Baylor University v. Dave Rosenbom c/o James
Claim Number: FA1304001495800
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Dave Rosenbom c/o James (“Respond-ent”), Gibraltar.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorsportsnet.com>, registered with MONIKER.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on April 22, 2013; the National Arbitration Forum received payment on April 22, 2013.
On April 29, 2013, MONIKER confirmed by e-mail to the National Arbitration For-um that the <baylorsportsnet.com> domain name is registered with MONIKER and that Respondent is the current registrant of the name. MONIKER has very-fied that Respondent is bound by the MONIKER 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 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 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 bil-ling contacts, and to postmaster@baylorsportsnet.com. Also on May 2, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses 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 May 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 is the oldest continually operating institution of higher learning in the United States state of Texas.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”) for the BAYLOR service mark (including Registry No. 1,465,910, registered November 17, 1987).
Respondent registered the <baylorsportsnet.com> domain name on November 11, 1997.
The domain name is confusingly similar to Complainant’s BAYLOR mark.
Respondent has not been commonly known by the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent uses the domain name in connection with a website prominently entitled <baylorsportsnet.com> which displays numerous click-through adver-tisements, many of which relate to online gambling.
Respondent attempts to attract Internet users to its website, for its commercial gain, by creating a likelihood of confusion with Complainant’s BAYLOR mark.
Respondent has engaged in a pattern of bad faith registration and use of the trademarks of others in domain names.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the BAYLOR service mark for purposes of Policy ¶ 4(a)(i) by reason of registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demon-strates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Gibraltar). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum April 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <baylorsportsnet.com> domain name is confus-ingly similar to Complainant’s BAYLOR service mark. The domain name con-tains the BAYLOR mark in its entirety, merely adding the generic terms “sports” and “net,” which relate to aspects of Complainant’s programming, plus the gen-eric Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not avoid a finding of confusing similarity under the standards of the Policy. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a UDRP respondent’s <amextravel.com> domain name confusingly similar to a 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)).
And, because every domain name requires a gTLD, the addition of the “.com” gTLD to Complainant’s BAYLOR mark in creating the <baylorsportsnet.com> domain name is irrelevant to a ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant to an analysis of confusing similarity under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the domain name at issue. In addition, there is nothing in the record suggesting that Complainant has con-sented to Respondent’s use of the BAYLOR mark in the <baylorsportsnet.com> domain name. Moreover, the pertinent WHOIS record identifies the registrant of the domain name only as “Dave Rosenbom c/o James,” which does not resem-ble the domain name. On this record, we conclude that d that Respondent has not been commonly known by the disputed domain name so as to have demon-strated that it has rights to or legitimate interests in it within the contemplation of Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLDTRAVEL-ERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had failed to show that it had rights to or legitimate interests in that domain name as described in Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <baylorsportsnet.com> domain name to resolve to a website which displays click-through advertisements, many of which relate to online gambling. From the circumstances here presented, we may comfortably presume that Respondent profits from the receipt of click-through fees owing to the visits of Internet users to the advertised links. This employment of the do-main name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (conclud-ing that the operation of a pay-per-click website resolving from a domain name that was confusingly similar to the mark of another did not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
The record reveals that Respondent was a respondent in both a WIPO and an NAF UDRP proceeding in which domain names which were found to be con-fusingly similar to the marks of others were transferred to mark holder complain-ants. Under Policy ¶ 4(b)(ii), this pattern is evidence of Respondent’s bad faith in the registration and use of the domain name here in issue. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding, under Policy ¶ 4(b)(ii), that prior UDRP proceedings involving the same respondent in which domain names that were challenged for bad faith registration and use were transferred to UDRP complainants was sufficient evidence of a pattern of bad faith registration and use of a domain name in the case there under consideration).
We are likewise persuaded from the evidence that Respondent has employed the contested <baylorsportsnet.com> domain name to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with Com-plainant’s BAYLOR service mark as to the possibility of Complainant’s sponsor-ship of, affiliation with or endorsement of that website. This demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003):
Respondent has attempted to commercially benefit from the mis-leading … domain name by linking the domain name to … [various websites unrelated to] … Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Accordingly, the Panel finds that Complainant has met its obligations of proof un-der Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <baylorsportsnet.com> domain name be forth-with TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 14, 2013
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