Baylor University v. G Domains c/o Director Galib Gahramanov
Claim Number: FA1205001442941
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson of Pirkey Barber LLP, Texas, USA. Respondent is G Domains c/o Director Galib Gahramanov (“Respondent”), Baku, Azerbaijan,.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mybaylorlogin.com>, registered with Key-Systems GmbH.
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 May 8, 2012; the National Arbitration Forum received payment on May 8, 2012.
On May 9, 2012, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <mybaylorlogin.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 May 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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@mybaylorlogin.com. Also on May 14, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
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.
Complainant made the following submissions.
1. Complainant registered the BAYLOR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,465,910 registered November 17, 1987) ;
2. Respondent’s <mybaylorlogin.com> domain name is identical or confusingly similar to Complainant’s BAYLOR mark;
3. Respondent is not commonly known by the disputed domain name;
4. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name;
5. Respondent has engaged in a pattern of bad faith registration and use of others’ trademarks as a domain name as evidenced by a prior adverse UDRP decision, Merck KgaA v. c/o whoisproxy.com Ltd / Galib Gahramanov, G Domains, D2011-1271 (WIPO Sept. 21, 2011);
6. Respondent uses the domain name in connection with a monetized parking page with link titles that appear to relate to the services of Baylor and its licensees, but actually resolve to unrelated third-party websites;
7. Respondent is paid a fee or commission when Internet users visit its website via the disputed domain name and click on the links offered therein;
8. Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the links displayed.
Respondent failed to submit a Response in this proceeding.
1. Complainant is a respected and widely known university with interests in medical and related services.
2. Complainant registered the BAYLOR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,465,910 registered November 17, 1987).
3. Respondent registered the disputed domain name on May 30, 2011 and has used it in connection with a monetized parking page with link titles that appear to relate to the services of Baylor and its licensees, but actually resolve to unrelated third-party websites.
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 claims that it has established its rights in the BAYLOR mark by registering it with the USPTO (e.g., Reg. No. 1,465,910 registered November 17, 1987). Complainant provided in evidence the certificates for the BAYLOR mark issued by the USPTO to support its claims. See Complainant’s Exhibit B. The Panel notes that the certificates provided indicate that the mark is duly registered with the USPTO and that Complainant is listed as the owner of the registrations proffered. Based upon the evidence provided, the Panel determines that Complainant has established its rights in the BAYLOR mark under Policy ¶ 4(a) (i) even though Respondent resides in a different country. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BAYLOR mark. Complainant claims that Respondent’s <mybaylorlogin.com> domain name is identical or confusingly similar to Complainant’s BAYLOR mark. Complainant states that the disputed domain name includes the entire mark. The Panel notes that the disputed domain name includes the words “my” and “login,” alongside the mark, while also adding the generic top-level domain (“gTLD”) “.com.” Based upon the changes made to Complainant’s mark by Respondent to compose the disputed domain name, the Panel finds that Respondent’s <mybaylorlogin.com> domain name is confusingly similar to Complainant’s BAYLOR mark under Policy ¶ 4(a) (i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).
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 only the minor additional words “my” and “login”, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then decided to use the domain name by causing it to resolve to a monetized parking page with link titles that appear to relate to the services of Complainant and its licensees, but actually resolve to unrelated third-party websites;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also submits that Respondent is not commonly known by the disputed domain name. The Panel notes that Respondent failed to offer any evidence that may be construed as contradictory of Complainant’s contentions. The Panel also notes that the WHOIS information identifies the registrant of the disputed domain name as “G Domains c/o Director Galib Gahramanov.” Based upon the evidence available, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
(e) Complainant also contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that Respondent uses the domain name in connection with a monetized parking page with link titles that appear to relate to the services of Complainant and its licensees, but actually resolve to unrelated third-party websites. Complainant submits a printout from the website to which the disputed domain name resolves. The Panel notes that the printout indicates that the website does offer links to third parties, some of which are ostensibly related to Complainant’s services like Baylor Health Services and Baylor Employee Login. The Panel therefore finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ (c) (iii) based upon Respondent’s offering of links to unrelated third parties. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
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 argues that Respondent has been subject to a past adverse UDRP proceeding and as a result, has engaged in a pattern of bad faith domain name registrations. See Merck KgaA v. c/o whoisproxy.com Ltd / Galib Gahramanov, G Domains, D2011-1271 (WIPO Sept. 21, 2011). Previous panels have determined that past adverse proceedings against a given respondent indicate a pattern of such bad faith registrations. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations); see also TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b) (ii).”). Therefore, as the Panel finds that Respondent has engaged in a pattern of infringing registrations, the Panel concludes that Respondent’s conduct demonstrates bad faith registration and use under Policy ¶ 4(b) (ii).
Secondly, Complainant also argues that Respondent is paid a fee or commission when Internet users visit its website via the disputed domain name and click on the links offered therein. Complainant claims that Respondent uses the domain name in connection with a monetized parking page with link titles that appear to relate to the services of Complainant and its licensees, but actually resolve to unrelated third-party websites. Complainant states that Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the links displayed. The Panel agrees with Complainant’s characterization of Respondent’s use of the disputed domain name and consequently finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b) (iv). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).
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, adding to it the words “my” and “login” 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 second 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 <mybaylorlogin.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated June 7, 2012
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