Baylor University v. Pete Kelly c/o Incentive Brands
Claim Number: FA1508001632489
Complainant is Baylor University (“Complainant”), represented by S. Erik Combs, Texas, USA. Respondent is Pete Kelly c/o Incentive Brands (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorhealthuniforms.com>, registered with 1&1 Internet AG.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 7, 2015; the Forum received payment on August 7, 2015.
On August 10, 2015, 1&1 Internet AG confirmed by e-mail to the Forum that the <baylorhealthuniforms.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 11, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@baylorhealthuniforms.com. Also on August 11, 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 September 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist. Subsequently, on September 4, 2015, Respondent submitted email correspondence purporting to transfer the domain name to Complainant, but as the email was late and did not address the merits of the decision, it is not addressed herein.
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
Complainant states that it is a higher learning institution located in Texas, which 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. It was originally founded in 1845.
Complainant states that it is the owner of, and it or its licensees have long used, the marks BAYLOR, BAYLOR UNIVERSITY, BAYLOR HEALTH CARE SYSTEM, and other marks that include the term BAYLOR in connection with a wide range of goods and services. Complainant owns a number of trademark registrations for these marks in the United States and other countries, dating back to 1987. Complainant’s marks are extensively used in connection with medical-related services and education, primarily through licensees such as Baylor Health Care System and Baylor College of Medicine. This medical school is well known.
Complainant alleges that the disputed name is confusingly similar to its marks. The disputed domain name contains Complainant’s BAYLOR mark in full, adds the generic terms “health” and “uniforms,” and attaches the generic top-level domain (“gTLD”) “.com” to the domain name. And the disputed domain name contains the significant part of the BAYLOR HEALTH CARE SYSTEM mark, omits the generic terms “care” and “systems” and adds the generic term “uniforms”. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or otherwise permitted Respondent to use its marks. 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. Rather, the disputed domain name is used for a website that apparently targets employees of Complainant’s licensee and attempts to deceive consumers into thinking it is at least affiliated or connected with, or authorized by Complainant or Complainant’s licensee. Specifically, Respondent uses the disputed domain name in connection with a website prominently displaying a logo and mark which have long been used by Complainant or its licensees. After falsely creating an association with Complainant as described above, Respondent is attempting to gather Internet users’ personal information on Respondent’s website; Respondent may then commercially benefit by abusing that information and/or by selling that information to third parties. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s mark. Further, Respondent knew of Complainant’s well-known mark when it registered the disputed domain name. Finally, Respondent attempts to gather Internet users’ personal information by using the disputed domain name, which is additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii). Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks BAYLOR and BAYLOR HEALTH SYSTEMS and uses them to market a wide range of services, including health-related services.
Complainant’s marks are well-known and their registration dates back to 1987.
The disputed domain name was registered in 2013.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name points to a web site that offers clothing that purports to be authorized by or associated with Complainant.
The web site at the disputed domain name displays Complainant’s logo and mark.
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.”).
The Panel holds that the disputed domain name is confusingly similar to Complainant’s marks. The disputed domain name contains Complainant’s BAYLOR mark in full, and adds the generic terms “health” and “uniforms”. And the disputed domain name contains the significant part of the BAYLOR HEALTH CARE SYSTEM mark, omits the generic terms “care” and “systems” and adds the generic term “uniforms”. Uniforms, such as nurse’s uniforms, are commonly used in the health care business. Prior panels have found that the addition of a descriptive term does not negate confusing similarity, and can even enhance confusion when the term relates to a complainant’s business offerings. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it).
Complainant provides evidence showing that Respondent uses the disputed domain name to resolve to a website which offers for sale clothing apparel, and in particular nursing uniforms. The Panel holds that Respondent’s use of the disputed domain names to host websites selling clothing items related to one of Complainant’s businesses is not 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). See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Complainant presents evidence showing that the resolving website uses Complainant’s mark in order to create the appearance that the disputed domain names are affiliated with Complainant’s business. The Panel holds that Respondent’s use of the disputed domain name in an attempt to pass itself off as associated with Complainant is further evidence that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
As previously mentioned, Complainant presents evidence showing that the disputed domain name resolves to a website that create a likelihood of confusion as to Complainant’s affiliation with the site and offers for sale goods related to one of Complainant’s businesses. Complainant also presents evidence showing that the web site at the disputed domain name displays Complainant’s mark in an attempt to sell those goods. The Panel holds that Respondent profits from the sale of these goods. The Panel holds that Respondent’s attempt to gain commercially from the confusion among Internet users constitutes bad faith use and registration under Policy ¶ 4(b)(iv). ). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylorhealthuniforms.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: September 5, 2015
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