Baylor University v. Scott Lewis
Claim Number: FA1202001429318
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Scott Lewis (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorgirls.xxx>, registered with GoDaddy.com, Inc.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2012; the National Arbitration Forum received payment on February 14, 2012.
On February 16, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <baylorgirls.xxx> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 February 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2012 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@baylorgirls.xxx. Also on February 16, 2012, 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 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims that it has rights in the BAYLOR mark based upon its trademark registrations with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,465,910 registered November 17, 1987). Complainant also claims that Respondent’s <baylorgirls.xxx> domain name is confusingly similar to its mark.
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant also argues that Respondent registered and is using the disputed domain name in bad faith. Complainant claims that the disputed domain name resolves to an inactive website, which under Rapid Evaluation Service (“RES”) policy § 2(a)(iii), states that where a domain name is unused, and is not conceivably susceptible to use in good faith, such fact can be used as evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a well-known co-educational university in Texas, USA which was founded in 1845 and has many programs and activities unique to women and their interests including a prestigious women’s’ athletics program.
2. Complainant owns many United States trademarks for BAYLOR, including trademark registered No.1, 465,910, registered on November 17, 1987 with the United States Patent and Trademark Office (“USPTO”) (“THE Baylor mark”).
3. Respondent registered the disputed domain name on December 10, 2011. It has not been used to display any content.
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."
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.
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.”).
Complainant asserts that it has established its rights in the BAYLOR mark by registering that mark with the USPTO (e.g., Reg. No. 1,465,910 registered November 17, 1987). Complainant submits its trademark certificate to verify its assertion. The Panel accepts this evidence and finds that Complainant has established its rights in the BAYLOR mark under Policy ¶ 4(a) (i) by registering it with the USPTO. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (finding that the complainant’s timely registration with the USPTO and “subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant also asserts that Respondent’s <baylorgirls.xxx> domain name is confusingly similar to its BAYLOR mark. Complainant states that the disputed domain name includes the entire mark, adding only the generic term “girls” and the top-level domain (“TLD”) “.xxx.” The Panel finds that the changes made fail to differentiate Respondent’s disputed domain name from Complainant’s BAYLOR mark in such a way to mitigate their confusing similarity under Policy ¶ 4(a) (i). That is so because Complainant is a prominent co-educational university and internet users would thus assume that the domain name was referring to female students attending that university and that it was an official domain name of Complainant. It is also well established that a top-level domain (“TLD”) such as, in the present case, “.xxx” cannot negate confusing similarity that is otherwise present. 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); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark).
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s BAYLOR mark and that it has thus made out the first of the three elements that it must establish.
It is now well-established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Applying that principle, the Panel finds that Complainant has made out a prima facie case as required. The prima facie case is based on the following considerations:
(a) Respondent has chosen as the principle part of his domain name Complainant’s BAYLOR trademark which is also the name of the famous university operated by Complainant;
(b) Respondent has then added to the trademark the word “girls”, which can only mean that the domain name refers to female students at Complainant’s university, raising an inference in the minds of internet users that it is an official domain name of Complainant and that it will lead to an official website of Complainant for or about those students;
(c) The use of Complainant’s BAYLOR trademark and name in this way has clearly been undertaken without the knowledge or approval of Complainant.
(d) Moreover, Complainant claims that Respondent is not commonly known by the disputed domain name and the Panel agrees with that submission. Respondent has not claimed to be commonly known by the disputed domain as it has failed to file a response. Complainant states that the WHOIS information identifies the registrant of the domain as “Scott Lewis.” Based upon the evidence available, which the Panel accepts, the Panel concludes that Respondent is not commonly known by the <baylorgirls.xxx> domain name under 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).
(e) Complainant also claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <baylorgirls.xxx> domain name and the Panel agrees with that submission. The disputed domain name resolves to an inactive website. Previous panels have concluded that failing to make an active use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a) (ii).”). Therefore, the Panel determines that Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c) (i) and Policy ¶ 4(c) (iii), respectively.
(f) Complainant also argues that there is no conceivable legitimate or fair use Respondent can make of the disputed domain name and that this also shows a lack of rights or legitimate interests in the disputed domain name. In this regard, the Panel notes that the Rapid Evaluation Service Policy (“RES”) and Charter Eligibility Dispute Resolution Policy (“CEDRP”) were established for disputes relating to domain names that include the “.xxx” top-level domain, although complaints, such as the instant proceeding, relating to domain names that include the “.xxx” top-level domain may still be brought under the Uniform Domain Name Dispute resolution Policy. The RES and CEDRP contain provisions that allow a panel to use the requirements of the respective policies in the panel’s UDRP analysis. Thus, RES ¶ 8 allows a panel to use the factors under RES ¶¶ 2(a) and (b) as showing lack of legitimate rights and/or bad faith
“as appropriate under the UDRP in relation to domain names in the .xxx TLD under the UDRP.” As the Panel determines that Respondent does not use the disputed domain name and there is no conceivable legitimate use for the domain name, the Panel determines that Respondent violated RES 2(a) (iii), which is evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii).
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against him, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant claims that Respondent has engaged in a pattern of infringing domain registrations which supports a finding of bad faith in this instance. Complainant submits the WHOIS information for multiple other domain names including <pennstategirls.xxx>, <nyugirls.xxx>, <villanovagirls.xxx>, <purduegirls.xxx>, and <clemsongirls.xxx> amongst others. Complainant also submits the trademark certificates for the PENN STATE, NYU, VILLANOVA, PURDUE, and CLEMSON marks, which all appear to indicate that a different entity other than Respondent owns the marks involved. The Panel therefore concludes that Respondent has developed a pattern of this type of domain name registration indicating bad faith registration and use under Policy ¶ 4(b) (ii). Such a conclusion is consistent with prior UDRP decisions. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).
Complainant also claims that Respondent is not using the domain name to provide any content and that the disputed domain name resolves to an inactive website. Complainant submits that the RES policy states that where a domain name is unused and is not conceivably susceptible to use in good faith, such fact can be used as evidence of bad faith. See RES 2(a) (iii). The Panel determines that Respondent does not use the disputed domain name and there is no conceivable good faith use and, accordingly, the Panel determines that Respondent violated RES 2(a) (iii), which the Panel elects to use as evidence of bad faith registration and use under Policy ¶ 4(a) (iii). The Panel notes that prior panels have also recognized inactivity as affirmative evidence of bad faith under the UDRP. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a) (iii). Therefore, the Panel concludes that Respondent’s failure to make an active use of the disputed domain name demonstrates bad faith registration and use under Policy ¶ 4(a) (iii).
Moreover, the whole modus operandi of Respondent in registering a domain name by adopting, without permission, the trademark of a prominent university and adding to it the word “girls”, without any good faith purpose, clearly comes within the generally accepted meaning of “bad faith”, both with respect to the registration of the domain name and its use.
Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith and that Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylorgirls.xxx> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: March 21, 2012
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