Baylor University v. Above.com Legal
Claim Number: FA1204001438502
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson of Pirkey Barber LLP, Texas, USA. Respondent is Above.com Legal (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorhospitaljobs.com>, registered with Above.com Pty. Ltd.
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 April 9, 2012; the National Arbitration Forum received payment on April 9, 2012.
On April 11, 2012, Above.com Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <baylorhospitaljobs.com> domain name is registered with Above.com Pty. Ltd. and that Respondent is the current registrant of the name. Above.com Pty. Ltd. has verified that Respondent is bound by the Above.com Pty. Ltd. 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 April 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@baylorhospitaljobs.com. Also on April 17, 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.
On May 10, 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 made the following contentions:
1. Complainant has rights in the BAYLOR mark which it uses in connection with educational services including medical-related services and education as well as in association with a system of hospitals and medical centers;
2. Complainant has registrations for the BAYLOR mark (e.g., Reg. No. 1,465,910 registered November 17, 1987) through the United States Patent and Trademark Office (“USPTO”);
3. The <baylorhospitaljobs.com> domain name is confusingly similar to the BAYLOR mark;
4. Respondent is not commonly known by the <baylorhospitaljobs.com> domain name;
5. The <baylorhospitaljobs.com> domain name resolves to a website which displays links that compete with the goods and services that Complainant provides;
6. Respondent has engaged in a pattern of bad faith registration and use of domain names;
7. Respondent registered and is using the disputed domain name in order to attract Internet users to the disputed domain name to commercially benefit due to Internet users’ confusion created by Respondent as to the source of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a well-known, long-established and respected University that is also engaged in hospitals and medical centers. It has rights in the BAYLOR mark which it uses in connection with educational services including medical-related services and education as well as in association with its hospitals and medical centers;
2. Complainant has registrations for the BAYLOR mark (e.g., Reg. No. 1,465,910 registered November 17, 1987) through the United States Patent and Trademark Office (“USPTO”);
3. Respondent registered the <baylorhospitaljobs.com> domain name on June 23, 2011. It resolves to a website which displays links, among others, that compete with the goods and services provided by Complainant;
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that it has rights in the BAYLOR mark and that it uses it in connection with educational goods and services. Complainant provides the Panel with evidence of its registrations through the USPTO for the BAYLOR mark (e.g., Reg. No. 1,465,910 registered November 17, 1987). Panels have found that the registration of a mark is evidence of rights in that mark. 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Additionally, panels have held that these rights satisfy Policy ¶ 4(a) (i) regardless of the location of the parties. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel finds that Complainant has rights in the BAYLOR mark pursuant to Policy ¶ 4(a)(i).
The second question is whether the disputed domain name is identical or confusingly similar to the BAYLOR mark. Complainant contends that the <baylorhospitaljobs.com> domain name is confusingly similar to the BAYLOR mark. The Panel agrees with that submission because Respondent merely adds the descriptive term “hospital,” the generic term “jobs,” and the generic top-level domain (“gTLD”) “.com” to the BAYLOR mark in the disputed domain name. The Panel finds that the addition of descriptive or generic terms fails to differentiate a disputed domain name from the mark within it. In the present case, the domain name would convey to the internet user that the domain name related to employment in the hospital services provided by Complainant under the BAYLOR mark and that it would lead to an official website dealing with that subject. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); 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). The Panel also finds that, as a necessary element of all domain names, the addition of a gTLD fails to negate a finding of confusing similarity. 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a) (i) analysis.”). Therefore, the Panel finds that Respondent’s <baylorhospitaljobs.com> domain name is confusingly similar to Complainant’s BAYLOR mark under Policy ¶ 4(a) (i).
Complainant 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BAYLOR trademark and to use it in its domain name, adding the words “hospital” and “jobs” and thus creating a domain name leaving the internet user with the impression that the domain name is associated with Complainant, that it relates to employment in the hospital services provided by Complainant under the BAYLOR mark and that it would lead to an official website dealing with that subject, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then decided to use the domain name by having it resolve to a website that offers, among other things, goods and services in competition with those provided by Complainant in the educational, hospital and medical fields and to do this to earn monetary reward;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also alleges that Respondent is not commonly known by the disputed domain name. Complainant contends that Respondent is infringing on its mark by using it in the disputed domain name. The WHOIS record for the <baylorhospitaljobs.com> domain name that Complainant provides in evidence lists “Above.com Legal” as the domain name registrant. Panels have held that the WHOIS record is strong evidence of whether or not a respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c) (ii) does not apply); 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). Therefore, the Panel finds that Respondent is not commonly known by the <baylorhospitaljobs.com> domain name pursuant to Policy ¶ 4(c) (ii).
(e) Complainant contends that Respondent’s use of the disputed domain name is not one which is protected under Policy ¶¶ 4(c) (i) and 4(c) (iii). Complainant asserts that the <baylorhospitaljobs.com> domain name displays a list of links which offer, among other things, goods and services in direct competition with those that Complainant offers in the educational, hospital and medical fields. Panels have previously held that the use of a domain name to display competitive links is not a use which provides the respondent with rights or legitimate interests in the disputed domain name. See 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)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Therefore, the Panel finds that Respondent’s use of the <baylorhospitaljobs.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c) (i) and 4(c) (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, 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 has 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 in UDRP proceedings 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.
First, Complainant asserts that Respondent has engaged in a pattern of bad faith registration and use of a disputed domain name. Complainant provides the Panel with evidence of over 50 past UDRP disputes in which Respondent was involved and in which the disputed domain name was transferred to the complainant. This list includes cases such as, W.W. Grainger, Inc. v. Above.com Legal, FA 1390105 (Nat. Arb. Forum July 6, 2011). The list also includes many cases in which the respondent is listed as “Above.com Domain Privacy” which Complainant presents as the same respondent as is Respondent in the present dispute, including Vanguard Trademark Holdings USA LLC v. Above.com Domain Privacy, FA 1333300 (Nat. Arb. Forum Aug. 4, 2010); W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010); and Macy’s West Sotres, Inc. v. Above.com Domain Privacy, FA 1336279 (Nat. Arb. Forum Sep. 7, 2010). Therefore, the Panel finds that Respondent’s registration and use of the <baylorhospitaljobs.com> domain name is a product of bad faith, as it finds that Respondent has developed a pattern of bad faith registration and use of disputed domain names under Policy ¶ 4(b) (ii).
Secondly, Complainant argues that Respondent registered and is using the disputed domain name in bad faith for the reason that the <baylorhospitaljobs.com> domain name resolves, as Complainant establishes, to a website which displays links to competing websites. Complainant contends that Respondent registered and is using the disputed domain name in order to cause confusion as to the source of the <baylorhospitaljobs.com> domain name and to take commercial advantage of Internet users’ mistakes resulting from this confusion. The Panel finds that Respondent registered and used the disputed domain name in bad faith , as it finds, under Policy ¶ 4(b)(iv), that Respondent intended to create confusion as to the source of the <baylorhospitaljobs.com> domain name and to take commercial advantage of the mistakes made by Internet users as a result of this confusion. See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); 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).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the BAYLOR mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
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 <baylorhospitaljobs.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 11, 2012
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