Baylor University v. Domain Exchange, LLC
Claim Number: FA1209001463352
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Domain Exchange, LLC (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bayloralumnigaming.com>, <bayloralumnilottery.com>, <bayloralumnionline.com>, <baylorbearsgaming.com>, <baylorbearslottery.com>, <baylorbearsonline.com>, <baylorgaming.com>, and <baylorlottery.com>, registered with Godaddy.com, Llc.
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.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2012; the National Arbitration Forum received payment on September 19, 2012.
On September 20, 2012, Godaddy.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <bayloralumnigaming.com>, <bayloralumnilottery.com>, <bayloralumnionline.com>, <baylorbearsgaming.com>, <baylorbearslottery.com>, <baylorbearsonline.com>, <baylorgaming.com>, and <baylorlottery.com> domain names are registered with Godaddy.Com, Llc and that Respondent is the current registrant of the names. 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 September 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@bayloralumnigaming.com, postmaster@bayloralumnilottery.com, postmaster@bayloralumnionline.com, postmaster@baylorbearsgaming.com, postmaster@baylorbearslottery.com, postmaster@baylorbearsonline.com, postmaster@baylorgaming.com, and postmaster@baylorlottery.com. Also on September 24, 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.
A timely Response was received and determined to be complete on September 28, 2012.
Complainant submitted a timely Additional Submission on October 3, 2012.
On October 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that domain names at issue are identical or confusingly similar to Complainant’s marks. The names contain Baylor’s marks BAYLOR or BAYLOR BEARS, marks strongly associated with Baylor University. Some of the domain names tack on the generic word “alumni,” a word that is highly likely to be associated with Complainant. Complainant also asserts that Respondent has not used, nor made any demonstrable preparations to use the domain names, or a name corresponding to the domain names, in connection with a bona fide offering of goods or services and that Respondent implicitly admitted that it is aware of Complainant’s rights, and nonetheless Respondent’s future plans for the domain names involve the exploitation of Complainant’s goodwill in the BAYLOR marks. Still further, Complainant contends that Respondent is not commonly known by the domain names at issue, nor is Respondent making a legitimate noncommercial or fair use of the domain names. Complainant asserts that Respondent’s bad faith registration and use is evidenced by Respondent ignoring Complainant’s transfer of the domain names despite implicitly acknowledging Complainant’s rights to the names. Complainant argues that Respondent admitted plans to use the domain names at issue for gambling and lottery activities, which Respondent knows (or should know, with very little research about Complainant) contradict Complainant’s values and identity as a university. Complainant contends Respondent’s stated plans to offer fundraising services that may compete with Complainant’s own fundraising programs. Complainant states that Respondent uses a domain name for a monetized parking page and that Respondent owns no trademark or other intellectual property rights in the domain names. Complainant alleges that Respondent has not used the domain names in connection with the bona fide offering of any goods or services or a noncommercial or fair use .
B. Respondent
Respondent contends that an indispensible party which originated and sold the domain name, Go Daddy.com, has been omitted and is the party who evidently agreed to “submit to and participate in…the hearing.” Respondent also alleges that the domains were purchased in good faith and have not been used and that it offered to transfer the domain names to Complainant if Complainant would reimburse the costs it incurred. Respondent also contends that Complainant waited two years to complain about the domains.
C. Additional Submissions
1. In its additional submission, Complainant provides printouts intended to support its prior contentions and contends that Respondent does not dispute that Complainant has satisfied Policy ¶ 4(a)(i). Complainant argues that Respondent’s assertion that it has not used the disputed domain names for any purpose is inaccurate, as the domain names currently resolve to monetized parking pages. Complainant alleges that Respondent’s blame on the Registrar in this case reflects a fundamental misunderstanding of the UDRP. Complainant also alleges that Respondent registered the disputed domain names in December of 2011 and Respondent’s arguments regarding its offer to sell the disputed domain names to Complainant are misleading or just false and actually bolster Complainant’s claim of bad faith registration and use.
The domain names are identical or confusingly similar to trademarks in which Complainant has rights. Respondent registered the domain names with knowledge of Complainant. Respondent has made no use of the domain names.
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.
