Claim Number: FA0709001082178
PARTIES
Complainant is Baylor University (“Complainant”), represented by William
G. Barber, 600 Congress Avenue, Suite 2120, Austin, TX 78701. Respondent is Red Hot Web Gems, Inc. c/o Paul Kalra (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <baylor-alum.com>, <baylorcollegemd.com>, <baylorgrad.com>, <baylor-law.com>, <baylor-student.com>, <bayloralum.com>, <baylormba.com>, and <baylorstudent.com>,
registered with Enom, Inc.
PANEL
The undersigned certify that they have acted independently and impartially
and to the best of their knowledge have no known conflict in serving as
Panelists in this proceeding.
Diane Cabell, Esq., Terry F. Peppard, Esq., and James A. Carmody, Esq.,
(Chair) as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On October 2, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 22, 2007
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@baylor-alum.com,
postmaster@baylorcollegemd.com, postmaster@baylorgrad.com,
postmaster@baylor-law.com, postmaster@baylor-student.com,
postmaster@bayloralum.com, postmaster@baylormba.com, and
postmaster@baylorstudent.com by e-mail.
On
A timely Response was received and determined to be complete on
Each of the parties timely filed an Additional Submission.
On November 19, 2007, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Diane Cabell, Esq., Terry F. Peppard, Esq.,
and James A. Carmody, Esq., (Chair) as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <baylor-alum.com>,
<baylorcollegemd.com>,
<baylorgrad.com>,
<baylor-law.com>, <baylor-student.com>, <bayloralum.com>, <baylormba.com>, and <baylorstudent.com> domains, the
domain names at issue, are confusingly similar to Complainant’s BAYLOR Marks.
2.
Respondent does not have any rights or legitimate
interests in the domain names at issue.
3. Respondent registered and has used the domain
names at issue in bad faith
B. Respondent
1. Respondent denies that the domain names at
issue are identical or confusingly
similar to Complainant’s BAYLOR marks.
2.
Respondent
claims that it has rights and legitimate interest in the domain
names at issue because of planned use in a vanity
email business.
3. Further, Respondent denies
registration or use of the domain names at issue in bad faith.
C. Additional Submissions
Each of the parties
filed an Additional Submission which essentially restated the arguments
initially made.
FINDINGS
Complainant is the owner of and has long
used the marks BAYLOR,
BAYLOR:
BAYLOR HEALTH CARE
SYSTEM:
BAYLOR HEART SCAN:
BAYLOR SURGICARE:
Respondent
registered the domain names at issue on various dates in 2006 and 2007 to be
used in connection with its planned vanity email service known as EmailAddressFactory.com.
Respondent claims to have registered
approximately 5,500 domain names in several categories, such as schools, nursing,
military, sports and hobbies, entertainment, medical, farming, cooking,
parenting, and gardening. Respondent’s EmailAddressFactory.com
will allegedly enable individuals to have a personalized email address, such as
bob@bayloralum.com. Respondent
registered EmailAddressFactory.com for the business over two years ago
on August 20, 2005. The domain names at issue were all registered after EmailAddressFactory.com
was registered: <baylor-alum.com>
(3/12/06); <baylorgrad.com>
(2/9/06); <baylorlaw.com>
(3/12/06); <baylorstudent.com>
(3/12/06); <baylormba.com>
(7/9/07); <baylorcollege.com> (2/9/06).
Respondent plans to charge $36 per year to customers of the vanity email service,
and will provide a mailbox, web-based email access as well as email forwarding.
Respondent does not claim trademark or other intellectual property
rights in the domain names at issue and none of those domain names consist of
the legal name of or a name commonly used to identify Respondent. To date, Respondent has not used the domain
names in connection with the bona fide offering of any goods or services but
derives some financial benefit from the free “parking” pages provided by the
registrar in lieu of hosting expenses which Respondent would otherwise incur. Respondent
has made no bona fide noncommercial or fair use of Complainant’s marks in a
site accessible under the domain names.
