Baylor University v. SZK.com c/o Michele Dinoia
Claim Number: FA0609000791668
Complainant is Baylor University (“Complainant”), represented by William G. Barber, 600 Congress Avenue, Suite 2120, Austin, TX 78701. Respondent is SZK.com c/o Michele Dinoia (“Respondent”), Via Trilussa 11, Pineto, TE 64025 IT.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <baylorhospital.com>, registered with Dotster.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 8, 2006.
On September 7, 2006, Dotster confirmed by e-mail to the National Arbitration Forum that the <baylorhospital.com> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 2, 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@baylorhospital.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 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes, among others, the following assertions:
Complainant is the oldest institution of higher education in Texas and the largest Baptist university in the world.
Complainant provides a wide curriculum of educational services at the undergraduate and graduate levels, including medical-related services and education.
In connection with its educational services, Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”), including the BAYOR mark (Reg. No. 1,465,910, issued November 17, 1987).
Respondent, SZK.com c/o Michele Dinoia, registered the <baylorhospital.com> domain name on January 24, 2002.
Respondent is not commonly known by the disputed domain name.
The disputed domain name resolves to a search directory website that displays a number of sponsored medical-related links.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
At least twenty-seven previous UDRP decisions have found “SZK.com” and “Michele Dinoia” to have registered and used infringing domain names in bad faith.
Respondent’s <baylorhospital.com> domain is confusingly similar to Complainant’s BAYLOR mark.
Respondent does not have any rights or legitimate interests in the <baylorhospital.com> domain name.
Respondent registered and uses the <baylorhospital.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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."
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 a 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:
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 in bad faith.
Complainant has established rights in the BAYLOR mark
through its registration with the USPTO. See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb.
Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.” See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”
Complainant asserts that the disputed domain name is confusingly similar to its BAYLOR mark. The <baylorhospital.com> domain name contains Complainant’s BAYLOR mark in its entirety and merely adds the generic word “hospital,” a term closely associated with Complainant’s medical-related services. The mere addition of a generic term such as “hospital” to Complainant’s otherwise unmodified mark renders the disputed domain name confusingly similar pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where a domain name contained the identical mark of a complainant combined with a generic word); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY.”
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial burden to establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant successfully establishes such a case, the burden shifts to Respondent to prove that it does have rights or legitimate interest in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to
Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). In this instance, Complainant, through its uncontested assertions and evidentiary submissions, has successfully established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent’s failure to submit a Response in this proceeding
creates a presumption that Respondent lacks rights and legitimate interests in
the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, a respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only
results in its failure to meet its burden, but also will be viewed as evidence
itself that Respondent lacks rights and legitimate interests in the disputed
domain name.
The Panel, nonetheless, chooses to
evaluate the record to determine if thee is any basis for concluding that
Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c).
In this connection, we first
observe that Complainant asserts that Respondent is not commonly known by the
disputed domain name. The only evidence
in the record pertaining to Respondent’s identity is from the WHOIS database,
which reflects the registrant of the disputed domain name to be “SZK.com” and
lists “Michele Dinoia” as a contact.
Because there is no evidence in the record to suggest otherwise, we must
conclude that Respondent is not commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik,
FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered
the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the
WHOIS domain name registration information, Respondent is not commonly known by
the [<awvacations.com>] domain name.” See also Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969
(Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Additionally, Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is alleged by Complainant, without contravention by Respondent, that the disputed domain name resolves to a search directory website displaying medical-related links, presumably in pursuit of click-through fees. The use of a confusingly similar domain name to resolve to such a website does not qualify as 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. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that a respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements is evidence that it lacked rights or legitimate interests in the domain names); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that a respondent’s use of a disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant contends, and Respondent does not deny, that Respondent registered and uses the disputed domain name in bad faith. Because the resulting website focuses entirely on advertising third-party websites, we may infer that Respondent receives commercial gain from the operation of its website. Additionally, due to the confusingly similar nature of the disputed domain name and the medical-related links provided on the resulting website, there is a likelihood that Internet users will be confused as to Complainant’s affiliation with or sponsorship of the resulting website. Accordingly, Respondent’s registration and use of the disputed domain name to resolve to a website that offers sponsored links to third-party websites evidences bad faith pursuant to Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that a respondent’s use of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where a respondent linked a domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
Moreover, it is evident that Respondent registered the
contested domain name with actual or constructive knowledge of Complainant’s
rights in the BAYLOR mark by virtue of Complainant’s prior registration of its
mark with the USPTO. Registration of a
confusingly similar domain name despite such actual or constructive knowledge
evidences bad faith registration and use of the domain name pursuant to Policy
¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <baylorhospital.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 16, 2006
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