Texas A&M University v. Goodell Family, LLC
Claim Number: FA1502001603018
Complainant is Texas A&M University (“Complainant”), represented by John C. Cain of Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P., Texas, USA. Respondent is Goodell Family, LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homeofthe12thman.com>, registered with Domain.com, LLC.
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.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2015; the National Arbitration Forum received payment on February 2, 2015.
On February 2, 2015, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <homeofthe12thman.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, 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 February 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2015 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@homeofthe12thman.com. Also on February 4, 2015, 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.
A timely Response was received and determined to be complete on February 16, 2015.
On February 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant
a. Complainant’s Marks:
i. Complainant owns the 12TH MAN and HOME OF THE 12TH MAN marks through its trademark registrations with the United States Patent and Trademark Office (“USPTO”).
1. 12TH MAN (Reg. No. 1612053, registered September 4, 1990.)
2. 12TH MAN (Reg. No. 1948396, registered January 16, 1996.)
3. 12TH MAN (Reg. No. 3354679, registered December 18, 2007.)
4. HOME OF THE 12TH MAN (Reg. No. 4301538, registered March 12, 2013.)
ii. Complainant also owns the marks through common law rights, in that it has extensively advertised and used the marks since at least as early as 1922 concerning the 12TH MAN mark and 1988 concerning the HOME OF THE 12TH MAN mark.
iii. Complainant uses the marks to identify its university athletic programs and in connection with a variety of different products including clothing items, and educational and entertainment services.
b. Respondent’s infringing activities:
i. Policy ¶ 4(a)(i)
1. Respondent’s <homeofthe12thman.com> domain name is confusingly similar to Complainant’s 12TH MAN mark, because Respondent has simply added the generic phrase “home of the” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights and legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the disputed domain name. Complainant has neither authorized nor licensed Respondent to use any of Complainant’s marks for any purpose.
3. Respondent has not provided any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name to refer to competing university athletic services, to make statements contrary to the goods and services covered by Complainant’s trademark registrations and/or to provide political commentary that is inflammatory and/or may not reflect the opinions or position of Complainant or that may paint Complainant in a negative light.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to disrupt Complainant’s business.
2. Respondent uses the disputed domain name to intentionally attract Internet users to its own website for its own commercial gain by creating a likelihood of confusion as to its association with Complainant.
3. Respondent had at least constructive knowledge of Complainant’s marks, due to the USPTO trademark registrations it holds.
2. Respondent
i. Policy ¶ 4(a)(iii)
1. Complainant did not have a trademark registered for the HOME OF THE 12TH MAN when Respondent acquired the disputed domain name.
2. Complainant hadn’t even filed for the HOME OF THE 12TH MAN trademark until approximately 7 weeks after Respondent acquired the disputed domain name. Respondent registered the disputed domain name on September 4, 2011.
ii. Complainant’s behavior indicates that Complainant is attempting to engage in reverse domain name hijacking.
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.
Complainant is the holder of four US registered marks; 12TH MAN, registered on September 4, 1990 for goods and services in classes 16, 24, 25 and 36, 12TH MAN, registered on January 16, 1996, for goods and services in classes 14 and 41, 12TH MAN, registered on December 18, 2007 for services in class 41, and HOME OF THE 12TH MAN, registered on March 12, 2013 for goods and services in classes 25 and 41. The disputed domain name is registered on September 4, 2011. The Panel notes that the disputed domain name predates the filing and registration of Complainant’s HOME OF THE 12TH MAN mark. The Policy makes no specific reference to the date on which Complainant has acquired its rights. The Panel does not consider the registration date of an acquired right as relevant for the finding of identity or confusing similarity under the Policy.
The disputed domain name consists of the combination “homeofthe12thman” with the addition of the generic Top Level Domain (“gTLD”) “com”. According to well-established consensus among panels, the mere addition of the gTLD “com” is insufficient to differentiate a disputed domain name from a mark.
The disputed domain name consists of Complainant’s mark HOME OF THE 12TH MAN in its entirety, but without spacing. The Panel therefore finds the disputed domain to be confusingly similar to the mark HOME OF THE 12TH MAN in which Complainant has rights.
