Baylor University v. Baylor University
Claim Number: FA0609000791433
Complainant is Baylor University (“Complainant”), represented by William G. Barber, of Pirkey Barber LLP, 600 Congress Avenue, Suite 2120, Austin, TX 78701. Respondent is Baylor University (“Respondent”), 500 Speight St., Waco, TX 76798.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <bayloraids.com>, <baylorfan.com>, <baylorgrapevinehospital.com>, <baylorhospitaldallas.com>, <baylormedicalcenter.com>, and <baylormedicalschool.com>, registered with Nameview, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 7, 2006.
On September 11, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <bayloraids.com>, <baylorfan.com>, <baylorgrapevinehospital.com>, <baylorhospitaldallas.com>, <baylormedicalcenter.com>, and <baylormedicalschool.com> domain names are registered with Nameview, Inc. and that Respondent is the current registrant of the names. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 3, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bayloraids.com, postmaster@baylorfan.com, postmaster@baylorgrapevinehospital.com, postmaster@baylorhospitaldallas.com, postmaster@baylormedicalcenter.com, and postmaster@baylormedicalschool.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bayloraids.com>, <baylorfan.com>, <baylorgrapevinehospital.com>, <baylorhospitaldallas.com>, <baylormedicalcenter.com>, and <baylormedicalschool.com> domain names are confusingly similar to Complainant’s BAYLOR mark.
2. Respondent does not have any rights or legitimate interests in the <bayloraids.com>, <baylorfan.com>, <baylorgrapevinehospital.com>, <baylorhospitaldallas.com>, <baylormedicalcenter.com>, and <baylormedicalschool.com> domain names.
3. Respondent registered and used the <bayloraids.com>, <baylorfan.com>, <baylorgrapevinehospital.com>, <baylorhospitaldallas.com>, <baylormedicalcenter.com>, and <baylormedicalschool.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Baylor University, is the oldest institution of higher learning in Texas and is the largest Baptist university in the world. Originally chartered in 1845, Complainant offers a wide curriculum of educational services at both the undergraduate and graduate levels of education. Complainant holds several federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BAYLOR mark (i.e., Reg. No. 1,465,910 issued on November 17, 1987). In addition to its education services, Complainant also utilizes its BAYLOR mark in connection with its participation in collegiate sports. Moreover, Complainant also extensively uses its BAYLOR mark with respect to medical related services and education, primarily through Complainant’s licensees Baylor Health Care System and Baylor College of Medicine.
Complainant’s licensee Baylor College of Medicine has operated a medical school since at least as early as 1969. As a part its medical school, Baylor College of Medicine operates a clinical center under the “Baylor International Pediatric AIDS Initiative” mark, providing training in HIV and AIDS research for health professionals and care to infected infants and children. The clinical center also operates a website located at the <bayloraids.org> website.
Respondent, Baylor University, registered the <bayloraids.com> domain name on May 31, 2005, the <baylorfan.com> domain name on March 28, 2003, the <baylorgrapevinehospital.com> domain name on July 26, 2005, the <baylorhospitaldallas.com> May 4, 2005, the <baylormedicalcenter.com> domain name on December 25, 2001, and the <baylormedicalschool.com> domain name on May 4, 2005. The evidence on record indicates that Respondent’s domain names each resolve to websites providing links to Complainant, as well as to third-party websites for goods or services related to those offered by Complainant or its licensees, but not affiliated with Complainant.
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."
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.”).
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.
Complainant asserts and provides evidence of several trademark registrations for the BAYLOR mark with the USPTO, as well as evidence of trademark registrations for the mark throughout the world. Consequently, the Panel finds that Complainant’s registration of the BAYLOR mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (“Complainant owns a United States Patent and Trademark Office (‘USPTO’) registration issued September 5, 2000 for the RBK mark. This trademark registration is adequate to establish rights pursuant to Policy ¶ 4(a)(i).”).
