The Board of Regents, The University of Texas System,
on behalf of The University of Texas at
Claim Number: FA0804001176733
Complainant is The Board of Regents, The University of Texas System,
on behalf of The University of Texas at Austin (“Complainant”), represented by Susan
J. Hightower, Texas, USA.
Respondent is Webs Master (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <texaslonghornsmerchandise.com> and <texaslonghornsshop.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 9, 2008.
On April 8, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <texaslonghornsmerchandise.com> and <texaslonghornsshop.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April
9, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 29, 2008
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@texaslonghornsmerchandise.com,
and postmaster@texaslonghornsshop.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 6, 2008, 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has provided
college and graduate level education services since 1883.
Complainant’s associated
sports teams have been called the TEXAS LONGHORNS since 1916.
Complainant holds separate
registered service marks with the United States Patent and Trademark Office
(“USPTO”) for the
Complainant’s student
athletes compete under the TEXAS LONGHORNS mark, and Complainant also sells
related merchandise to support its program.
Respondent registered the domain names <texaslonghornsmerchandise.com> and <texaslonghornsshop.com> on November 4, 2005.
Respondent is not commonly known by the <texaslonghornsmerchandise.com> and <texaslonghornsshop.com> domain names.
Respondent uses the disputed domain names to display links allegedly related to Complainant’s sports program.
Respondent profits from this venture by collecting commissions or other fees for each Internet user’s visit to one of these links.
Respondent’s <texaslonghornsmerchandise.com> and <texaslonghornsshop.com>
domain names are confusingly similar to Complainant’s
Respondent does not have any rights or legitimate interests in the domain names <texaslonghornsmerchandise.com> and <texaslonghornsshop.com>.
Respondent registered and uses the domain names <texaslonghornsmerchandise.com> and <texaslonghornsshop.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to service marks in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain names were registered and are 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."
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 a 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.”
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:
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.
Complainant has service mark registrations with the USPTO
for the
Respondent’s combination of the two marks in a
single domain name illustrates the familiar “mark-plus-mark” domain configuration. Complainant holds rights in each of the marks
which make up the core of the domain name.
It follows that Complainant has rights in the combination of the two
marks as here presented. See, for
example, Audi AG v Hans Wolf,
D2001-0148 (WIPO Mar. 15, 2001).
Respondent’s <texaslonghornsmerchandise.com>, and <texaslonghornsshop.com> domain names contain Complainant’s TEXAS LONGHORNS marks in their entirety, without the space, and merely add the generic terms “merchandise” and “shop,” as well as the generic top-level domain (“gTLD”) “.com.” The additions of the terms “merchandise” and “shop” do not distinguish the disputed domain names from the mark combination because of the generic nature of the words themselves, especially where it is undisputed that Complainant sells TEXAS LONGHORNS “merchandise” for which customers can “shop.” See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with a complainant’s registered mark “llbean” does not circumvent that complainant’s rights in that mark nor avoid the confusing similarity provisions of the ICANN Policy).
Further, the addition of the gTLD “.com” is irrelevant under the Policy because it is a requirement of all domain names. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007): “The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”
Therefore, we conclude that Respondent’s <texaslonghornsmerchandise.com> and <texaslonghornsshop.com>
domain names are confusingly similar to Complainant’s
Complainant alleges that Respondent does not have rights to or legitimate interests in the disputed domain names. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must 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 interest in the subject domain names.
See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests).
The allegations of the Complaint sufficiently establish a prima facie case pursuant to Policy ¶ 4(a)(ii). And, because Respondent has not responded to the Complaint, we are free to conclude that Respondent has no rights or interests cognizable under the Policy. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002): “[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.” Nonetheless, we will examine the record to determine if there is any basis for determining that Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <texaslonghornsmerchandise.com> and <texaslonghornsshop.com> domain names. Moreover, the pertinent WHOIS information identifies Respondent as “Webs Master,” and there is no evidence before us to suggest that Complainant’s allegation is inaccurate. Therefore, we conclude that Respondent is not commonly known by the <texaslonghornsmerchandise.com>, and <texaslonghornsshop.com> domain names within the meaning of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the domain names <shoredurometer.com> and <shoredurometers.com> because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names in dispute); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a 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).
We also note that there is no dispute with regard to Complainant’s allegation that Respondent is using the domain names <texaslonghornsmerchandise.com>, and <texaslonghornsshop.com> to display links allegedly related to Complainant’s sports program. Complainant contends that Respondent profits from this venture by collecting commissions or other fees for each Internet user’s visit to one of these links. Respondent does not deny this. We therefore conclude that Respondent’s use of the domain names <texaslonghornsmerchandise.com>, and <texaslonghornsshop.com> constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because a respondent's evident purpose in selecting domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with a bona fide offering of goods or services or a fair use); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that a respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by a complainant and thus was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s registration and use of the disputed domain
names as alleged in the Complaint creates a likelihood of confusion as to the
possibility of Complainant’s sponsorship, affiliation, or endorsement of the
merchandise advertised on Respondent’s website.
Respondent likely profits from its activities by receiving referral
fees, and is therefore misappropriating Complainant’s
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.
See also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when a domain name resolves to commercial websites and that respondent fails to contest a complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel therefore finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <texaslonghornsmerchandise.com> and <texaslonghornsshop.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 14, 2008
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