Further, the Panel finds the disputed domain name with or without spacing has the meaning “home of the 12th man”, which rather emphasizes the distinctive element the 12th man. The disputed domain name contains the distinctive element “12th man” together with the descriptive words “home of the”. The Panel therefore finds that the combination “home of the” in the disputed domain name directly determines the following word or words, in this case “12th man” and therefore is confusingly similar to Complainant’s 12TH MAN mark. The construction of the disputed domain name with the combination “home of the” and Complainant’s mark 12TH MAN also leads to the impression that Complainant is behind the disputed domain name. This is a further reason why the disputed domain name is confusingly similar to the mark 12TH MAN in which Complainant has rights.
In accordance with the findings above, the Panel concludes that the disputed domain is confusingly similar to Complainant’s HOME OF THE 12TH MAN and 12TH MAN marks in the meaning of Policy ¶ 4(a)(i) and thus the first element of the Policy is fulfilled.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under the Policy, and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug Aug. 18, 2006).
Complainant has asserted that no permission has been granted to Respondent to register the disputed domain name and that Respondent has no rights of its own or legitimate interests to the disputed domain name. Moreover, Complainant argues among other things that Respondent has referred to competing university athletic services.
The Panel does not find any indications that Respondent is making a legitimate non commercial or fair use of the domain name. Nor is Respondent connected to Complainant or authorized to use Complainant’s marks in the disputed domain name. Having considered the absence of a formal response from Respondent regarding Policy ¶ 4 (a)(ii), the Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. In addition to this, Respondent has not rebutted Complainant´s statements with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name.
In accordance with the findings above the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name in the meaning of Policy ¶ 4(a)(ii) and the second element of the Policy is thus fulfilled.
In this context, it should be mentioned that a domain name registration in itself does not constitute a trademark right or a positive exclusive right which can prevent others from using it as a trademark. This means that even if the Panel would consider the disputed domain name confusingly similar only to Complainant’s HOME OF THE 12TH MAN mark (with a later filing date than the registration of the disputed domain name) it would in this case not change the Panels assessment of Policy requirement 4(a)(ii), since the later filing of the trademark by Complainant has not been made in bad faith.
Complainant asserts that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business, attracts and re-directs Internet users and that Respondent had constructive knowledge of Complainant’s marks at the time of registration. Respondent on the other hand claims that Complainant’s mark HOME OF THE12TH MAN was filed after the registration date of the disputed domain name. This is not relevant since Complainant owns earlier rights in trademarks which are confusingly similar to the domain name and which would have constituted bars to Respondent obtaining trademark rights in the words of the domain name.
The Panel notes that Respondent is located in the U.S. and that the disputed domain name is registered prior Complainant’s filing of its HOME OF THE 12TH MAN mark. Although Complainant has been using this mark before the registration of the disputed domain name by Respondent the Panel finds that Complainant has not shown that this use has matured into an earlier established right of user. However this is not necessary, since the earlier trademark rights are similar to the domain name and sufficiently distinctive and original not to give rise to any fair use and registration of the domain name.
Complainant’s 12TH MAN mark has been registered in the U.S. since 1990 and a trademark registration in the U.S. provides for national constructive notice. Respondent is located in the U.S. and the above facts show that Respondent has registered the domain name in bad faith.
Complainant has, as further basis for bad faith, provided evidence showing that Respondent, inter alia, has tried to degenerate the Complainant’s marks and is referring to competing university athletic services. Respondent has not rebutted the allegations of use in bad faith made by Complainant.
The Panel finds that it is improbable that Respondent has selected the disputed domain name without actual knowledge of Complainant’s 12TH MAN mark. On the basis that Respondent must have had knowledge of the abovementioned marks and the Complainant’s non-rebutted allegations that Respondent is using the web site to divert internet users from Complainant’s own websites and to disturb Complainant’s business considered with the submitted evidence of Respondent’s use of the disputed domain name, the Panel finds that the disputed domain name has been used in bad faith.
In accordance with the findings above the Panel concludes that Respondent registered and is using the disputed domain name in bad faith in the meaning of Policy ¶ 4(a)(iii) and the third element of the Policy is thus fulfilled.
Reverse Domain Name Hijacking
In the present case, the Panel has concluded that Complainant has fulfilled all three elements of the Policy. Therefore, Respondent’s request enter a finding of Reverse Domain Name Hijacking cannot be granted.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homeofthe12thman.com> domain name be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: March 10, 2015
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