national arbitration forum

 

DECISION

 

Baylor University v. PrivacyProtect.org c/o Domain Admin a/k/a Domain Tech Enterprises c/o Domain Administrator

Claim Number: FA1110001413134

 

PARTIES

Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson of Pirkey Barber LLP, Texas, USA.  Respondent is PrivacyProtect.org c/o Domain Admin a/k/a Domain Tech Enterprises c/o Domain Administrator (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <baylorgarland.com> and <baylorofgarland.com> registered with Power Brand Center Corp., and <thebaylorstore.com>, registered with DomainRegi LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2011; the National Arbitration Forum received payment on October 27, 2011.

 

On October 26, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <baylorofgarland.com> domain names is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name.  Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 November 5, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <baylorgarland.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name.  Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 November 7, 2011, DomainRegi LLC confirmed by e-mail to the National Arbitration Forum that the <thebaylorstore.com> domain names is registered with DomainRegi LLC and that Respondent is the current registrant of the name.  DomainRegi LLC has verified that Respondent is bound by the DomainRegi LLC 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 November 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@baylorgarland.com, postmaster@baylorofgarland.com, and postmaster@thebaylorstore.com.  Also on November 14, 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 December 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <baylorgarland.com>, <baylorofgarland.com>, and <thebaylorstore.com> domain names are confusingly similar to Complainant’s BAYLOR mark.

 

2.    Respondent does not have any rights or legitimate interests in the <baylorgarland.com>, <baylorofgarland.com>, and <thebaylorstore.com> domain names.

 

3.    Respondent registered and used the <baylorgarland.com>, <baylorofgarland.com>, and <thebaylorstore.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Baylor University, is an educational institution in Texas, USA that was originally chartered in 1854.  Complainant owns several applicable trademark registrations with the United States Patent and Trademark Office ("USPTO") as follows:

 

Mark                               Reg. No.               Reg. Date

BAYLOR                                1,465,910                  November 17, 1987

BAYLOR UNIVERSITY      1,923,603                  October 3, 1995

 

Respondent, PrivacyProtect.org c/o Domain Admin, registered the <thebaylorstore.com> domain name on February 24, 2011.  Respondent’s disputed domain name resolves to a website that contains no active content.

 

Respondent,  Domain Tech Enterprises c/o  Domain Administrator, registered the <baylorgarland.com> and <baylorofgarland.com> domain names on January 22, 2010 and February 21, 2010, respectively.  Respondent’s disputed domain names resolve to websites that feature third-party links to competing healthcare system websites and job offerings, as well as links to non-competing businesses and websites. 

 

Complainant has submitted information which shows that Respondent, Domain Tech Enterprises c/o  Domain Administrator, has been the respondent in several previous UDRP cases where it was ordered by the panels to transfer its domain name registrations to the respective complainants.  See Victoria’s Secret Stores Brand Mgmt., Inc. v. Domain Tech Enters. c/o Domain Adm’r, FA 1369407 (Nat. Arb. Forum Feb. 25, 2011); see also Capital One Fin. Corp. v. Domain Tech Enters. c/o Domain Adm’r, FA 1375034 (Nat. Arb. Forum April 5, 2011); see also Nautica Apparel, Inc. v. Domain Tech Enters. c/o Domain Adm’r, FA 1376406 (Nat. Arb. Forum April 28, 2011). 

 

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 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.

 

Preliminary Issue:  Multiple Respondents

 

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant asserts that the proper Respondent in these proceedings is actually PrivacyProtect.org.  Complainant notes that all three of the domain names originally identified “PrivacyProtect.org” as the registrant of the domain names, but that after Complainant filed its Complaint, two of the domain names were “verified” as being registered by Domain Tech Enterprises c/o  Domain Administrator.  Complainant contends that “[t]his only further confirms that PrivacyProtect.org is improperly shielding the customer’s identity and should be held responsible for all of the names.”  However, the Panel notes that the domain name registrant information, as given in the WHOIS database, varies substantially between the two “registrants” identified by Complainant.  According to the WHOIS information, the <baylorgarland.com> and <baylorofgarland.com> domain names are registered to:

 

            Domain Tech Enterprises

            Domain Administrator (domaintechenterprises@gmail.com)

            Jose Alcalde Delano #10682,

            Local #24 Lobarnechea

            Santiago

            Region Metropolitanade Santiago, LOCAL 24

            CL

            Tel. +56.42457942

 

Further, the Panel notes that the <baylorgarland.com> and <baylorofgarland.com> domain names were registered on January 22, 2010 and February 21, 2010, respectively.

 

As for the <thebaylorstore.com> domain name, the WHOIS information identifies the registrant as the following:

 

            PrivacyProtect.org

            Domain Admin (contact@privacyprotect.org)

            ID#10760, PO Box 16

            Note – All Postal Mails Rejected, visit Privacyprotect.org

            Nobby Beach

            Null, QLD 4218

            AU

            Tel. +45.36946676

 

The Panel notes that this domain name was registered on February 24, 2011.  Complainant has also supplied information to show that the <thebaylorstore.com> domain name resolves to a website that does not feature any active content; rather the domain name resolves to a site that states: “Index of /” followed by three bullet point headings that state: “cgi-bin/,” “images/,” and “postinfo.html.”  On the other hand, the <baylorgarland.com> and <baylorofgarland.com> domain names resolve to websites that feature various third-party links to both competing health care systems and job postings, as well as unrelated links under such headings as “Florist in Baylor Dallas.” 

