Baylor University v. Stephen Hinson
Claim Number: FA1408001573005
Complainant is Baylor University (“Complainant”), represented by Megan R. Myers of Pirkey Barber PLLC, Texas, USA. Respondent is Stephen Hinson (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorclub.com>, registered with 1&1 Internet AG.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2014; the National Arbitration Forum received payment on August 1, 2014.
On August 5, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <baylorclub.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 August 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@baylorclub.com. Also on August 5, 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 August 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is BAYLOR a university that has operated continuously since the former Republic of Texas chartered it in 1845. The BAYLOR mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,465,910 registered Nov. 17, 1987).
2. The <baylorclub.com> domain name is confusingly similar to BAYLOR.
3. Respondent has no rights or legitimate interests. First, Respondent is not commonly known by the name <baylorclub.com>. Further, the <baylorclub.com> domain name has been put to no active use.
4. Respondent has registered and used the domain name in bad faith. Respondent’s passive holding of this Internet domain name is evidence of bad faith.
5. Further, Respondent is an alumnus of Complainant and was thus aware of Complainant’s rights.
6. The <baylorclub.com> domain name was registered May 26, 2010.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BAYLOR mark. Respondent’s domain name is confusingly similar to Complainant’s BAYLOR mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <baylorclub.com> domain name, and that Respondent registered and uses the domain name 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:
(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.”).
Complainant is BAYLOR a university that has operated continuously since the former Republic of Texas chartered it in 1845. The BAYLOR mark is registered with the USPTO (e.g., Reg. No. 1,465,910 registered Nov. 17, 1987). This trademark establishes Complainant’s rights pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant states that the <baylorclub.com> domain name is confusingly similar to the BAYLOR mark. The domain name adds the generic top-level domain ("gTLD") “.com” and the word “club” to the BAYLOR mark. The Panel holds that the generic term “club” and the gTLD are insufficient to distinguish the domain name from the BAYLOR mark, and therefore concludes that the domain name is confusingly similar to Complainant’s mark within the meaning of Policy ¶ 4(a)(i). See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims Respondent is not commonly known by the name <baylorclub.com>. Complainant notes the WHOIS information lists “Stephen Hinson” as the registrant of record name. Moreover, there is nothing in the record that establishes that the Respondent is, in fact, commonly known by the domain name. See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant states the <baylorclub.com> domain name has not been put to any active use. Indeed, the <baylorclub.com> domain name fails to resolve to an active website. In Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004), the panel found that the continued inactivity of a domain name was an insufficient use so as to give rise to a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel agrees that Respondent has not established a use of the domain name that satisfies the requirements of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent’s passive holding of the <baylorclub.com> domain name is evidence of bad faith because the domain name fails to resolve to any active website. The Panel agrees. See, e.g., Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Further, Complainant claims Respondent is an alumnus of Complainant and was thus aware of Complainant’s rights. As such, the Panel agrees that Respondent actually knew of Complainant’s rights in the mark and therefore concludes that Respondent engaged in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant’s YAHOO! mark at the time of registration”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylorclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 2, 2014
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