national arbitration forum

 

DECISION

 

Baylor University v. Domain Administrator c/o Fundacion Private Whois

Claim Number: FA1401001541455

 

PARTIES

Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson of Pirkey Barber PLLC, Texas, USA.  Respondent is Domain Administrator c/o Fundacion Private Whois (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <baylornet.com>, registered with Internet.bs Corp..

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2014; the National Arbitration Forum received payment on January 30, 2014.

 

On January 31, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <baylornet.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name.  Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 January 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2014 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@baylornet.com.  Also on January 31, 2014, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Baylor University and the BAYLOR Marks

 

Baylor University (referred to herein as “Complainant” or “Baylor”) was originally chartered in 1845 by the Republic of Texas.  It is the oldest continually operating institution of higher learning in Texas and is the largest Baptist university in the world.  Baylor provides a wide curriculum of educational services through its eight colleges and schools at both the undergraduate and graduate levels, including arts, sciences, business, law, nursing, education, engineering, computer science, music, social work, and theology.  For more detail on Baylor’s history and offerings, see its website at www.baylor.edu.

 

Baylor is the owner of and it has long used the marks BAYLOR, BAYLOR UNIVERSITY, and other marks that include the term BAYLOR (referred to herein collectively as the “BAYLOR marks”) in connection with a wide range of goods and services.  Baylor owns a number of trademark registrations for the BAYLOR marks in the United States and other countries, including the following (among others)^[1]: 

 

·                    BAYLOR, Reg. Nos. 1465910, 1468436, 1858559, and 1936714

·                    BAYLOR UNIVERSITY, Reg. Nos. 1923603 and 1935130.

 

 

FACTUAL AND LEGAL GROUNDS

 

This Complaint is based on the following factual and legal grounds^[2]:

 

a.         The domain name baylornet.com is identical or confusingly similar to Complainant’s BAYLOR marks.  It contains the identical mark BAYLOR — a famous mark strongly associated with Baylor University^[3] — and merely tacks on the insignificant descriptive term “net.”^[4]

 

b.         Respondent has no rights or legitimate interests in the domain name at issue.

 

(i)         Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.  Complainant’s attorneys sent a cease-and-desist letter to Respondent on December 11, 2013, but Respondent has never responded.  Instead, Respondent has continued using the domain name in connection with monetized parking page with link titles that appear to relate to the services of Baylor (e.g., “Baylor University,” “Education Scholarship,” and “Online College Education”) yet divert traffic to third-party websites not affiliated with Baylor.

 

(ii)        Respondent lists the domain name for sale in an amount in excess of any out-of-pocket expenses.  Specifically, clicking on a link entitled “Learn More.” at www.baylornet.com leads to a page stating, “Secure Baylornet.com domain before someone else does!  Price is only $1,500.00 USD.”  An offer to sell a domain name for financial gain is evidence of a lack of legitimate interest in the name.^[5]

 

            (iii)       Respondent is not commonly known by the domain name at issue.

 

            (iv)       Respondent is not making a legitimate noncommercial or fair use of the domain name.^[6]

 

c.         Respondent registered and is using the domain name in bad faith.

 

            (i)         Respondent has continued its infringing activity despite being given notice of Baylor’s trademark rights.

 

(ii)        Respondent presumably is paid a fee or commission when Internet users visit the website www.baylornet.com, click on the various links likely to be associated with Baylor, and are diverted to third-party websites.  Thus, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Baylor’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and/or the links displayed on Respondent’s website.^[7] 

 

(iii)       Not only is the domain name highly likely to cause confusion, but Respondent displays link titles on its website that are clear references to Baylor. 

 

(vi)       Respondent lists the domain name for sale in an amount in excess of any out-of-pocket expenses.  Specifically, clicking on a link entitled “Learn More.” at www.baylornet.com leads to a page stating, “Secure Baylornet.com domain before someone else does!  Price is only $1,500.00 USD.” An offer to sell a domain name for financial gain is evidence of bad faith registration and use. ^[8]

 

            (v)        Respondent’s bad faith is also evidenced by the fact that it owns no trademark or other intellectual property rights in the domain name, the domain name does not consist of the legal name of or a name commonly used to identify Respondent, Respondent has not used the domain name in connection with the bona fide offering of any goods or services, Respondent has made no bona fide noncommercial or fair use of Complainant’s marks in a site accessible under the domain name, and Respondent’s domain name incorporate exactly the highly distinctive and famous mark BAYLOR.  See 15 U.S.C. §1125(d)(1)(B)(i).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 Complainant to prove the following three elements to obtain an order cancelling or transferring a domain name:

 

(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.

 

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 the 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.”).

