Baylor University v. Justin Cox
Claim Number: FA1311001530937
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson of Pirkey Barber PLLC, Texas, USA. Respondent is Justin Cox (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rg3baylor.com> and <rg3bu.com>, registered with GoDaddy.com, LLC.
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.
Judge ROBERT T. PFEUFFER, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2013; the National Arbitration Forum received payment on November 20, 2013.
On November 20, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <rg3baylor.com> and <rg3bu.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@rg3baylor.com, postmaster@rg3bu.com. Also on November 21, 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 December 3, 2013.
No Additional Submission was received.
On December 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge ROBERT T. PFEUFFER, 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.
1. Policy ¶ 4(a)(i)
a. Complainant, Baylor University, was originally chartered in 1845 and is the oldest continually operating institution of higher learning in Texas and the largest Baptist University in the world.
b. Complainant owns a number of trademark registrations throughout the world, including United States Patent and Trademark Office (“USPTO”) registrations for the BAYLOR (e.g., Reg. No. 1,465,910 registered November 17, 1987), BU (e.g., Reg. No. 1,468,277 registered December 8, 1987), and BAYLOR UNIVERSITY (e.g., Reg. No. 1,923,603 registered October 3, 1995) marks.
c. Complainant actively participates in a number of intercollegiate sports, including football. Complainant’s football team received particularly intense media attention in 2011 when its quarterback, Robert Griffin III, also known as “RG3,” won the Heisman Trophy.
d. The <rg3baylor.com> and <rg3bu.com> domain names are confusingly similar to marks in which Complainant has rights. Each domain name incorporates one of Complainant’s marks and adds the term “rg3,” the nickname of a former quarterback of Complainant’s football team.
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the at-issue domain names.
b. Respondent has not used, nor made any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Rather, the domains are used for websites with links to Respondent’s own sites at <justinrcox.com> and <wpatour.com>, and include other links as well, some of which appear to relate to fantasy football. See Complainant’s Exhibit E.
i. The website at <justinrcox.com> is used for Respondent’s fantasy football league, while the site at <wpatour.com> is associated with Respondent’s “Washer Pitching Association” where Respondent offers products for sale.
c. Respondent was offering the <rg3baylor.com> domain name for sale before Complainant contacted Respondent with a cease-and-desist letter.
3. Policy ¶ 4(a)(iii)
a. Respondent’s former offer of the <rg3baylor.com> domain name for sale demonstrates Respondent’s bad faith.
b. By using the <rg3baylor.com> and <rg3bu.com> domain names to redirect Internet traffic to Respondent’s own sites, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its own websites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites.
B. Respondent
1. Respondent has maintained and operated the resolving websites for nearly two years by paying yearly fees to the Registrar of the domains.
2. It has never been Respondent’s intent to profit or make money from the purchase of domain names. Instead, Respondent redirects the domains to Respondent’s personal websites.
3. Respondent does not deny knowing who Robert Griffin III is, but questions Complainant’s trademark rights in the term “rg3.”
4. Respondent has spent over $400 to promote the <rg3bu.com> domain name through the purchase of license plates displaying the phrase “RG3BU.”
(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.
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:
The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
Respondent has no rights or legitimate interests in respect of the domain name; and
The domain name has been registered and is being used in bad faith.
Complainant, Baylor University, claims to have been originally chartered in 1845 and to be the oldest continually operating institution of higher learning in Texas and the largest Baptist University in the world. In addition to its academic offerings, Complainant provides that it also fields a number of intercollegiate sports teams, including a football team that received particularly intense media attention in 2011 when its quarterback, Robert Griffin III, also known as “RG3,” won the Heisman Trophy. Complainant claims to own a number of trademark registrations throughout the world, including USPTO registrations for the BAYLOR (e.g., Reg. No. 1,465,910 registered November 17, 1987), BU (e.g., Reg. No. 1,468,277 registered December 8, 1987), and BAYLOR UNIVERSITY (e.g., Reg. No. 1,923,603 registered October 3, 1995) marks. Past panels have agreed that USPTO registration is sufficient to confer trademark rights under Policy ¶ 4(a)(i). See, e.g., 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005).
