Baylor University v. liu xiaoguo
Claim Number: FA2010001916140
Complainant is Baylor University (“Complainant”), represented by Caitlin Costello, United States. Respondent is liu xiaoguo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baylorbearsproshop.com> ("the Domain Name"), registered with NameSilo, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 7, 2020; the Forum received payment on October 7, 2020.
On October 7, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <baylorbearsproshop.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 October 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 2020 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@baylorbearsproshop.com. Also on October 8, 2020, 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 November 3, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
Complainant was originally chartered in 1845 by the Republic of Texas. It is the oldest continually operating institution of higher learning in Texas and is the largest Baptist university in the world. It has a highly successful athletics programs called “Baylor Bears.” The Complainant also offers a number of products featuring its marks, including jerseys and other clothing items. Baylor’s official school colors are green and gold. It owns <baylor.edu> and <baylorbears.com>.
The Complainant owns the marks BAYLOR and BAYLOR BEARS, as well as related marks (collectively, the “BAYLOR Marks”). The Complainant and its licensees have long used the BAYLOR Marks in connection with a wide variety of products and services, including apparel. Baylor has extensive common law rights in the BAYLOR Marks and also owns a number of trademark registrations for the BAYLOR Marks in the United States, including the following (among others):
• BAYLOR, U.S. Reg. Nos. 4,958,203 and 1,465,910 with first use recorded as 1902 for clothing;
• BAYLOR UNIVERSITY, U.S. Reg. Nos. 1,923,603 and 1,935,130 with first use for educational services and sporting events recorded as 1845 and first use for clothing recorded as 1970; and
• BAYLOR BEARS B and Design, U.S. Reg. No. 1,467,391 with first use for drinking receptacles recorded as 1948.
The BAYLOR Marks include an interlocking BU Logo which is used with many of Complainant’s products and services, U.S. Reg. Nos. 1,468,277 and 1,558,080 with first use for clothing recorded as 1912.
The Domain Name registered in 2020 is confusingly similar to the Complainant’s BAYLOR marks, including its BAYLOR BEARS mark adding the generic terms "pro" and "shop" and the gTLD ".com".
The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name has been pointed to a web site offering counterfeit versions of clothing bearing the Complainant’s BAYLOR and BU marks. This is not a bona fide offering of goods or services. It is registration and use in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a university originally chartered in 1845. It has an athletics program called “Baylor Bears.” The Complainant offers a number of products featuring its marks, including jerseys and other clothing items. It owns <baylor.edu> and <baylorbears.com>.
The Complainant owns the marks BAYLOR and BAYLOR BEARS, as well as related marks (collectively, the “BAYLOR Marks”). The Complainant has a number of trademark registrations for the BAYLOR Marks in the United States, including the following (among others):
• BAYLOR, U.S. Reg. Nos. 4,958,203 and 1,465,910 with first use recorded as 1902 for clothing;
• BAYLOR UNIVERSITY, U.S. Reg. Nos. 1,923,603 and 1,935,130 with first use for educational services and sporting events recorded as 1845 and first use for clothing recorded as 1970; and
• BAYLOR BEARS B and Design, U.S. Reg. No. 1,467,391 with first use for drinking receptacles recorded as 1948.
The BAYLOR Marks include an interlocking BU Logo which is used with many of Complainant’s products and services, U.S. Reg. Nos. 1,468,277 and 1,558,080 with first use for clothing recorded as 1912.
The Domain Name registered in 2020 has been used for a site offering counterfeit clothing bearing the Complainant’s BAYLOR and BU marks.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Domain Name consists of the Complainant's BAYLOR BEARS mark (which is registered in USA with first use recorded as 1948), the generic terms "pro" and "shop" and the gTLD ".com".
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic terms "pro" and "shop" does not prevent confusing similarity between the Domain Name and the Complainant’s BAYLOR BEARS mark.
The gTLD ".com" does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s BAYLOR BEARS registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its marks. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web site attached to the Domain Name uses the Complainant's BAYLOR and BU marks and its BU logo to offer counterfeit goods. It does not make it clear that there is no commercial connection with the Complainant and the web site appears official. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.) 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 counterfeit products).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers counterfeit products under the Complainant’s BAYLOR and BU marks and its BU logo giving the impression that the site attached to the Domain Name is official.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site and products on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use). See H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(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 <baylorbearsproshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 3, 2020
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