national arbitration forum

 

DECISION

 

Baylor University v. Pixelsmiths

Claim Number: FA1302001487383

 

PARTIES

Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA.  Respondent is Pixelsmiths (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bigbaylorfan.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2013; the National Arbitration Forum received payment on February 27, 2013.

 

On February 27, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bigbaylorfan.com> 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 March 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2013 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@bigbaylorfan.com.  Also on March 1, 2013, 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 April 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Baylor University (referred to herein as “Complainant” or “Baylor”) was originally chartered in 1845 by the Republic of Texas.  It is the oldest continually operating institution of higher learning in Texas and is the largest Baptist university in the world.  Baylor provides a wide curriculum of educational services through its eight colleges and schools at both the undergraduate and graduate levels, including arts, sciences, business, law, nursing, education, engineering, computer science, music, social work, and theology.  For more detail on Baylor’s history and offerings, see its website at www.baylor.edu.

 

Baylor is the owner of, and it or its licensees have long used, the marks BAYLOR, BAYLOR UNIVERSITY, and other marks that include the term BAYLOR (referred to herein collectively as the “BAYLOR marks”) in connection with a wide range of goods and services, including its athletic programs as discussed below.  Baylor owns a number of trademark registrations for the BAYLOR marks in the United States and other countries, including the following (among others)^[1]: 

 

·                    BAYLOR, Reg. Nos. 1465910, 1858559, and 1936714

·                    BAYLOR UNIVERSITY, Reg. Nos. 1923603 and 1935130

 

ii.          Baylor Athletics

 

In addition to providing high quality educational services, Baylor also actively participates in many collegiate sports, including football, baseball, basketball, cross country, golf, tennis, track, equestrian, soccer, softball and volleyball. Baylor uses the BAYLOR marks extensively in connection with these sports teams, and fans of Baylor and its athletic programs can purchase a wide variety of licensed products adorned with the BAYLOR marks.  Baylor’s football team received particularly intense media attention in 2011 when its quarterback, Robert Griffin III, won the Heisman Trophy.  More recently, Baylor’s football team won the Holiday Bowl in December 2012.  For more detail on Baylor’s athletics programs, see www.baylorbears.com. 

 

FACTUAL AND LEGAL GROUNDS

 

This Complaint is based on the following factual and legal grounds^[2]:

 

a.         The domain name is identical or confusingly similar to the BAYLOR marks.  The presence of a generic top level domain (“.com”) is irrelevant in a UDRP ¶4(a)(i) analysis.^[3] Specifically, the domain name bigbaylorfan.com incorporates in full Complainant’s BAYLOR mark, merely adding the terms “big” and “fan,” which in combination with the mark is highly likely to be associated with Baylor and its services.

 

b.         Respondent has no rights or legitimate interests in the domain name at issue.

 

(i)         Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.  Initially, Respondent used its domain name in connection with a monetized parking page displaying links that appeared to relate to Complainant (e.g., “Baylor Football” and “Baylor Bears Fight Song”), but which actually linked to advertisers with no affiliation with Baylor.   Complainant’s attorneys sent a cease-and-desist letter to Respondent on December 20, 2007 demanding transfer of the domain name, but Respondent has never responded.  Rather, Respondent now uses the domain name to redirect to http://phentramin-d-weight-loss.com, a website offering for sale a weight-loss drug.

 

(ii)       Respondent is not commonly known by the domain name at issue.^[4]

 

            (iii)       Respondent is not making a legitimate noncommercial or fair use of the domain name.

 

c.         Respondent registered and is using the domain name in bad faith.

 

            (i)         Not only has Respondent ignored Baylor’s demands, it has actively redirected the domain name to http://phentramin-d-weight-loss.com, a website selling diet pills, after receiving notice of Baylor’s trademark rights.  Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Baylor’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.^[5]

 

            (ii)        Respondent’s bad faith is also evidenced by the fact that Respondent owns no trademark or other intellectual property rights in the domain name, the domain name does not consist of the legal name of or a name commonly used to identify Respondent, Respondent has not used the domain name in connection with the bona fide offering of any goods or services, Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the domain name, and Respondent’s domain name incorporates exactly the highly distinctive and famous mark BAYLOR.  See 15 U.S.C. §1125(d)(1)(B)(i).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 Complainant to prove each of the following three elements to obtain an order canceling or transferring a domain name:

 

(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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the BAYLOR mark pursuant to its registrations of the mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 1,465,910 registered Nov. 17, 1987). The registration of a mark with the USPTO is normally sufficient to evidence rights in a mark under Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, Complainant has sufficiently established rights under Policy ¶4(a)(i) in the BAYLOR mark.

 

Complainant claims the <bigbaylorfan.com> domain name is identical or confusingly similar to its BAYLOR mark. The disputed domain name contains Complainant’s mark in its entirety, with the addition of the generic words “big” and “fan.” The addition of generic words does not normally distinguish a respondent’s domain name from a complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The addition of a gTLD such as “.com” is irrelevant to a Policy ¶4(a)(i) confusing similarity comparison. 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). Therefore, the <bigbaylorfan.com> domain name is confusingly similar to Complainant’s BAYLOR mark for the purposes of Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has 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.”).

 

Complainant claims Respondent is not commonly known by the disputed domain name and has not established rights under Policy ¶4(c)(ii). The WHOIS record for the domain name lists “Pixelsmiths” as the registrant, which bears no obvious relationship to the domain name.  It appears Respondent is not commonly known by the domain name and has not established rights or legitimate interests under Policy ¶4(c)(ii). M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant also claims Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) and 4(c)(iii). Complainant notes the <bigbaylorfan.com> domain name previously resolved to a parked web page displaying links that appeared to relate to Complainant (such as “Baylor Football” and “Baylor Bears Fight Song”) but in fact were linked to advertisers with no affiliation to Baylor. Such a display of unrelated links is not a bona fide offering or a legitimate use. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c)(i)). Complainant claims the disputed domain name redirects users to <phentramin-d-weight-loss.com>, a website selling a weight loss drug, after Respondent was contacted by Complainant. Respondent did not otherwise respond to Complainant’s letter.  Such changes in web sites does not demonstrate a bona fide offering of goods/services nor a legitimate fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Therefore, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶¶4(c)(i) and 4(c)(iii).

 

It should be noted Respondent is does not have a “fan site” at the domain name, despite the text of the domain name suggesting such a use.

 

The Panel finds Policy ¶4(a)(ii) satisfied.  

 

Registration and Use in Bad Faith

Complainant claims Respondent is intentionally attempting to attract, for commercial gain, Internet users to its weight loss website by creating confusion with Complainant’s marks. Such a diversion is evidence of bad faith registration and use under Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Accordingly, the Panel finds Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv).

 

Respondent previously parked the domain with a web page which contained “click through” links.  Respondent presumably benefited from such links, even if Respondent only got free web hosting.  Such a use constitutes adequate evidence of bad faith registration and use of the domain name.

 

The Panel finds Policy ¶4(a)(iii) satisfied.  

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bigbaylorfan.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Tuesday, April 9, 2013