Baylor University v. Callum Macgregor / General Delivery
Claim Number: FA1505001620857
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Callum Macgregor / General Delivery (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorwakeboarding.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2015; the Forum received payment on May 22, 2015.
On May 22, 2015, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the Forum that the <baylorwakeboarding.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com 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 June 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2015 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@baylorwakeboarding.com. Also on June 3, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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. Policy ¶ 4(a)(i)
Complainant claims to have rights in the BAYLOR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,465,910, registered on Nov. 17, 1987). Respondent’s <baylorwakeboarding.com> domain name is confusingly similar to Complainant’s BAYLOR mark because it is differentiated by only the addition of the descriptive term “wakeboarding” and the generic top-level domain (“gTLD”) “.com.”
2. Policy ¶ 4(a)(ii)
Complainant alleges that Respondent is not commonly known by the disputed domain name, as the WHOIS information lists “Callum Macgregor / General Delivery” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the resolving website to redirect to commercial advertisements, survey solicitations, and malware. Respondent lacks rights or legitimate interests in the disputed domain name because it offers the domain for sale.
3. Policy ¶ 4(a)(iii)
Complainant alleges that the Respondent registered the <baylorwakeboarding.com> domain name for the purpose of selling it. Respondent claims that the Respondent has a pattern of bad faith registration. Respondent uses the resolving website to capitalize on the confusion of Internet users in order to profit commercially and, therefore, has engaged in bad faith use and registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <baylorwakeboarding.com> domain name was created on September 28, 2014.
FINDINGS
As the Respondent has failed to file a Response in this matter, the Panel shall make its determination based on the undisputed and reasonable allegations of the complainant. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent engaged in bad faith use and registration of the disputed domain name.
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 uses the BAYLOR mark in conjunction with its operation as a university in Texas. Complainant alleges it has rights in the BAYLOR mark through its registration with the USPTO (e.g., Reg. No. 1,465,910, registered on Nov. 17, 1987). Complainant has provided documentation of this registration in its Attached Exhibit B. Registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). Past panels have also found that registration in a respondent’s country of operation is not required, so long as rights can be established somewhere. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Accordingly, the Panel finds that Complainant has rights in the BAYLOR mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <baylorwakeboarding.com> domain name is confusingly similar to Complainant’s BAYLOR mark because it is differentiated by only the addition of the term “wakeboarding” and the gTLD “.com.” The addition of the gTLD “.com” does not differentiate a disputed domain name from a registered trademark pursuant to Policy ¶ 4(a)(i). Complainant urges that the term “wakeboarding” is descriptive of Complainant because Complainant, as a university, has a wakeboarding team/club. Complainant has provided documentation of this in its Attached Exhibit C. Past panels have agreed that the addition of terms to a mark that describe the mark holder’s use of the mark are not enough to differentiate a mark and a domain name. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
Therefore, the Panel finds that Respondent’s <baylorwakeboarding.com> domain name is confusingly similar to Complainant’s BAYLOR mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Callum Macgregor / General Delivery” as Registrant. Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under 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).
Accordingly, the Panel finds that Respondent is not commonly known by the <baylorwakeboarding.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate and noncommercial fair use because Respondent uses the resolving website to alternatively redirect to commercial advertisements, survey solicitations, and malware. Complainant contends that the exact use of the resolving website changes each time it is refreshed. Complainant has provided documentation of these specific uses in its Attached Exhibit D. Past panels have found that any such use suffices to show a lack of bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (finding that Respondent lacked rights and legitimate interests where the disputed domain name was used to solicit the completion of a survey by Internet users); Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name).
Accordingly, the Panel finds that Respondent fails to use the disputed domain name to provide a bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant alleges that Respondent lacks rights or legitimate interests in the <baylorwakeboarding.com> domain name because Respondent offers the domain for sale. Complainant has provided evidence of Respondent’s offer for sale in its Attached Exhibit E. The Respondent has made a general request of $3,750 in exchange for the disputed domain name. Past panels have found that a willingness to sell a disputed domain in excess of out-of-pocket costs is sufficient to establish a lack of respondent’s rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Accordingly, the Panel finds that Respondent lacks rights or legitimate interests in the <baylorwakeboarding.com> domain name under Policy ¶4(a)(ii).
Complainant alleges that Respondent registered the domain name for the purpose of selling it for an amount in excess of out-of-pocket costs. Complainant has provided evidence of Respondent’s intent to sell in its Attached Exhibit E. Past panels have found that an offer to sell a disputed domain name in excess of any out-of-pocket costs constitutes bad faith under Policy ¶ 4(b)(i). See B World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant alleges that Respondent has a pattern of bad faith registrations. Complainant has provided documentation of prior decided UDRP cases in which Respondent is named as respondent in its Attached Exhibit F. See Priceline.com, INC. v. Callum Macgregor c/o General Delivery, FA 1303928 (Nat. Arb. Forum Mar. 31, 2010); Bath & Body Works Brand Management, Inc. v. Callum Macgregor, FA 1339476 (Nat. Arb. Forum Sept. 29, 2010). Past panels have found prior decisions decided against a respondent to be sufficient to show a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Accordingly, the Panel finds that Respondent has a pattern of bad faith registration under Policy ¶ 4(b)(ii).
Complainant alleges that Respondent uses the <baylorwakeboarding.com> domain name to take advantage of the confusion of Internet users for its own financial gain. Complainant argues that Respondent uses the resolving website to alternatively redirect Internet users to commercial websites, survey websites, and malware. Complainant has provided documentation of this use in its Attached Exhibit D. Past panels have found any of these uses to constitute bad faith in use and registration pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (finding that, where a disputed domain name offers incentives for the completion of surveys, “Internet users are likely to believe that such activities are sponsored by or affiliated with Complainant and is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”); Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
As there is no evidence in the record disputing these claims, the Panel finds that the Respondent has a pattern of bad faith use and registration of others’ trademarks as illicit domain names. As such, the Panel finds that Respondent registered and uses the <baylorwakeboarding.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <baylorwakeboarding.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: June 28, 2015
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