Complainant argues that it has rights in the BAYLOR family of trademarks. In support of this argument, Complainant submits evidence of its trademark registrations with the USPTO for the BAYLOR (Reg. No. 1,465,910 registered November 17, 1987), BAYLOR UNIVERSITY (Reg. No. 1,923,603 registered October 3, 1995), BAYLOR BEARS & Design (Reg. No. 1,467,391 registered December 1, 1987), and BAYLOR BEAR FOUNDATION (Reg. No. 2,028,572 registered January 7, 1997). The Panel finds that Complainant has submitted sufficient evidence to establish its rights in the marks above under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant contends that the <bayloralumnigaming.com>, <bayloralumnilottery.com>, <bayloralumnionline.com>, <baylorgaming.com>, and <baylorlottery.com> domain names are confusingly similar to the BAYLOR mark. Complainant notes that the addition of the generic term “alumni” would actually work to add confusion, as Internet users would associate “alumni” directly with Complainant. The Panel notes that the disputed domain names all contain the BAYLOR mark with the additions of the terms “alumni,” “gaming,” “lottery,” and/or “online.” Further, Complainant argues that the addition of the generic top-level domain (“gTLD”) “.com,” is irrelevant under Policy ¶ 4(a)(i). The Panel finds that Respondent’s <bayloralumnigaming.com>, <bayloralumnilottery.com>, <bayloralumnionline.com>, <baylorgaming.com>, and <baylorlottery.com> domain names are confusingly similar to Complainant’s BAYLOR mark under Policy ¶ 4(a)(i), where the domain names merely add one or more generic or descriptive terms and a gTLD to Complainant’s mark. 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 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).
Further, Complainant argues that Respondent’s <baylorbearsgaming.com>, <baylorbearslottery.com>, and <baylorbearsonline.com> domain names are confusingly similar to the BAYLOR BEARS & Design mark. The Panel notes that all of the disputed domain names contain the terms of Complainant’s mark, absent the space, while adding the generic term “gaming,” “lottery,” or “online” and the gTLD “.com.” Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s BAYLOR BEARS & Design mark under Policy ¶ 4(a)(i). See Roux Labs., Inc. v. Sheldeez Beauty Salon, D2005-0799 (WIPO Sept. 30, 2005) (“The fact that Complainant’s stylized mark incorporates a distinctive design element is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”); see also 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 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).
Complainant argues that Respondent is not commonly known by the disputed domain names. Complainant also asserts that Respondent has no trademark or other intellectual property rights in the disputed domain names or variations thereof. The Panel notes that the WHOIS information for the disputed domain names identify “Domain Exchange LLC” as the registrant. The Panel also notes that Respondent did not argue that it was commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names 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).
The Panel notes that Complainant submitted evidence to show that Respondent is currently using the disputed domain names to resolve to monetized parking pages. The Panel also notes that Complainant’s evidence in its Exhibit F, which are screenshots of the websites resolving from the disputed domain names, indicate that most of the third-party links contained on the resolving websites are for educational institutions that are in competition with Complainant. Based upon such use, the Panel 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 under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Further, the Panel notes that Respondent contends that it has not used the disputed domain names in any way. In its Additional Submission, Complainant argues that such an assertion is clearly false, as evidenced by the aforementioned screenshots. The Panel finds that Respondent, whether it knew of the third-party links or not, remains responsible for the content of the resolving websites. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
The Panel notes that, as indicated above, Complainant asserts that Respondent has used the disputed domain names to resolve to monetized parking pages. Within its Additional Submission, Complainant asserts that such use is evidence of bad faith registration and use. However, Complainant does not assert which Policy ¶ 4(b) factor it is referring to. The Panel notes that Complainant does refer to confusion caused to Internet users where Respondent’s disputed domain names contain Complainant’s marks. Thus, the Panel finds that Respondent registered and is using the disputed domain names to attract Internet users to the resolving websites for commercial gain, and therefore, Respondent registered and is using the disputed domain names in bad faith under Policy, even if Respondent has not benefitted commercially from its parking of the domain names. The Panel finds that Respondent is responsible for the content of the resolving website and, as a result, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Complainant also contends that, in light of the fame and notoriety of Complainant's BAYLOR marks, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the marks. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bayloralumnigaming.com>, <bayloralumnilottery.com>, <bayloralumnionline.com>, <baylorbearsgaming.com>, <baylorbearslottery.com>, <baylorbearsonline.com>, <baylorgaming.com>, and <baylorlottery.com> domain names be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: October 23, 2012
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