 

Therefore, the Panel finds that Complainant has not proven definitively that all three domain names have been registered and are controlled by the same entity in this case.  Because of this, the Panel chooses to dismiss the Complaint as to the <thebaylorstore.com> domain name and will proceed on the information and evidence presented by Complainant as they relate to the <baylorgarland.com> and <baylorofgarland.com> domain names.

 

Identical and/or Confusingly Similar

 

Complainant submits various trademark certificates that it owns with the USPTO for its BAYLOR marks and variations thereof.  The following USPTO trademarks are directly applicable to these proceedings:

 

 

Mark                               Reg. No.               Reg. Date

BAYLOR                                1,465,910                  November 17, 1987

BAYLOR UNIVERSITY      1,923,603                  October 3, 1995

 

The Panel finds that Complainant has sufficiently established its rights in its BAYLOR marks under Policy ¶ 4(a)(i).  The Panel further finds that it does not matter under Policy ¶ 4(a)(i) that Respondent resides or operates in a country different from the country where Complainant owns trademark registrations.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also 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 alleges that the <baylorgarland.com> and <baylorofgarland.com> domain names are confusingly similar to its BAYLOR mark.  The Panel notes that the domain names contain the entire BAYLOR mark while adding the geographic term “garland” or the terms “of” and “garland,” as well as the generic top-level domain (“gTLD”) “.com.”  Complainant asserts that it operates a medical facility under the name “Baylor Medical Center at Garland,” which increases the confusing similarity of the domain names.  The Panel finds that the disputed domain names are confusingly similar to Complainant’s BAYLOR mark under Policy ¶ 4(a)(i).  See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also 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).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged Respondent does not have rights or legitimate interests in the <baylorgarland.com> and <baylorofgarland.com> domain names.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).

 

Complainant contends that “Respondent is not commonly known by the domain names at issue.”  Aside from this statement, Complainant does not explain how Respondent is not commonly known by the domain name.  The WHOIS information on record, however, identifies Domain Tech Enterprises c/o Domain Administrator” as the registrant of the <baylorgarland.com> and <baylorofgarland.com> domain names.  Respondent has not come forward with evidence indicating that it is known by the domain names.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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). 

 

Further, Complainant contends that Respondent is using the <baylorgarland.com> and <baylorofgarland.com> domain names

 

in connection with monetized parking pages with link titles that appear to relate to the services of Baylor and its licensees (e.g., “Nursing Faculty Jobs,” “Neonatal Nurse Salary,” “Hospital Jobs,” “Hospital Plan,” “Florist in Baylor Dallas,” “Jobs for MA’s at Baylor,”) yet divert traffic to third-party websites not affiliated with Baylor.

The Panel finds that such use of the domain names in question does not qualify as 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 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  Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). 

 

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

 

Registration and Use in Bad Faith

 

Complainant has submitted information which shows that Respondent has been the respondent in several previous UDRP cases where it was ordered by the panels to transfer its domain name registrations to the respective complainants.  See Victoria’s Secret Stores Brand Mgmt., Inc. v. Domain Tech Enters. c/o Domain Adm’r, FA 1369407 (Nat. Arb. Forum Feb. 25, 2011); see also Capital One Fin. Corp. v. Domain Tech Enters. c/o Domain Adm’r, FA 1375034 (Nat. Arb. Forum April 5, 2011); see also Nautica Apparel, Inc. v. Domain Tech Enters. c/o Domain Adm’r, FA 1376406 (Nat. Arb. Forum April 28, 2011).  Complainant contends that such information establishes Respondent’s bad faith in the current case.  Previous UDRP panels have determined that the existence of prior adverse UDRP cases against a respondent is evidence of bad faith registration under Policy ¶ 4(b)(ii).  See 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 subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, 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 UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).  The Panel here agrees with this past precedent in finding that Respondent registered and used the <baylorgarland.com> and <baylorofgarland.com> domain names in bad faith pursuant to Policy ¶ 4(b)(ii). 

 

Complainant has also submitted information that Respondent’s use of the domain names to post various third-party hyperlinks that eventually resolve to other competing health care systems within the state of Texas is harmful to Complainant.  In this instance, the Panel agrees and finds that Respondent’s diversion of Internet users from Complainant to its competitors in the medical field is evidence of bad faith registration and use 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

Complainant also asserts that Respondent is receiving commercial benefit from its use of the domain names as monetized parking pages.  The Panel, absent any objection from Respondent, agrees and finds that Respondent has also registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); 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 Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED as to the <baylorgarland.com> and <baylorofgarland.com> domain names.  As discussed above, the Complaint is DISMISSED WITHOUT PREJUDICE as to the <thebaylorstore.com> domain name.

 

Accordingly, it is Ordered that the <baylorgarland.com> and  <baylorofgarland.com> domain names be TRANSFERRED from Respondent to Complainant, and the <thebaylorstore.com> REMAIN WITH Respondent.

 

 

John J. Upchurch, Panelist

Dated:  December 22, 2011

 

 

 

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