 

Identical and/or Confusingly Similar

Complainant owns the BAYLOR mark through its trademark registrations with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 1,465,910, registered November 17, 1987). Complainant was chartered in 1845 by the Republic of Texas and is the oldest continually operating institution of higher learning in Texas.  Complainant uses the BAYLOR mark to promote its educational services. Complainant’s trademark registrations with the USPTO sufficiently establishes Complainant’s rights in the BAYLOR mark for the purposes of Policy ¶4(a)(i) even though Respondent apparently does not reside or operate in the United States. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Complainant need only show Complainant has rights to its mark in SOME country.

 

Complainant claims the <baylornet.com> domain name is confusingly similar to Complainant’s BAYLOR mark. The disputed domain name contains the BAYLOR mark in its entirety and merely adds the descriptive term “net”. Previous panels have treated the added term “net” as generic and this Panel agrees even though the word “net” is not a gTLD in this context. In Lorillard Licensing Co., LLC v. sfd sdf / sdf dfd; sdf sdf / ad sfd v; sdf sd / ssd s; sfs / sfd df; sad / asdsad, FA 1512210 (Nat. Arb. Forum Sept. 15, 2013), the Panel found the respondent’s <cheapnewportcigaretteswholesalenet.com> was confusingly similar to the complainant’s NEWPORT mark as the added words, including “net” and the generic top-level domain (“gTLD”) “.com”, were insufficient to distinguish the disputed domain name from the mark; see also Baylor Univ. v. Dave Rosenbom c/o James, FA 1495800 (Nat. Arb. Forum June 14, 2013) (where the panel found the <www.baylorsportsnet.com> domain name confusingly similar to complainant’s BAYLOR mark). Therefore, the <baylornet.com> domain name is confusingly similar to Complainant’s BAYLOR mark pursuant to Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the domain name at issue. The WHOIS record indicates that “Domain Administrator c/o Fundacion Private Whois” is the registrant of the disputed domain name. Respondent has failed to submit a response in this case to provide any information for the Panel to consider. In light of the available evidence, Complainant is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Complainant claims Respondent doesn’t use the <baylornet.com> disputed domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent is using the domain name in connection with a parked page offering links that appear to relate to the services of Baylor, including “Baylor University,” “Education Scholarship,” and “Online College Education.” Respondent likely receives “click through fees” from its parked page (or at least free parking).  Under these circumstances, a respondent does not acquire rights to the disputed domain name. In Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), the panel stated, “Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and (iii), respectively.

 

Respondent lists the domain name for sale in excess of any out-of-pocket expenses. Clicking on the “Learn More” link on the disputed page directs users to a page stating, “Secure Baylornet.com domain name before someone else does! Price is only $1,500.00 USD.” The fact respondent has offered the domain name for sale is generally sufficient evidence the respondent lacks rights and legitimate interests in the disputed domain name. See Trice v. Dill, FA 1369280 (Nat. Arb. Forum Mar. 10, 2011) (“Based on the evidence in the record, the Panel finds that Respondent’s offer to lease and then sell the<clearbox.com> domain name to Complainant indicates a lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii).”). Respondent’s offer to sell the <baylornet.com> domain name is adequate to prove Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii).

 

Finally, Respondent registered the disputed domain name using a WHOIS privacy service.  This means the real party in interest is not the registered owner of the disputed domain name, even though it controls the disputed domain name.  The registered owner has no interest in the domain name (or any control of it).  This means the real party in interest cannot acquire any right to the domain name because it doesn’t publicly associate itself with the disputed domain name.  Likewise, the registered owner has no rights to the disputed domain name because it is acting as a bare trustee for an undisclosed person.

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Complainant claims Respondent’s bad faith is clearly demonstrated by Respondent’s offer to sell the <baylornet.com> domain name in an amount in excess of any out-of-pocket expenses. Respondent is publicity offering to sell the disputed domain name for $1,500.00. This seems to be clearly in excess of Respondent’s out-of-pocket costs. Respondent appears to have purchased the disputed domain name primarily for the purpose of reselling it.  Respondent’s offer to sell the <baylornet.com> domain name demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).

 

Complainant also claims Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with Baylor’s marks and the affiliation of Respondent’s website. Respondent commercially benefits from the confusion when users click on the promoted links. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel stated, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).” This constitutes adequate evidence of Respondent’s bad faith pursuant to Policy ¶4(b)(iv) because the disputed domain name will confuse Internet users as to the source, sponsorship, or endorsement of the promoted links and Respondent is likely commercially benefiting from the confusion.

 

Finally, the disputed domain name is registered with a privacy service.  In the commercial context, this raises the rebuttable presumption Respondent registered and uses the disputed domain name in bad faith.  Respondent has done nothing to rebut this presumption.  This reason alone is sufficient to find bad faith registration and use.

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <baylornet.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Tuesday, March 4, 2014