While the Panelists have each arrived at a decision that the
Complainant should prevail in this matter, they have taken slightly different
paths to do so.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 has clearly established rights in the BAYLOR
Marks through its registration of the mark with the United States Patent and
Trademark Office (Reg. No. 1,465,910 issued Nov. 17, 1987). The Panel finds that this sufficiently
establishes Complainant’s rights in the BAYLOR mark pursuant to Policy ¶
4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA
198803 (Nat. Arb. Forum
The <baylor-alum.com>, <baylorcollegemd.com>, <baylorgrad.com>,
<baylor-law.com>, <baylor-student.com>, <bayloralum.com>, <baylormba.com>, and <baylorstudent.com> domain names
are all confusingly similar to Complainant’s BAYLOR Marks. Each of the domain names at issue include the
entire BAYLOR mark and simply add the generic terms “alum,” “collegemd,”
“grad,” “law,” “student,” and “mba,” and three of the disputed domain names
also contain a hyphen. These generic terms
are all descriptive of Complainant’s educational services offered under the BAYLOR
Marks. The additions of such generic,
descriptive terms and hyphens to a mark do not sufficiently distinguish a
disputed domain name from a corresponding mark.
See Arthur Guinness
Son & Co. (
Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
By its showings in support of its claims under Policy ¶ 4(a)(i) and allegations in the Complaint, Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). The burden is thus shifted to Respondent to show it does have rights or legitimate interests in the domains. 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 Policy ¶ 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.”).
There is nothing in the
record to suggest that Respondent is known by the domain names at issue or has
been licensed to use them for any purpose by Complainant. Rather, Respondent claims rights or
legitimate interests in these domains because of an alleged plan to eventually
establish a vanity email service in conjunction with another site operated by
Respondent, EmailAddressFactory.com. This
would constitute a bona fide offering
of services available through sites resolving at the domains at issue. Respondent claims that this is a “nominative
fair use” of the domain names at issue.
The Panel was not provided a copy of Respondent’s business plan
specifically involving the domain names at issue.
In
support of its claim of nominative fair use, Respondent cites New Kids on the Block v. News Am. Publ’g Inc.,
971 F.2d 302 (9th Cir. 1991) for the proposition that a non-trademark use of
the mark in question is not infringement of the mark. However, unlike New Kids, the whole thrust of Respondent’s future vanity email
plans for the domain names at issue is to attract business by suggesting
(falsely) an association with Complainant Baylor. Respondent plans an infringing trademark use
of the BAYLOR marks. See also Elorg Co. LLC & the Tetris
Co. LLC v. 0 x 90, FA114355 (Nat. Arb. Forum Aug. 6, 2002) (holding that
using <tetris.net> for vanity email purposes was not a non-trademark use
of the mark TETRIS and thus not nominative fair use of the mark).
The Respondent has not begun operations using these domains, however the domain names at issue all resolve to websites that feature links to third-party websites that compete with Complainant’s various educational services. Respondent has allowed the domain registrar to post this content and earn click-through fees when Internet users click on these links. Finally, on this point, Respondent has not made demonstrable preparations to use the disputed domain names for any other purpose that could be considered a “nominative fair use.” The Panel finds that this does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has established that it
does not receive any of the revenues from the click-through fees from the links
displayed on the websites that resolve from sites associated with the domain names at issue. These revenues accrue to the domain name
registrar who offers a "parking service" for domain holders until
they are ready to post their own content.
However, Respondent has a choice to resolve the domains to blank or
noncommercial pages and has chosen not to do so. In doing so, Respondent is
spared the cost of website hosting fees, which inures to Respondent's
commercial benefit. Therefore, Respondent has allowed the domains to be used to
attract, for commercial gain, Internet users who may be confused as to
Complainant’s affiliation with those sites.
To a majority of the Panel, this is sufficent evidence of Respondent’s
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain
name at issue in direct competition with Complainant, and giving the impression
of being affiliated with or sponsored by Complainant, this circumstance
qualifies as bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629
(Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”).
Finally,
on this issue, it is not denied that Complainant sent, and Respondent received,
two cease-and-desist letters with respect to registration and use of the domain
names at issue prior to initiation of this proceeding.
Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylor-alum.com>,
<baylorcollegemd.com>,
<baylorgrad.com>,
<baylor-law.com>, <baylor-student.com>, <bayloralum.com>, <baylormba.com>, and <baylorstudent.com> domain
names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq. (Chair)
Diane Cabell, Esq.
Terry F. Peppard, Esq.
Dated: December 3, 2007
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