Respondent has failed to present evidence of ever receiving any authorization form Complainant for the use its BAYLOR mark in the disputed domain name. In fact, Respondent’s failure to respond to the Complaint means that the record is completely devoid of any evidence that would indicate that Respondent is commonly known by the disputed domain name. The Panel, therefore, must hold that Respondent is not commonly known by the <mychartbaylorclinic.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further alleges that Respondent’s use of the disputed domain name does not coincide with either 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). Respondent’s domain name resolves to a parked website featuring links to third-party sites offering services that compete with those offered by Complainant and its licensees. Past panels have found that this type of use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel holds that Respondent’s use of the disputed domain name does not coincide with either 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 finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant urges that Respondent’s registration and use of the disputed domain name constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). By providing links to third-party sites offering services that compete with those offered by Complainant and its licensees at a confusingly similar domain name, there is a substantial chance that Respondent’s website will be visited by users intending to view information about Complainant and its licensees. Invariably, some of the users who mistakenly visit Respondent’s website will access the links to Complainant’s competitors. This disrupts Complainant’s business because users who had initially intended to view information about Complainant and its licensees’ businesses will instead be redirected to, and possibly purchase services from, competing entities. The Panel finds that Respondent’s registration and use of the disputed domain name constitutes bad faith disruption of Complainant’s business 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 confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Finally, Complainant alleges that Respondent’s registration and use of the disputed domain name constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). By using a confusingly similar domain name, Respondent seeks to create confusion as to Complainant’s affiliation with Respondent’s website. Respondent hopes that it will benefit from this confusion through increased traffic to its own website. The Panel assumes that Respondent receives click-through fees each time the links on its website are accessed, so this increased traffic would likely lead to increased revenue for Respondent. The Panel holds that this sort of use constitutes bad faith attraction for commercial gain under 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 AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mychartbaylorclinic.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: September 15, 2011
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