Complainant next claims that Respondent’s <rg3baylor.com> and <rg3bu.com> domain names are confusingly similar to marks in which Complainant has rights. Each domain name incorporates one of Complainant’s marks and adds the term “rg3,” the nickname of a former quarterback of Complainant’s football team. The Panel specifically notes that the <rg3baylor.com> domain name adds the term “rg3” to Complainant’s BAYLOR mark, while the <rg3bu.com> domain name adds the term “rg3” to Complainant’s BU mark. The Panel further notes that each disputed domain affixes the “.com” generic top-level domain (“gTLD”). The Panel agrees that Respondent’s use of the term “rg3” in each disputed domain name is likely meant as an allusion to Robert Griffin III, who achieved fame while playing for Complainant’s football team. The Panel thus finds that Respondent’s <rg3baylor.com> and <rg3bu.com> domain names are confusingly similar to Complainant’s BAYLOR and BU marks, respectively, as neither descriptive terms nor gTLDs are capable of distinguishing a domain name from a mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 contends that Respondent is not commonly known by either of the at-issue domain names. Complainant also contends that Respondent owns no trademark or other intellectual property rights in either domain name, and that neither domain name consists of the legal name of or a name commonly used to identify Respondent. The Panel notes that the WHOIS record identifies Respondent as “Justin Cox,” and Respondent seems to acknowledge being known as such. Accordingly, the Panel finds that Respondent is commonly known by this name alone, and is not commonly known by the <rg3baylor.com> or <rg3bu.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant urges that Respondent has not used, nor made any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Rather, Complainant alleges the domains are used for websites with links to Respondent’s own sites at <justinrcox.com> and <wpatour.com>, and include other links as well, some of which appear to relate to fantasy football. Complainant notes that the website resolving from <justinrcox.com> is used for Respondent’s fantasy football league, while the site at <wpatour.com> is associated with Respondent’s “Washer Pitching Association,” where Respondent offers products for sale. Previous panels have declined to recognize rights or legitimate interests in situations where a respondent exploits a confusingly similar domain name to redirect Internet users to the respondent’s own website. See, e.g., Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). This Panel concludes that Respondent lacks rights and legitimate interests in the<rg3baylor.com> and <rg3bu.com> domain names, as Respondent uses neither domain in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant next claims that Respondent was offering the <rg3baylor.com> domain name for sale before Complainant contacted Respondent with a cease-and-desist letter. This evidence is found in Complainant’s Exhibit I, showing the offer to sell the “RG3” name coupled with “BU” in the link to Respondent’s personal website. The Panel therefore finds that Respondent offered the <rg3baylor.com> domain name for sale at some point in time, thus the Panel finds that Respondent is not entitled to the protective shield of Policy ¶ 4(a)(ii) with respect to this domain. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
The Panel finds that Respondent offered the <rg3baylor.com> domain name for sale at some point in time through its links to his personal websites, and, therefore, the Panel finds that such an offer demonstrates Respondent’s bad faith registration and use of the name under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant contends that Respondent has registered and used both disputed domain names in bad faith within the meaning of Policy ¶ 4(b)(iv). Complainant asserts that by using the <rg3baylor.com> and <rg3bu.com> domain names to redirect Internet traffic to Respondent’s own sites, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its own websites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. As a result, the Panel determines that Respondent does in fact generate a commercial gain from its use of the disputed domain names, the Panel thus finds that Respondent intentionally registered domain names similar to Complainant’s marks in order to draw traffic to its sites and earn revenue. In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panel found respondent’s use of the at-issue domain name to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent was taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark. This Panel similarly finds that Respondent has demonstrated bad faith registration and use of the <rg3baylor.com> and <rg3bu.com> domain names under Policy ¶ 4(b)(iv) through attraction for commercial gain.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rg3baylor.com> and <rg3bu.com> domain names be TRANSFERRED from Respondent to Complainant.
ROBERT T. PFEUFFER, Panelist
Dated: December 20, 2013
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