Baylor University v. yue dan / jordan lenk
Claim Number: FA1812001819572
Complainant is Baylor University (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is yue dan / jordan lenk (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorfootballgear.com>, registered with Web Commerce Communications Limited dba WebNic.cc.
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 Forum electronically on December 5, 2018; the Forum received payment on December 5, 2018.
On December 6, 2018, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to the Forum that the <baylorfootballgear.com> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 December 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2019 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@baylorfootballgear.com. Also on December 14, 2018, 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 January 4, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant, Baylor University, is the oldest and continually operating institution of higher learning in Texas and the largest Baptist university in the world. Baylor is also known for their highly successful athletics programs that go by the name “Baylor Bears.” Complainant has rights in the BAYLOR mark and many variations of the mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No.1,465,910, registered Nov. 17, 1987).
2. Respondent’s <baylorfootballgear.com>[i] domain name is confusingly similar to Complainant’s BAYLOR mark, as the domain name entirely incorporates the mark and merely adds generic term “football gear” and generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <baylorfootballgear.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the BAYLOR mark in any manner. Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the website associated with the domain name sells green counterfeit jerseys featuring the BAYLOR marks and displays the BAYLOR marks without permission in a manner that is likely to cause consumers to mistakenly believe there is some connection between Respondent and Baylor.
4. Respondent registered and is using the <baylorfootballgear.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the resolving website of the domain name where it offers to sell counterfeit jerseys.
5. Finally, Respondent has provided false information for the WHOIS record.
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 <baylorfootballgear.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(f), 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 (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 has rights in the BAYLOR mark based upon registration of the mark with the USPTO (e.g. Reg. No.1,465,910, registered Nov. 17, 1987). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015). The Panel holds that Complainant’s registration of the BAYLOR mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <baylorfootballgear.com> domain name is confusingly similar to the BAYLOR mark, as the domain name incorporates the mark and merely adds the generic term “football gear” and the generic top-level domain (“gTLD”) “.com.” Addition of a generic term and a gTLD are insufficient to distinguish a domain name from a mark in which a complainant has rights under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD are insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i)). The generic terms “football gear” refer to Complainant’s well-known athletics program and will likely cause confusion. The Panel holds that the <baylorfootballgear.com> domain name is confusingly similar to Complainant’s BAYLOR mark per 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 <baylorfootballgear.com> 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 (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 argues that Respondent has no rights or legitimate interests in the <baylorfootballgear.com> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the BAYLOR mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies the owner of the <baylorfootballgear.com> domain name as “yue dan / jordan lenk” and no information in the record indicates Respondent was authorized to register a domain name with Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <baylorfootballgear.com> domain name.
Complainant further argues Respondent’s lack of rights and legitimate interests in the <baylorfootballgear.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead has shown that the website associated with the domain name offers to sell green counterfeit jerseys featuring the BAYLOR mark and displays the BAYLOR mark without permission in a manner that is likely to cause consumers to mistakenly believe there is some connection between Respondent and Baylor. Use of a domain name to sell counterfeit goods is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). The Panel holds that Respondent does not have rights or legitimate interests in the <baylorfootballgear.com> domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s bad faith is indicated by the unauthorized use of the BAYLOR mark associated with the <baylorfootballgear.com> domain name to sell of counterfeit goods. Use of a <baylorfootballgear.com> domain name to sell counterfeit goods shows bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (Forum July 10, 2015) (“Use of a domain name to offer counterfeit goods does consist of bad faith under Policy ¶ 4(b)(iii).”); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). Complainant has provided screenshots of the website associated with the <baylorfootballgear.com> domain name that offers counterfeit goods. The Panel holds that Respondent’s sale of counterfeit goods indicates bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Respondent has provided false information for the WHOIS record. Inaccurate information in a WHOIS record is evidence of bad faith per Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). The verification email lists the owner’s name and address as “yue dan / jordan lenk, 100N44thStCodyWyoming82414, Beijing.” It is apparent that this WHOIS information is obviously false. Respondent’s false or misleading WHOIS information indicates bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <baylorfootballgear.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 15, 2019
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