Moreover, the Panel finds that Respondent’s <bayloraids.com>, <baylorfan.com>, <baylorgrapevinehospital.com>, <baylorhospitaldallas.com>, <baylormedicalcenter.com>, and <baylormedicalschool.com> domain names are confusingly similar to Complainant’s BAYLOR mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain names consist of Complainant’s federally registered BAYLOR mark with the addition of generic or descriptive terms related to Complainant’s offering of educational or athletic activities, or the medical offerings of Complainant’s licensees, with the generic top-level domain (“gTLD”) “.com.” Previous panels have consistently held that the addition of descriptive terms to a mark does not negate the confusing similarity created between the resulting domain name and the mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Moreover, prior decisions have found that the addition of a gTLD to a mark does not sufficiently distinguish the resulting domain name pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .”). Thus, the Panel finds that the additions made to Complainant’s mark in Respondent’s disputed domain names does not avoid the creation of confusing similarity between the mark and the domain names in accord with Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant initially must demonstrate that Respondent lacks rights or legitimate interests with respect to the disputed domain names. However, once Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to establish that it has rights or legitimate interests in connection with the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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 finds that Complainant has demonstrated a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain names pursuant to Policy ¶ 4(c).
The Panel finds that the evidence on record does not demonstrate that Respondent is commonly known by the <bayloraids.com>, <baylorfan.com>, <baylorgrapevinehospital.com>, <baylorhospitaldallas.com>, <baylormedicalcenter.com>, and <baylormedicalschool.com> domain names pursuant to Policy ¶ 4(c)(ii). Complainant alleges that after it filed the initial Complaint, Respondent changed the WHOIS information for the disputed domain names to “Baylor University.” Moreover, the evidence on record does not suggest that Respondent is affiliated with Complainant in any way. Therefore, the Panel concludes that the evidence on record fails to establish that Respondent is commonly known by the <bayloraids.com>, <baylorfan.com>, <baylorgrapevinehospital.com>, <baylorhospitaldallas.com>, <baylormedicalcenter.com>, and <baylormedicalschool.com> domain names under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Furthermore, the evidence on record indicates that Respondent’s <bayloraids.com>, <baylorfan.com>, <baylorgrapevinehospital.com>, <baylorhospitaldallas.com>, <baylormedicalcenter.com>, and <baylormedicalschool.com> domain names each resolve to websites providing links to Complainant, as well as to third-party websites for goods or services related to those offered by Complainant or its licensees, but not affiliated with Complainant. The Panel finds that Respondent presumably receives click-through revenue through the operation of its websites located at the disputed domain names. Consequently, the Panel finds that such conduct by Respondent demonstrates neither 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). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <bayloraids.com>, <baylorfan.com>, <baylorgrapevinehospital.com>, <baylorhospitaldallas.com>, <baylormedicalcenter.com>, and <baylormedicalschool.com> domain names resolve to websites featuring links to a variety of third-party websites offering goods or services related, but unaffiliated with Complainant, Complainant’s licensees, and Complainant’s institution. Moreover, Respondent presumably achieves commercial gain as a result of the operation of its websites located at the disputed domain names. Thus, in light of Respondent’s use of domain names that are confusingly similar to Complainant’s mark in order to attract Internet users to its website for Respondent’s commercial gain, the Panel concludes that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Additionally, considering Respondent’s use of the <bayloraids.com>, <baylorfan.com>, <baylorgrapevinehospital.com>, <baylorhospitaldallas.com>, <baylormedicalcenter.com>, and <baylormedicalschool.com> domain names to operate websites offering links to third-parties unaffiliated with Complainant, the Panel finds that Respondent registered and used the disputed domain name with the intent to disrupt Complainant’s business. Therefore, the Panel concludes that Respondent’s conduct evinces registration and use of the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 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 <bayloraids.com>, <baylorfan.com>, <baylorgrapevinehospital.com>, <baylorhospitaldallas.com>, <baylormedicalcenter.com>, and <baylormedicalschool.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 23, 2006
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