Baylor University v. Domain Privacy Service
Claim Number: FA1304001495797
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Domain Privacy Service (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <baylorfootballstadium.com> and <baylorriverfrontstadium.com>, registered with FastDomain, Inc.
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.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2013; the National Arbitration Forum received payment on April 22, 2013.
On April 22, 2013, FastDomain, Inc confirmed by e-mail to the National Arbitration Forum that the <baylorfootballstadium.com> and <baylorriverfrontstadium.com> domain names are registered with FastDomain, Inc and that Respondent is the current registrant of the names. FastDomain, Inc has verified that Respondent is bound by the FastDomain, Inc 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 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@baylorfootballstadium.com and postmaster@baylorriverfrontstadium.com. Also on April 23, 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.
A timely Response was received and determined to be complete on May 13, 2013.
On May 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz (ret.) 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, Baylor University, is the oldest continually operating institution of higher learning in Texas and is the largest Baptist university in the world.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BAYLOR mark (e.g., Reg. No. 1,465,910, registered November 17, 1987) and for the BAYLOR UNIVERSITY mark (e.g., Reg. No. 1,923,603, registered October 3, 1995).
Respondent’s <baylorfootballstadium.com> and <baylorriverfrontstadium.com> domain names contain the identical mark BAYLOR, a famous mark strongly associated with “Baylor University,” and merely tack on the generic or descriptive terms “football stadium” and “river front stadium” that are likely to be associated with Complainant and its new football stadium.
Respondent has no rights or legitimate interests in the domain names at issue.
i. Respondent is not commonly known by the domain names at issue.
ii. 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.
Respondent registered and is using the domain names in bad faith.
iii. Respondent has intentionally 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 websites and products.
iv. Respondent registered the domain names one day after Complainant announced that the official name of its stadium would be “Baylor Stadium.”
Respondent registered the <baylorfootballstadium.com> and <baylorriverfrontstadium.com> domain names on March 14, 2012.
B. Respondent
Repondent did not formally Respond, but instead submitted an email on May 13, 2013 making the following statements.
Complainant’s allegations are “less than accurate” and Complainant is “stepping out of [its] legitimate boundary of protection.”
Respondent has spent “hundreds of dollars” on the disputed domains, but feels there is no value in continuing to argue over them. Respondent consents to transfer the disputed domains to Complainant.
The Domain name is to be transferred to the 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.
The National Arbitration Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Other Correspondence.” In this document, Respondent purports to consent to the transfer of the <baylorfootballstadium.com> and <baylorriverfrontstadium.com> domain names. Respondent consents to transfer the <baylorfootballstadium.com> and <baylorriverfrontstadium.com> domain names to Complainant As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <baylorfootballstadium.com> and <baylorriverfrontstadium.com> domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Accordingly, it is Ordered that the <baylorfootballstadium.com> and <baylorriverfrontstadium.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Nelson A. Diaz (ret.), Panelist
Dated: May 29, 2013
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