Baylor University v. Nguyen Duy Nhan
Claim Number: FA1707001741191
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Nguyen Duy Nhan (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hcmbaylor.com>, <baylorhcm.com>, <phongkhambaylor.com>, <phongkhambaylor.net> and <baylorphongkham.com>, registered with P.A. Viet Nam Company Limited.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 24, 2017; the Forum received payment on July 24, 2017. The Complaint was received in both Vietnamese and English.
On July 26, 2017, P.A. Viet Nam Company Limited confirmed by e-mail to the Forum that the <hcmbaylor.com>, <baylorhcm.com>, <phongkhambaylor.com>, <phongkhambaylor.net> and <baylorphongkham.com> domain names are registered with P.A. Viet Nam Company Limited and that Respondent is the current registrant of the names. P.A. Viet Nam Company Limited has verified that Respondent is bound by the P.A. Viet Nam Company Limited 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 July 31, 2017, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of August 21, 2017 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@hcmbaylor.com, postmaster@baylorhcm.com, postmaster@phongkhambaylor.com, postmaster@phongkhambaylor.net, postmaster@baylorphongkham.com. Also on July 31, 2017, the Vietnamese language 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 August 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Chartered in 1845, Complainant is the oldest continually operating institution of higher learning in Texas and is the largest Baptist university in the world.
Complainant holds a registration for the BAYLOR service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,465,910, registered November 17, 1987.
Respondent registered the domain name <hcmbaylor.com> on February 14, 2017, the domain name <baylorhcm.com> on February 14, 2017, the domain name <phongkhambaylor.com> on February 16, 2017, the domain name <phongkhambaylor.net> on February 16, 2017, and the domain name <baylorphongkham.com> on February 16, 2017.
Baylor has numerous connections with Vietnam, and, in particular, involvement in the health care field in that country.
The acronym “hcm,” found in two of the domain names, is short for both “health care management” and “Ho Chi Minh” City, the capital of Vietnam, while the term “phongkham,” found in the other three domain names, is Vietnamese for “clinic.”
Each of the domain names is confusingly similar to Complainant’s BAYLOR service mark.
Respondent has no rights to or legitimate interests in any of the domain names.
Respondent has not been commonly known by any of the domain names.
Complainant has not licensed or otherwise permitted Respondent to use the BAYLOR mark.
Respondent does not use any of the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, the logo displayed by Respondent on the websites associated with the domain names is nearly identical to Complainant’s 1845 logo, thus falsely claiming association with Complainant.
Further, the websites associated with each of the domain names offer counterfeit services, advertising that “Baylor Hospital” offers “painless abortion,” and for all services, promises “perfect treatment results.”
Respondent registered and uses each of the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the BAYLOR service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum August 11, 2015):
There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) .... Due to Complainant’s … USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Vietnam). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he 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.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that each of Respondent’s domain names, <hcmbaylor.com>, <baylorhcm.com>, <phongkhambaylor.com>, <phongkhambaylor.net> and <baylorphongkham.com>, is confusingly similar to Complainant’s BAYLOR service mark. Each of the domain names contains the mark in its entirety, together with a generic Top Level Domain (“gTLD”), either “.com” or “.net.”
Moreover, as the Complaint alleges without refutation from Respondent,
Complainant has numerous connections with Vietnam, and, in particular, involvement in the health care field in that country, and the acronym “hcm,” which is found in two of the domain names, is short for both “health care management” and “Ho Chi Minh” City, the capital of Vietnam, while the term “phongkham,” which is found in the other three domain names, is Vietnamese for “clinic.” Each of the appended terms therefore relates to an aspect of Complainant’s business. The record thus demonstrates that each of the domain names is confusingly similar to Complainant’s BAYLOR mark under the standards of the Policy. See
Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO February 22, 2001):
The addition of the generic term “perfumes” [to the mark of a UDRP complainant in forming a domain name] 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 Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (determining that confusing similarity existed where a disputed domain name contained a UDRP complainant’s entire mark and differed only by the addition of a generic or descriptive phrase and a generic Top Level Domain. Further see Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that affixing a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the challenged domain names <hcmbaylor.com>, <baylorhcm.com>, <phongkhambaylor.com>, <phongkhambaylor.net> or <baylorphongkham.com>, and that Complainant has not licensed or otherwise permitted Respondent to use the BAYLOR mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Nguyen Duy Nhan,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in any of them within the ambit of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark). See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), where a UDRP complainant had not authorized that respondent to use its mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the challenged domain names, <hcmbaylor.com>, <baylorhcm.com>, <phongkhambaylor.com>, <phongkhambaylor.net> and <baylorphongkham.com>, to attempt to pass itself off as Complainant. In the circumstances here obtaining, we may comfortably presume that Respondent seeks by this means to acquire illicit financial gain. This employment of the domain names is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names such as would confirm in Respondent rights to or legitimate interests in them within the compass of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See, for example, Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Finally, under this head of the Policy, Complainant alleges, and Respondent does not deny, that Respondent uses the domain names to attempt to sell counterfeit services purporting to be those of Complainant. This too is not a bona fide offering of goods or services by means of the domain names. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum April 12, 2002):
Respondent’s use of the confusingly similar domain name to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the contested domain names, <hcmbaylor.com>, <baylorhcm.com>, <phongkhambaylor.com>, <phongkhambaylor.net> and <baylorphongkham.com>, which we have found to be confusingly similar to Complainant’s BAYLOR service mark, to attempt to profit financially from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain names and their resolving web sites. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain names. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum December 28, 2005):
The Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the BAYLOR mark when it registered the <hcmbaylor.com>, <baylorhcm.com>, <phongkhambaylor.com>, <phongkhambaylor.net> and <baylorphongkham.com> domain names. This further demonstrates that Respondent registered the domain names in bad faith. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith registration of a domain name where a respondent was “well-aware” of a UDRP complainant’s mark at the time of its registration of a confusingly similar domain name).
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <hcmbaylor.com>, <baylorhcm.com>, <phongkhambaylor.com>, <phongkhambaylor.net> and <baylorphongkham.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 30, 2017
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