Baylor University v. William Alexander
Claim Number: FA1208001458313
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson of Pirkey Barber LLP, Texas, USA. Respondent is William Alexander (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorstadium.net>, registered with GoDaddy.com, LLC.
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 August 15, 2012; the National Arbitration Forum received payment on August 15, 2012.
On August 17, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <baylorstadium.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@baylorstadium.net. Also on August 20, 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.
On September 12, 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 operates Baylor University, a higher learning institution in Texas and the largest Baptist University in the world. Complainant has eight colleges and offers undergraduate and graduate degrees in arts, sciences, business, nursing, education and engineering, among others. Complainant participates in collegiate sports, including football, baseball, basketball, cross country, golf, soccer, and volleyball.
2. Complainant owns rights through trademark registration with the United States Patent and Trademark Office (“USPTO”) in its BAYLOR mark (Reg. No. 1,465,910 registered November 17, 1987) and its BAYLOR UNIVERSITY mark (Reg. 1,923,603 October 3, 1995). See Exhibit B.
3. On March 13, 2012, Complainant announced its plan to build a new football stadium with the name “Baylor Stadium.” See Exhibit D. Respondent registered the <baylorstadium.net> domain name on March 14, 2012, one day after Complainant’s announcement of plans to build a stadium for the university. See Exhibit E.
4. The disputed domain name is identical or confusingly similar to Complainant’s BAYLOR mark.
5. Respondent has no rights or legitimate interests in respect of the domain name.
6. Respondent has not made any demonstrable preparations to use the <baylorstadium.net> domain name in connection with bona fide offerings of goods or services. The disputed domain name resolves to a monetized parking page and features links that refer to Complainant’s business. See Exhibit H.
7. The domain name has been registered and is being used in bad faith.
8. Respondent offered the disputed domain name for sale at a price in excess of the out-of-pocket registration costs and is not making a legitimate noncommercial or fair use of the domain name. The timing of Respondent’s registration demonstrates Respondent’s intent to exploit Complainant’s BAYLOR mark. Respondent receives commission when Internet users visit the resolving website and use the monetized hyperlinks. Respondent has no rights in the BAYLOR mark and has no affiliation with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant operates Baylor University, a higher learning institution in Texas and the largest Baptist University in the world, with an extensive range of academic and sports studies.
2. Complainant owns rights through trademark registration with the United States Patent and Trademark Office (“USPTO”) in its BAYLOR mark (Reg. No. 1,465,910 registered November 17, 1987) and its BAYLOR UNIVERSITY mark (Reg. 1,923,603 October 3, 1995).
3. On March 13, 2012, Complainant announced its plan to build a new football stadium with the name “Baylor Stadium.”
4. Respondent registered the <baylorstadium.net> domain name on March 14, 2012. It resolves to a monetized parking page and features links that refer to Complainant’s business, sports activities at educational institutions other than Complainant and a range of other goods and services.
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 to own trademark rights through trademark registrations with the USPTO in its BAYLOR mark (Reg. No. 1,465,910 registered November 17, 1987) and its BAYLOR UNIVERSITY mark (Reg. 1,923,603 October 3, 1995). The panel in Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), held that the complainant’s trademark registration with the USPTO met the requirements of Policy ¶ 4(a) (i). The Panel concludes that Complainant’s USPTO trademark registrations demonstrate Complainant’s rights in the BAYLOR and BAYLOR UNIVERSITY marks pursuant to Policy ¶ 4(a) (i) (“The Baylor marks”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to the BAYLOR marks.
Complainant asserts that the <baylorstadium.net> domain name is confusingly similar to the BAYLOR marks, with the only addition to the first of those marks being the generic term “stadium.” The Panel notes that the disputed domain name also includes the generic top-level domain (“gTLD”) “.net” and finds that the addition of the gTLD and the generic word “stadium” to the first of the BAYLOR marks renders the <baylorstadium.net> domain name confusingly similar to Complainant’s BAYLOR mark under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
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 word “stadium “ as a prefix, thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then used the disputed domain name to resolve to a monetized parking page that features links that refer to Complainant’s business, sports activities at educational institutions other than Complainant and a range of other goods and services;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also argues that Respondent is not commonly known by the disputed domain name. The Panel observes that Complainant submits evidence showing that the WHOIS information for the <baylorstadium.net> domain name identifies “William Alexander” as the registrant. The panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), stated that the respondent was not commonly known by the disputed domain name, as evidenced by the WHOIS information associated with the domain name. The Panel concludes that the WHOIS information supports a finding that Respondent is not commonly known by the <baylorstadium.net> domain name and therefore lacks rights or legitimate interests in the domain name under Policy ¶ 4(c) (ii); and
(e) Complainant also submits that Respondent does not use the <baylorstadium.net> domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use because Respondent uses the domain name to host a monetized parking page that contains hyperlinks relating to Complainant’s business and licensees, such as “Football Ticket Exchange,” “USA Football Coaching,” and “Tickets for Football.” Complainant submits on the evidence that Respondent’s website diverts traffic to third-party websites unaffiliated with Complainant’s business; the Panel has examined the website and verified that this is true, for the website carries links to sports activities at educational institutions other than Complainant and a range of other goods and services. The Panel finds that, by displaying hyperlinks to competing third-party websites, Respondent does not use the <baylorstadium.net> domain name to make 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)).
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 alleges Respondent registered and uses the <baylorstadium.net> domain name in bad faith because Respondent provides a link to an auction site that offers the domain name for sale at a price of $450, which Complainant argues is in excess of the out-of-pocket registration costs. The Panel finds that, by offering to sell the disputed domain name for $450, Respondent’s offer to sell is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b) (i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Secondly, Complainant contends that Respondent’s bad faith is evidenced by Respondent’s attempt to attract Internet consumers to its website by creating a likelihood of confusion between its website and Complainant’s BAYLOR mark. Complainant argues that Respondent makes a commercial gain from the hyperlinks it displays on the resolving website. In TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), the panel determined that Internet users would likely be misled to the respondent’s website, which featured hyperlinks to competing real estate websites and the panel concluded that the respondent’s registration and use was in bad faith. The Panel finds that, by setting up a website to attract Internet traffic and confuse consumers in order to make a financial gain, the resolving website demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b) (iv).
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 adding to it the word “stadium” 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 <baylorstadium.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 13, 2012
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